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The Patent Litigation Group at Jeffer Mangels Butler & Mitchell LLP is pleased to announce that its Chair, Stan Gibson, will be speaking at PLI’s Electronic Discovery Institute 2017: What Corporate and Outside Counsel Need to Know.

Stan’s panel will focus on the “Preservation of Electronically Stored Information (ESI).”

The program is designed for corporate counsel, outside counsel, and other attorneys or risk management professionals who advise corporations on electronic discovery and document retention issues. This program is designed to provide participants with critical information on the latest developments in the law governing e-discovery.

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After this patent infringement action was filed, the defendant, BigCommerce, filed a motion to dismiss for failure to state a claim for relief pursuant to Fed.R.Civ.P. 12(b)(6). BigCommerce did not file a motion to transfer or to challenge at that time.  After the district court ordered the plaintiff to file an amended complaint and the plaintiff filed the amended complaint, BigCommerce filed a motion for improper venue pursuant to Fed.R.Civ.P. 12(b)(3). The BigCommerce motion was filed shortly after the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, No. 16-341, 137 S.Ct. 1514 (May 22, 2017).

BigCommerce argued that although it is incorporated in Texas, it is not incorporated in the Eastern District of Texas and lacks any place of business in the Eastern District of Texas. Therefore, BigCommerce argued it should be dismissed from the case because of improper venue.

The district court concluded that BigCommerce had waived the defense because the defense was not raised in the original Fed.R.Civ.P. 12(b)(6). “A party waives any defense listed in Rule 12(b)(2)–(5) by . . . omitting it from a motion in the circumstances described in Rule 12(g)(2).” Fed. R. Civ. P. 12(h)(1)(A). Under Rule 12(g)(2), “a party that makes a motion under this rule must not make another motion under this rule raising a defense or objection that was available to the party but omitted from its earlier motion.” Certain defenses are exempt from Rule 12(g)(2)’s consolidation requirement, but venue is not one of the exempt defenses. See Rule 12(h)(2)–(3). See Elbit Sys. Land & C41 Ltd. v. Hughes Network Sys., LLC, No. 2:15-cv-37-RWS-RSP, 2017 WL 2651618, at *19 (E.D. Tex. June 20, 2017) (citing Albany Ins. Co. v. Almacenadora Somex, S.A., 5 F.3d 907, 909 (5th Cir. 1993)). “Thus, by filing a motion to dismiss for failure to state a claim under Rule 12(b)(6) and omitting its venue defense, [BigCommerce] waived the defense.” Id. at *20 (citing Fed. R. Civ. P. 12(g)(2) and 12(h)(1)(A)).

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In this patent infringement action, T-Mobile sought email discovery from seventeen named inventors of the asserted patents and the licensing executives involved in the parties’ FRAND negotiations. T-Mobile asserted that the discovery could reveal the inventors’ contemporaneous understanding of the invention and whether T-Mobile is an unwilling FRAND licensee. T-Mobile also proposed limiting the email discovery by specific search terms.

Huawei raised two arguments in support of its objections to producing the requested documents. First, Huawei contended that T-Mobile had not shown that the e-mail discovery would be necessary or proportional to the needs of the case. Second, T-Huawei argued that T-Mobile delayed in seeking the discovery warranted denying the requested relief.

In analyzing the arguments, the district court was not persuaded by either of Huawei’s arguments. “As other courts have explained in complex case such as this, Huawei’s proposed limitations on e-discovery or the number of email custodians is not typically warranted. See Knauf Insulation, LLC v. Johns

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During this patent infringement action, Apple filed a motion for discovery sanctions based on a failure to produce documents after a remand. The parties apparently had agreed to limited discovery post-remand, but a dispute arose over whether discovery before remand should be supplemented or corrected.

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In this patent infringement action, Plaintiff Wright’s Well Control Services, LLC (WWCS) filed a motion to voluntarily dismiss defendant Christopher Mancini pursuant to Federal Rule of Civil Procedure 41(a)(2) with prejudice, but with a “reservation of all rights and actions against co-defendant Oceaneering International, Inc., and any other parties and solidary obligors.”

Defendant Mancini opposed the reservation of rights against unnamed third parties. Mancini also moved for summary judgment on plaintiff’s claims, and WWCS filed a moved for an extension of time to respond to Mancini’s motion for summary judgment.

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After the defendants Ingenico S.A.’s, Ingenico Corp.’s, and Ingenico Inc.’s (the “Ingenico Defendants”) prevailed at trial, the defendants filed a Motion to Declare this an Exceptional Case and For Attorney’s Fees Pursuant to 35 U.S.C. § 285.

The district court began its analysis by noting that “[d]istrict courts may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the circumstances.” Octane Fitness, LLC v. ICON Health and Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). Section 285 imposes ‘one and only one constraint’ on a district court’s discretion to award attorney fees in patent litigation: the case must be ‘exceptional.’ Octane Fitness, 134 S. Ct. at 1755-56. The Ingenico Defendants must show exceptionality by a preponderance of the evidence. Iris Connex, LLC v. Dell, Inc., 2017 WL 365634, at *10 (E.D. Tex. Jan. 25, 2017).”
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The plaintiff Alexsam, Inc. (“Alexsam”) filed an ex parte application to compel compliance with a subpoena to produce documents against a third party to the action, MasterCard. Alexsam had first served a Rule 45 subpoena on MasterCard several months earlier but had not received the documents it requested. Alexsam contended that it was being “stonewalled by delays in responding [by MasterCard] and then a last-minute demand that is unreasonable” after the close of fact discovery. As a result, Alexsam sought ex parte relief, arguing that it has acted diligently, but that MasterCard, while at first appearing cooperative, then refused to comply.

The district court began its analysis of the ex parte application by noting that ex parte applications are solely for extraordinary relief and should be used with discretion. See Local Rule 37-3 (to be heard on an ex parte basis, the moving party must show “irreparable injury or prejudice not attributable to the lack of diligence of the moving party”).

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As trial approached in this patent infringement action, the plaintiff, 511 Innovations, Inc., filed a motion to exclude a witness at trial, Tim Benner from testifying at trial. The motion asserted that the defendant, Samsung, “did not make any written disclosure of Dr. Tim Benner as a potential witness, or even a person with relevant knowledge, until January 23, 2017.”

The disclosure occurred after the close of discovery and only a few weeks before the pretrial conference. In opposing the motion, Samsung explained that it planned to substitute Dr. Benner as its corporate representative at trial, in place of Joy McBeth.
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Plaintiff Genes Industry, Inc. (“Genes”) filed a patent infringement action against Defendant Custom Blinds and Components, Inc. (“Custom”). The patent discloses a winding wheel for use on window coverings. Custom filed a motion to continue its expert report deadlines from November 28, 2016 to February 10, 2017, and to continue the expert discovery cut-off date from December 16, 2016 to May 17, 2017.

In reviewing the request, the district court noted that “Defendant retained a new counsel way back in early November and the Court ordered the attorney substitution on November 17, 2016. This was 11 days before Defendant’s expert reports were due. Defendant’s counsel states that it took significant time to review the case after receiving the file on November 19, 2016. For some reason, Defendant’s counsel waited until just two days before Defendant’s expert reports were due before attempting to enter a stipulation with Plaintiff’s counsel to extend expert report deadlines. Plaintiff’s counsel declined this attempt because the Court’s previous order granting an extension of expert report deadlines had stated in capital letters that ‘no further continuances [would] be granted without a further very strong showing of good cause.'”
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In a previous order, the district court granted a motion to stay pending Inter Partes Review (“IPR”) but deferred ruling on the Motion to Stay with respect to EMC Corporation “until EMC Corporation has filed a Notice with the Court indicating whether it is bound by the statutory estoppel provisions of 35 U.S.C. § 315(e).”

Thereafter, EMC filed a Notice stating “if the Court stays the above-captioned litigation pending resolution of the inter partes reviews filed on the asserted patents then EMC agrees to be bound by the full statutory estoppel provisions of 35 U.S.C. § 315.”
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