Last Week in Texas with Michael Smith | Episode 20

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Judge Albright continues to provide detailed guidance on motion practice in his court. These cases illustrate what motions not to file and how to better craft the motions that you do file.

Episode Transcript


Wayne Stacy, Michael Smith


Wayne Stacy  00:00

Welcome, everyone to this week’s Berkeley Center for Law and Technology’s Last Week in Texas podcast. I’m your host, Wayne Stacey. And once again, we’re here with Michael Smith. Michael, thanks for joining us.


Michael Smith  00:13

Glad to be here. Wayne. Good to hear your face, so to speak.


Wayne Stacy  00:19

Well, the good thing is this is not last week in Texas. This is the last two weeks in Texas, because you had to take some time off last week to do your day job and actually try a  case.


Michael Smith  00:29

We did we had a patent infringement trial and judge Gill straps court across the street here in Marshall. And so it was a good week, we got a jury verdict back of non infringement. Claim is valid but non infringement last Thursday. And since I lost one over there in November, I had almost forgotten how good winning one felt. But I was very proud of it very happy with our trial team in that case.


Wayne Stacy  00:57

That’s one of the problems with with trial work. If you’re only try one every six months, you get seems like six months to stew on a loss in about 10 days after the win you just go back to work and you’ve lost that high. So there’s more downside than upside?


Michael Smith  01:14

Oh, absolutely. Absolutely.


Wayne Stacy  01:16

Well tell us what you what you learned in this this trial?


Michael Smith  01:20

Well, it was an interesting trial. I kind of got parachuted in a couple of weeks before trial on it, which is not my preference. But my co counsel had done a good job preparing it, which isn’t surprising because the case was eight years old. This was a fight between two oil and gas drilling companies. Shortly after it was filed in 2014. Because the Eastern District was so short on judges, Judge Gillstrap shipped a couple dozen cases to a judge in Houston, Judge Atlas. And she worked up the case over the next seven years, there were some stays, there were some other things and then shipped it back when it was ready for trial. So when we went to trial, we had expert reports that were over two years old, and everything had been prepared before a different judge. So Judge Payne ruled on some final motions. And then we went to trial, but on reports that were over two years old. So that was interesting, the most important thing that I learned in the trial, which I knew, but it’s never been more important than this case is. The judges the trial patent cases down here are very, very strict on your expert has to stay within the four corners of their report. And in this case, we were fortunate that the plaintiff’s infringement expert’s report was only 15 pages long. So we actually had Judge Gillstrap excluding some things at trial. And we had the unique situation where you know, those boards we always put up that has all the claim elements and your expert. Can I check this sir? Yes. Can I check this off? Okay, all the boxes are checked now. So does this mean there’s infringement? Yes, it does. The expert actually couldn’t check all the boxes in half of the claims, which is something you don’t normally get. So by the time we got to closing argument, we were able to pull out the the boards and say, You never heard an expert testify on this. And that helped out a lot when it came time for the jury to look at it. In Marshall. You cannot talk to the jurors after the trial. It is completely up to them whether to talk to you. So the judge explains Mr. Smith and the other lawyers are going to be standing at the bottom of the rail outside the front door, and you can walk right past them. They won’t approach you, they won’t try to engage you. But if you want to talk to him, you can. Well I was fortunate that one of the jurors put her stuff up in her car and then came back and gave us a download for 30 minutes on what we done right what we done wrong. We had lead counsel, we had our expert there, who was a professor from Baylor who had not testified previously, and she was explaining to him what a cheater pipe was. It was kind of fun watching a jeweler explain to an expert the the technical aspects of oil and gas. But it happened that she knew that. But anyway, she was very helpful explaining the things that we did that were useful and the things that we did were not useful, which experts were good, which experts were not good. And we asked her about objections. We asked her if she minded well, did you mind when the lawyers made objections, did that bother you? And she said, Oh, no, no, no. That gave us a little break. Because we could stop paying attention for a couple of minutes while while the judge dealt with you. Well, I’ve never heard a jury say that before. So that was an interesting thing. But it was a very educational experience. We went back to a little bit more strict COVID protocols than we’ve had recently. And Judge Gillstrap told us on Monday we’ll be using the same protocols next month. So every trial is a little different, but this was definitely a fun one. I didn’t have to cross the well and congratulate everybody on the other side when it was over with.


Wayne Stacy  05:07

Well, we have another interesting piece of work is to get a reminder that his trials happen. Judges continue doing their their other day job of handling these opinions. And you’ve got an injunction case sought after trial, which I thought had some, some informative language maybe to tell people about overreaching.


Michael Smith  05:29

It was and coincidentally, that was in another one of my cases. And it came out while we were waiting on the jury, so I had two good things happen that week. But yeah, this was an example of… The case was tried in front of Judge Gillstrap back in November, the plaintiff got a finding of infringement, willful infringement, and came back and asked for an injunction to exclude the competitor’s product from the market. We had a hearing on that two weeks ago, and the judge denied the request on Thursday of last week, and said that the plaintiff hadn’t met its burden to show irreparable harm, or that monetary relief was inadequate, and was very definitive, both at the hearing and in the order on, if you’re going to seek injunctive relief at the end of the case, this is what you need to do all through the case, to build a record for it. And he was particularly emphatic about your expert came in and expressed a reasonable royalty opinion, that tells me that that you could be made whole by an ongoing royalty, and the plaintiff had to respond to that at the hearing. But if you’re going to be if what you really want, especially in Judge Gillstrap’s court is injunctive relief, you need to study this order, and see what the judge how the judge expects you to conduct yourself during the litigation leading up to trial in order to come in and make a request that he sees as consistent with your argument that it’s irreparable harm. Simply going for money damages the whole time, having having injunctive relief in your pleadings, and then after the case is over with, asking for an injunction didn’t work for the plaintiff in this case. And I know that I’m studying this opinion, in cases where I am the plaintiff to make sure that how we are conducting ourselves is consistent with what Judge Gillstrap indicates the law requires.


Wayne Stacy  07:24

It’s a it’s a great reminder that injunctive relief isn’t something tacked on when the case is one. It’s built throughout the entire case. So as I read this, this is a roadmap for people going forward, not just in this court, but in all courts.


Michael Smith  07:42

I absolutely agree it is it is a primmer on how to raise this issue. Now you may be in front of a judge that thinks the bar is a little lower. But this is a pretty good guide to building that case. If that’s what your client really wants. If they really want an injunction at the end. You have to be acting consistent with the requirements of an injunction throughout the case.


Wayne Stacy  08:04

So you know, the the popular myth is that nothing ever gets stayed in Texas. But we see a couple a couple of rulings from Judge Gillstrap once again, proving that one wrong. This was a venue argument with a very targeted stay.


Michael Smith  08:23

Right. Yeah, this is arising out of the case that we’ve talked about previously, where the issue is, is venue proper in the Eastern District based on the the existence and the conduct as potential agents of vehicle dealerships. Judge Gillstrap noted there are a couple of cases up in front of the Federal Circuit that he expects are going to provide guidance on that. So he granted a stay as to the defendants that asserted improper venue arguments awaiting the Federal Circuit’s ruling on on the improper venue claims. Now, not all of the defendants made those arguments. Some of the defendants may be headquartered in the Eastern District. I know one is so but as to the ones that were asserting improper venue, he went ahead and stayed those cases pending a decision from the Federal Circuit. Again, special case here because you have a specific improper venue argument, you know, it’s up in front of the Federal Circuit. And it’s not going to be a very long stay before we get those orders back and find out whether improper venue is a good defense or not.


Wayne Stacy  09:32

I love the the juxtaposition between how fast these cases normally move and a case that we’ve just talked about that had been sitting around for eight years. So it’s a good reminder of what typically, Eastern western district practice tries to avoid.


Michael Smith  09:50

Right, right, some courts just philosophically move cases along and resolve doubts against delay other courts view it differently. So cases are prepared in different courts. And that’s a reason why people we all know that’s why people fall in different courts. Because if I’m the plaintiff, I probably don’t want to be sitting around for eight years waiting for a trial setting.


Wayne Stacy  10:15

Well, Michael, every week we talk about new 12B6 filings. Is there a trend going on? Because they don’t seem to be wildly successful, but people keep coming, coming to eastern district and western district with these types of motions.


Michael Smith  10:30

The thing that I’ve run into on this, I absolutely agree people do that. And I know from practicing and representing defendants, when you run into that situation, you look at the plaintiff’s pleadings, and you say, well, it’s missing this, or maybe it’s missing this or something. I could file a motion in every case. But I know that in practice, I’m going to get the information in discovery anyway. Or, for example, there may be a bunch of defenses. Let’s say I’m the plaintiff, and the defendant has got just a bunch of boilerplate defenses. Yes, I can file a motion to strike them. But I know they’re not going to go anywhere. So why waste the money on it? So I think a lot of lawyers don’t adequately take into consideration that there’s a financial cost to clients in filing motions, if you don’t really need what’s done. I remember Judge Davis saying, one time this is about 15 years ago, he was on a panel talking about patent litigation. And it came out from one of the other panelists that when if I really full up, no holds barred round of summary judgment briefing and a big patent case would be about $150,000 in billing for the law firm. And that was a real eye opener to him that that there was a definite reason why you might want to file briefing that maybe if you had to worry about money, you wouldn’t. So that’s one thing. When we look at some of the orders, like the one we’re about to talk about, I question whether it’s really worth filing a motion, if it’s not hurting you leave it alone.


Wayne Stacy  12:08

Well, this, this motion had something that was a little surprising to me, that goes right in that theme. There was an attempt to strike 30 paragraphs because they were in material.


Michael Smith  12:20

Right, it was 30 paragraphs of background information that the plaintiff included in the background facts of the case to explain what was going on. And the defendant filed a motion to strike parts of the complaint and provide a more definite statement. And Judge Gilstrap said, well, on part of it, you’re asking me to dis dismiss the certain allegations, because they’re time barred. And I can tell that’s a factual dispute. But on the part about the background material, he lays out the standard for whether something is immaterial or not, and found that this is not immaterial. It’s not hurting anything. So again, and I kept thinking of what the client paid for all that money to brief the issue of whether 30 paragraphs that you didn’t allege said something scandalous or improper, should be taken out. I mean, I You’re redlining the plaintiffs complaint to no net benefit for your client is what I was kind of curious about. And the judge also, we don’t see many motions for more definite statement, they put one in here. And Judge Gilstrap said, that’s only proper where the pleading fails to specify the allegations in a manner that provides sufficient notice, when you’re complaining about a lack of detail. As long as you know what the claim is. I mean, if you say, Well, they didn’t say this, and they didn’t say this, you’ll get that in discovery. So this will be an order that I pull out, if I have if I have a co counsel that says, well, the complaints insufficient doesn’t give us enough information. And I’m like, well, it says we violate this patent, it says, which claims it gives the I mean, that’s all we need, we’ll get the rest and discovery. Don’t waste your money.


Wayne Stacy  14:05

Well, as we move out of the patent world, there’s a vintage Rolex watch case that came out of the Northern District that seems to illustrate something about equities and into how this court views latches.


Michael Smith  14:20

Yeah, I thought this was a really interesting case. And not just because I’m a watch guy. So I found the factual allegations interesting. What you had here was a defendant that sells pre owned watch. And they started out as Rolexes. They may have some replacement parts, like I’ve got a watch that has a not original manufacturer band on it, or on some of the watches, they’ll add diamonds to it or they’ll or they’ll take off all the markings, change the color and then put the markings back on, which by the way, violated Rolexes trademarks. So the judge finds Yes, you’ve got a good trademark claim. But as a result of latches, you’re not going to be allowed to disgorge the defendants profits. And the idea here is Rolex knew it was going on. It had even allowed him to obtain products. So they knew this was going on. And he said, If you want to shut it down, you certainly can shut it down. But because of your conduct, you’re not going to be able to get profits. Well again, that’s a that’s a useful thing to look at. Because off the top of my head, it wouldn’t occur to me that I can win on the merits, and then not have any damages. But so this makes me think twice now about, I need to be sure that I can show entitlement to damages. In this case, especially in face of what here was a successful latches defense.


Wayne Stacy  15:47

I think you mentioned before other judges may go other ways. But this is a real eye opener for fairness and how this court will view the balancing of equities around latches. So maybe judge specific but important to come back to this judge. Plus an education on how Rolexes can not only be duly counterfeited, but kind of counterfeited.


Michael Smith  16:10

Yeah, when you add bling, Rolex considers that infringement.


Wayne Stacy  16:16

But as we move south, we’ve got a, again, staying out of the patent world, an interesting copyright infringement case that, in many ways may be an illustration of licensing and contract.


Michael Smith  16:32

Yes, it was a very interesting case out of Judge Hanks in the Southern District of Texas. And the case here was an architect that had developed plans for a developer to use for a development, see if I can find more ways to say the word develop in the same sentence. Well, later on, she doesn’t get the job doing the work. And later on, she sees the developers started development. And when she looks at the plans, they look like they’re derived from what she did. So she files a copyright registration application and file suit.  Now, it’s hard to fault someone about how this was handled, because there are some indications that the architect was actually proceeding pro se at least by the time it got down to the briefing. But Judge Hanks went through, granted some of the motions, denied some of the other ones. So this is a good explication of affirmative defenses like implied non exclusive license, express non exclusive license. The plaintiff had claims under the DMCA. He said, No, you can’t have that that either. But he was able to identify a factual dispute over the statute of limitations on a breach of contract claim. So to me, it’s useful to go through and see there are a lot of there’s a checklist of things you have to make sure you have for a claim. And from the plaintiff side, you got to make sure you’ve got those checked off and on the defense side, look and see if there’s one missing because you may be able to get a court to knock out those claims.


Wayne Stacy  18:01

Well, in this I read through this case, you can see that the passion, it’s one where both sides believe they were rights, one believing they were cheated the other believe they were the contract was clear, but you look at the contracts, maybe a couple extra sentences could have kept this from ever going to court, by setting expectations early on. It’s a it’s a good lesson that lawyers earlier in the process are better than litigators later in the process.


Michael Smith  18:27

Exactly. And your comment about expectations is a good one. I mean, whatever the clients expectations are, or how much they think they were wrong. That may or may not be what the case is. And our job is lawyers. And I’ve seen some lawyers in the last few weeks, that are not doing this as well as they could our job as lawyers is to see the other side of the case. And realize, we don’t want to be drinking our own Kool Aid too much, you you have to be able to tell the other side’s story clearly enough to see where they might have a point.


Wayne Stacy  19:03

So the Western District of Texas had a jury trial that I was looking at, and the verdict form itself. Very interesting to me, because I I often look for what I say the jury hates you or or loves you, or they just go down one side and completely vote against you. And I thought that’s what was gonna happen against Google in this case, but they only they lost on some of the infringement claims and then lost everything else. So there’s really shows a jury that might have been struggling a little bit and had to work through some issues.


Michael Smith  19:38

Well, Wayne, I actually I was thinking of you when I was talking to the juror in our case, because I was hoping that your hypothesis would be true that they would be mad at the mid infringement. So we went on invalidity. And the witness said, Oh, no, no, no, you got there. You were over a preponderance on invalidity. But we all agreed you hadn’t gotten to clear and convincing you know. Well, I can’t ask for more than that. But yeah, I agree this is a waco verdict against Google. The fact the jury found one of the three claims and fringe found that none were invalid. And then was asked a 101 question, and found that none involved only activities which a person of ordinary skill would have considered, well understood routine and conventional. So yes, you had a jury bouncing back and forth, as the facts led them to do apparently, on which claims were infringed whether any claims were invalid. And so So yeah, this is definitely one where both sides were were picking up wins as the jury worked through the verdict form


Wayne Stacy  20:42

Well, importantly, we shouldn’t overlook the fact that this was a 101 that went to the jury.


Michael Smith  20:48

This may not be the first and waco may be the second. But it’s unusual that the jury found that it did not involve activities that were well understood. Because off the top of my head, I don’t recall a jury answering any ever answering in the plaintiffs favor on that question in martial. It’s always in the defendants favor. So that was a very interesting data point to me on what a jury will think on one on one.


Wayne Stacy  21:17

That will be this will be, you know, opening closing to be studied. Because as far as I know, this is the first I can find where that went all the way through. And you had this kind of split on infringement validity in 101. I’m really curious on why this one went down the way it went down.


Michael Smith  21:37

Oh, I think so, it is one that’s that’s going to be worth studying.


Wayne Stacy  21:41

Well, as we we move on, I wanted to actually skip down to this motion to dismiss, I think the way you put it was everything, which would I love in response to the overbroad motion to dismiss everything the other side chose to oppose it 50 days late.


Michael Smith  22:00



Wayne Stacy  22:01

So this was this was an irritating, irritating case for everybody involved, but fairly informative.


Michael Smith  22:12

Well, it is and we actually have several of those cases this week. And we started out by talking about 12, a motion to dismiss and that’s becoming pretty common to see these orders coming out where the judge, in this case, Judge Albright grants part of it, but not all of it. And then on this case, Judge Albright dismissed alternative theories of direct infringement, and then the indirect theories that went with them. But then he goes through and he knocks out bits and pieces of the case, but he recognizes it’s difficult to properly allege induced infringement. So he says, you can come back in and amend later if you find the facts on that. And then we know his usual practice is going to be to dismiss pretty routinely dismissed willful infringement claims, with the understanding that the plaintiff can get discovery and then they can come back and amend to add it back in if they think they’ve got the facts. But he doesn’t let the allegation sit there if the defendant objects.


Wayne Stacy  23:11

Well, and then just almost immediately after that, he issued the opposite type of opinion on an eightball Twombly case.


Michael Smith  23:21

Right here, again, you had another motion to dismiss indirect and contributory infringement claims. And he, he sets out the standards what you have to have, and concludes that the plaintiffs allegations in the in the case, satisfy that standard. And again, over the last three or four months, we’ve seen numerous opinions from Judge Albright, where he either finds the standard met or not met, if you want an opinion that says these allegations of direct infringement are not sufficient. There’s a case for that, if you want to cases saying that indirect or contrib are or are not satisfied. There are cases for that. So there’s a lot of data out there when you’re trying to figure out have i adequately pleaded these claims? Has my opponent failed adequately plead the claim so that a motion to dismiss is worthwhile. But again, keep in mind, if it’s something that you know, they’re going to be able to fix, don’t waste money on a motion to dismiss, ask the plaintiff to agree to an amended complaint or go get the information in discovery. But we do now we’re getting a large number of opinions out from Judge Albright, that that tell us where you are based on what kind of facts you’re able to allege.


Wayne Stacy  24:36

Michael from kind of the outsider’s perspective, as I look at these opinions, it appears to me that Judge Albright, spending a significant amount of time drafting meaty, well thought out opinions and trying to really lay out standards, I presume in an effort to tell the bar where he stands on things so maybe people don’t bring motions, when they’re not necessary. Am I? Am I reading too much into these kinds of meaty opinions he’s putting out?


Michael Smith  25:06

No, no, I think that’s that’s a very good read, whether he’s doing it on purpose or not, it certainly is helping all of us in understanding when he thinks you’ve got enough and when you think he doesn’t, and, and this goes back to two years ago, this month, we had a meeting of his patent Rules Committee, and several of the members of the committee said, Judge, it would be helpful to us in practice, because at the time, Judge Albright didn’t put out a lot of lengthy opinions. So in contrast to other judges, where you say, Well, what does judge so and so think about this kind of motion? Well, here’s a dozen opinions. We were asking him, you know, if you’d give us a written opinion on some of these issues, instead of just granting or denying, in a docket entry that would help us to go back to our clients and our CO counsel and say, look, here’s what the judge, here’s what this judge expects to see, have we got those facts? Or do we not? And maybe the pandemic delayed that a little bit, but we’re now getting a large number of meaty, substantive opinions every week, where I can go analyze those and make a much better decision, whether to go file a motion, or whether to call up the other side and say, Okay, I’m not going to oppose this. I’m going to amend and then and send you what I’ve got. And then you tell me if you want to refile or not?


Wayne Stacy  26:28

Well, in your example, that can be this Werner case, which was a 12B6 101 combination. That’s due I don’t think went the way they were hoping when they filed it. But the court laid out, I thought, a pretty nice roadmap for people going down this path and maybe even reminded people that he’d laid out a roadmap before, but this time, he really means for people to follow it.


Michael Smith  26:56

Oh, yeah, I think so. I mean, this was an interesting, interesting case, because you had the usually the usual twigmo allegations, you had a argument that an indirect infringement claim should be dismissed. But then you had the situation where the plaintiff had said that they were changing their docketing procedures, they’d missed the response date. So they get an agreement to let them file a late response. But in the course of doing that, they said, what we really need to do is file an amended complaint, and the defendant came in said, Oh, no wait judge strike the amended complaint, don’t let him a man, that wasn’t part of our agreement. And Judge Albright said No, at this stage, there’s no reason to keep a party from amending this early in the case. So that’s an argument I really wouldn’t have made. If I were the defendant there. But then he looks at the allegations. And he says, Okay, you get there on this. And on the other things, there are sufficient factual allegations. He said, as he has said numerous times with respect to the 101 allegations, when you file a motion prior to claim construction, and before the close of fact discovery, it’s going to be a rare case where it’s appropriate to resolve the 101 issue at the motion to dismiss stage. We should have gotten that message by now that it’s going to be the rare case. So I’m a little perplexed at why we keep seeing motion to dismiss slash 101. When the judge has told us repeatedly, it’s going to be a rare case where the 101 is ready at that stage of the case. Now, a year ago, we weren’t getting rulings on this, the motions were being stricken, or there would be a simple denial on it. Now we’re getting substantive rulings that are explaining again, and again, and again. And again, here are the standards, and you’re just not there on the 101. Yet, you may be later you very well may be later. And as I tell people, a o101 may be a good defense, but not at this stage.


Wayne Stacy  28:58

Well, and that was the kind of what surprised me about this case. We’ve seen this before. The judge has gone to the effort of laying this particular standard out, and yet, patiently explaining it one more time. I wonder if there’s a time when he won’t be so patient?


Michael Smith  29:15

Well, yeah, that’s coming up to two decisions from now. But no, I think that’s correct. And I understand we all think we’ve got really attractive 101 cases at the beginning. But looking at it from the courts perspective, he’s not quite he doesn’t think they’re right. At that point. He thinks you need a particular showing to get there. And he’s been very clear that I just don’t see that you’re there. When I’m doing this, what I try to do is make clear to the court I understand this is the general rule. We think we’ve got the situation where you can do it early on.


Wayne Stacy  29:54

Well, so Michael, for a case that I don’t think I’ve seen anything and I couldn’t find anything researching that, that the judge has or Judge Albright has done before. There’s an Apple case that came out with post suits, willful infringement guidance and telling us where the courts coming down on this. So, to me, this was kind of a matter of first impression for this particular court.


Michael Smith  30:18

Oh, I think so that that’s what I thought was interesting about it in that case, the case is really from my perspective, the part that we’re interested in is focused on the plaintiffs claims of willful and induced infringement. And Judge Albright sets out the standards for willful infringement, enhanced damages, and says the plaintiff hadn’t sufficiently pleaded pre suit willful infringement or pre suit indirect, but he said the plaintiff had sufficiently alleged it post suit. And he lays out the different standards that Apple was proposing. They said, No, no, no, you need to have an egregious pleading requirement and said, No, I’m going to follow this 2018 Delaware case, and say that, that there is not a requirement there. So that’s something that I would certainly want to know if I were going to attack those allegations in his court, because it was an issue of first impression. And one thing we have seen in a lot of recent opinions from Judge Albright on 101. And on pleading requirements is he’s surveying the case law out there. He’s taking in I mean, you’re getting state of the art arguments from defendants in that court that are saying you ought to do this, you ought to do this. This should be the standard here. And he’s saying yes, no on that, and giving people a lot of guidance as far as whether a holding that is not yet required by the Federal Circuit is one that he’s going to adopt or not.


Wayne Stacy  31:43

Oh, and that’s that it’s a good reminder for people to start looking for this. It seems like Judge Albright heard what the bar was saying about him ruling from the bench and putting things in minut orders and he’s trying to get guidance out there. But if you choose not to listen to that guidance, you get the next decision. Which is the the ragin the ravaging decision.


Michael Smith  32:08

Oh, I love I love this word.


Wayne Stacy  32:11

The courts spend a lot less time issuing the order than the parties did briefing it.


Michael Smith  32:16

Yeah, to borrow a phrase from Shakespeare. If brevity is the soul of wit, this order is hilarious. One sentence denial of a motion to stay pending IPR. It’s more than it’s more than a than a text entry on the docket, but only by the smallest amount. So I’m not I don’t know what the underlying issues were here. But I thought it was. It was funny that in contrast, all these longer orders we’ve been talking about, this one got denied pretty quick.


Wayne Stacy  32:46

Which is an indication that the maybe the court believes he’s already told people how this is going to go based on this fact pattern. And there’s no, no one made an effort to distinguish their fact pattern from his prior ruling.


Michael Smith  33:00

I think that’s probably correct, because we’ve got a lot of good case law on when a case ought to be stayed pending an IPR before there’s been an institution decision. And it doesn’t surprise me that the courts might be getting a little peeved that people don’t seem to be paying attention to what they’re saying in the more detailed opinions.


Wayne Stacy  33:22

So Michael, one other procedural issues, we move on in terms of the last few, I guess, the last four weeks, we’ve had this alternative service. Possibility, all emotions, courts always been very generous with allowing alternative service makes you think that there’s this pattern, Texas, eastern district, western district, northern district are gonna allow alternative service, and then we get this decision to remind you that no, they’re going to allow it when it makes sense, and it seems fair.


Michael Smith  33:54

Yeah. And that’s one reason why I think this opinion is useful because the plaintiff had asked for alternatives service. Let me email these people with the defendant, which is something we’ve seen judges permit repeatedly recently, and Judge Mansky says, No, but the reason he says no, is perfectly consistent with the prior opinions and reminds us of one a few weeks ago, where I think Judge Albright said no, and it is that you have to show that email service is necessary. If you show factually, I don’t have any other way to provide service. There is not another alternative, you tend to get a good result, but in this case, Judge Mansky, noted that the facts showed that there was a physical address, the in the course of trying to figure out how to get them served, the plaintiff uncovered a physical address and then didn’t tell the court why that physical address was insufficient. And Judge Mansky said, and this is the order I would put in front of anyone that wants alternative service, a general assertion that you can’t determine the exact physical whereabouts is insufficient. You’ve got to have more than just a bare assertion that we don’t know where they are to explain why the physical address is insufficient for service. So again, this is not a rubber stamp of a request to email, a defendants, prior lawyers from a prior case, you’ve got to show that I’ve run the ground all the ways that I could have served them. And this way is the only way that’s left, like the statute says or rule or whatever it is, it has to be the form that is best calculated to provide service. And here Judge Mansky, could point to this is not it.


Wayne Stacy  35:35

Michael, I wanted to finish this week, with a motion for leave to file a late motion to transfer. That’s not what you want your title to ever read, when you’re filing a motion. If you’ve got to put late in the title, you’re in trouble. And this one kind of proves proves the point.


Michael Smith  35:55

Yeah, the situation here is this the the ground rule and judge all rights court is that you have a certain point, eight weeks up until if you’re going to file a motion transfer, you have to do that before eight weeks before the claim construction hearing. In this case, nothing was found until months after the court conducted the hearing. And the defendants argument was, Well, hey, Judge, you keep getting reversed by the Federal Circuit all the time, and they’ve changed the law. So now we want to ask for a transfer. And Judge Albright concluded that the defendants transfer motion wasn’t timely, it wasn’t filed by the date, it wasn’t filed with reasonable promptness is the Fifth Circuit case law says and then he says you haven’t shown good cause for failing to meet it. Your argument is that all these federal circuit opinions that are granting the mandamus have changed the calculus in favor of transfer with respect to six to eight factors. But the plaintiff didn’t point out any change in the law. In the opinions it was pointing out it also, the opinions it was pointing to were not designated as precedential by the Federal Circuit. Now, we can disagree academically on whether the Federal Circuit decisions have actually changed the calculus. The point is, in this case the defendant didn’t identify how the calculus change and set and came in and said, Okay, as a result of these decisions, all these facts change, and therefore you all to transfer it, you would think they would do that, but they didn’t. So the plaintiff made a pretty persuasive argument looking at the outcome, that none of the opinions provided a new calculus or even identified a change in law. And Judge Albright points out all the cases you’re citing to me, say, and the language is almost identical, as we have repeatedly held as we have repeatedly held, where you can’t go in and say it’s new case law, when the Federal Circuit said, this is something we’ve previously held repeatedly. So the Court pointed out, there’s substantial inconvenience doing it here. So I’m not going to grant leave for you to file a motion to transfer late. So I mean, this is probably the same response that that guy on death row that filed the motion to Transfer with the Western District got. You just haven’t given a reason for the court to do what you’re asking it to do.


Wayne Stacy  38:20

What was interesting to me is that the judge took a lot of words to get to that he could have just denied it and said it was late, but again, explained why


Michael Smith  38:31

Agreed. I absolutely agree. He explained very clearly. And it would have been easy to just deny it and say no, I’m not saying good cause but he went through and said, Okay, what have you given me that justifies a ruling in your favor? You’re telling me they’re new cases, but they’re not precedential? You’re telling me to to change the law, but you haven’t told me how you have to show me they would change the calculus, but you haven’t even attempted to. So it’s possible that you could come in. And and of course, Judge Albright has done this several times sua sponte. Recently, where after the Federal Circuit comes out with an opinion, he goes back looks at a prior order and sua sponte either denies a reconsideration grants or reconsideration or sua sponte transfers the case. We’ve seen that in a number of cases. But you have to be able to show that the case is required that in in this case, they didn’t file a motion and all the cases they point to defendants had timely filed motions, they waited too late in the case where where the analysis was stacked against them, and then didn’t give him any facts to support a ruling.


Wayne Stacy  39:40

This smacks of a changed mind not changed law.


Michael Smith  39:45

Yeah, I kind of thought that was off. And I’ll bet it was obvious to the court too.


Wayne Stacy  39:51

Well, kudos to the court for taking the time to address it in detail. So whoa to those that try it again next time. Okay, Michael well with that that gives us another week in the books I appreciate your time.


Michael Smith  40:07

Well thanks very much have a good rest of the week.


Wayne Stacy  40:10

Take care