The Waco Patent Blog by Erick Robinson
  • Waco Patent Blog
  • Who Writes This
  • Get In Touch
  • Waco Patent Blog
  • Who Writes This
  • Get In Touch
Picture

PATENT LITIGATION IN THE WESTERN DISTRICT OF TEXAS
​WACO DIVISION

What is in the Water in Waco? A Lot of Patents!

4/12/2021

0 Comments

 
Read my latest post on why patent owners are flocking to Waco on the Porter Hedges Blog at ​https://www.porterhedges.com/patent-litigation-law-blog/what-is-in-the-water-in-waco
Picture
Picture
0 Comments

Congrats to the Baylor Bears!

4/5/2021

0 Comments

 
Picture
A hearty Waco congratulations to the Baylor Bears Men's Basketball team on winning the NCAA championship!  Well done!

0 Comments

Don't Forget About the SDTX!

1/21/2021

0 Comments

 
We all know about Marshall and the EDTX as well as Waco and the WDTX, but don't forget about Houston and the SDTX! My partner, Miranda Jones explains here.
Picture
Follow Porter Hedges's New Patent Litigation Law Blog here:   https://www.porterhedges.com/patent-litigation-law-blog

​#PatentsAreBack #PorterHedges #patentlitigation #patents #texaspatents #SDTX #HoustonPatents
0 Comments

Thank you to IAM for Naming Me a "Global Leader" in IP

1/13/2021

0 Comments

 
I am humbled to have been identified as an Intellectual Property Global Leader by IAM:
Picture
I particularly appreciate this honor as both my Texas and Chinese patent litigation practices continue to grow exponentially at my new firm. I am looking forward to achieving great things for my amazing clients at Porter Hedges LLP. 

​Thank you to my clients, colleagues, and to IAM!


#PatentsAreBack #PatentLitigation #ChinesePatents #TexasPatents
0 Comments

More Markman Hearings via Zoom

10/21/2020

0 Comments

 
Picture
Judge Albright has claim constrruction hearings scheduled this week via Zoom and all are invited to observe. 

​Here are the details (the Zoom info is the same for both):

  • Thursday @ 9:00AM: Jiaxing Super Lighting Electric Appliance, Co., Ltd. et al v. CH Lighting Tech. Co., Ltd. et al. (6:20-cv-00018-ADA)
 
  • Friday @ 9:00AM: Green Mountain Glass, LLC et al v. O-I Glass, Inc. et al (6:19-cv-00600-ADA)
 Please remember to mute yourself!
​

Join ZoomGov Meeting
 
https://txwd-uscourts.zoomgov.com/j/16057076711?pwd=WHljN0h3Yk03K3JLUTZ2a0tTMitPZz09
 
Meeting ID: 160 5707 6711
Passcode: 873559
One tap mobile
+16692545252,,16057076711#,,,,,,0#,,873559# US (San Jose)
+16468287666,,16057076711#,,,,,,0#,,873559# US (New York)
 
Dial by your location
        +1 669 254 5252 US (San Jose)
        +1 646 828 7666 US (New York)
Meeting ID: 160 5707 6711
Passcode: 873559
Find your local number: https://txwd-uscourts.zoomgov.com/u/aecopz1LeN
 
Join by SIP
16057076711@sip.zoomgov.com
 
Join by H.323
161.199.138.10 (US West)
161.199.136.10 (US East)
52
61
100.140
Meeting ID: 160 5707 6711
Passcode: 873559


0 Comments

Markman Hearing Available Via Zoom

10/16/2020

0 Comments

 
Judge Albright has a Markman hearing TODAY (Friday) via Zoom starting at 9am CT am.  If you would like to learn how the Court handles claim construction, this is a great opportunity.  The access information is below:

  • Cases:  6:20-CV-124 & 125 Cameron International Corporation v. Butch’s Rathole & Anchor Service Inc. and Cameron International Corporation v. Nitro Fluids LLC.  The technology relates to well fracturing.
  • Start Time:  9 am CT

PLEASE ENSURE YOU ARE ON MUTE SO AS NOT TO DISTURB THE HEARING!!

Join ZoomGov Meeting
https://txwd-uscourts.zoomgov.com/j/16057076711?pwd=VzFsL3RPZXIwMGJ6Tjg4MEROdzk2UT09
 
Meeting ID: 160 5707 6711
Password: 384912
One tap mobile
+16692545252,,16057076711#,,1#,873559# US (San Jose)
+16468287666,,16057076711#,,1#,873559# US (New York)
 
Dial by your location
        +1 669 254 5252 US (San Jose)
        +1 646 828 7666 US (New York)
Meeting ID: 160 5707 6711
Password: 384912
Find your local number: https://txwd-uscourts.zoomgov.com/u/aecopz1LeN
 
Join by SIP
16057076711@sip.zoomgov.com
 
Join by H.323
161.199.138.10 (US West)
161.199.136.10 (US East)
52
61
100.140
Meeting ID: 160 5707 6711
Password: 384912

​
0 Comments

Thank you to IAM and my friends, colleagues and clients!

9/13/2020

0 Comments

 
Picture
I am honored to be selected for the IAM Strategy 300 for the sixth straight year.

I greatly appreciate IAM, as well as my clients, colleagues, and friends for their trust ! I especially thank to my US and China teams for helping me create a one-of-a-kind patent litigation practice.

When I left my very good in-house position at Qualcomm a little over five years ago with no clients, things could have gone horribly wrong.  There have been hiccups, of course, but I during this period, I have been honored to work with the top patent litigators in the world.  What started as a limited IP practice focused only in China has become a worldwide patent litigation and licensing practice focusing on the US, China, and Germany.  

With the growth of litigation funding for US patent litigation and fair judges like those in the Western and Eastern Districts of Texas, the US part of my practice has continued to flourish.  The magic, though, is combining US, Chinese, and German patent law into a worldwide enforcement campaign.  Successful patent enforcement is no longer limited to one or even two countries.  Rather, it is a vital part of business planning, and can require access to unfamiliar jurisdictions.  As the world gets smaller and smaller, I have been honored to help clients successfully litigate in the US, Mainland China, Taiwan, Germany, France, Brazil, Vietnam, Singapore, and Italy.  

I love what I do, and although that is generally enough, I appreciate the occasional accolade from great folks like IAM to substantiate that I am making a difference.  I owe all of my partners, associates, assistants, friends, and clients for supporting me over the years, and especially during this horrid 2020.  Here's to a better year next year, and to great patents and technology!

多谢!

0 Comments

The Strengthening of the "Albright Doctrine" re IPRs at the PTAB

5/16/2020

0 Comments

 
The "Albright Doctrine"
First, to be clear, the naming of the "Albright Doctrine" is mine, and hopefully no one (especially Judge Albright or the WDTX) takes offense.  What I am calling the Albright Doctrine is simply the idea that a federal court can get to trial more quickly than the PTAB can both institute and and adjudicate an inter partes review.  Judge Albright has been outspoken about this issue, saying specifically that "[i]t's my job to give people the opportunity to have their cases tried in a federal court ... and I probably can get a patent trial resolved more quickly than the PTAB can." 


Patent cases in Waco have been moving MUCH more quickly than in courts in Delaware and California.  For example, most claim construction hearings in Waco have taken place between 8 and 12 months from case filing according to data obtained from Lex Machina.  Even more important than a quickly moving docket, though, is that Judge Albright has does not generally stay litigation due to an IPR request or institution.  When asked recently by IAM why this is, here is how the Judge replied:
Picture
https://www.iam-media.com/law-policy/albright-the-last-thing-anyone-should-think-about-venue-it-plaintiff-friendly
In allowing patent owners their day in court in a timely manner, Judge Albright has single-handedly changed the tenor of patent litigation and provided a fair and reasonable jurisdiction for patent disputes.  Now, the PTAB is jumping on board!

As indicated below, the PTAB has basically stated that if the invalidity challenges are the same in the IPR request and parallel patent litigation, then if a court has a reasonable chance of adjudicating the issue first, the Board will use its discretion and not even institute a review.  In essence, the PTAB is saying, "yes, we believe that courts can move more quickly than we can, and if the issues are the same, then any IPR would be moot and should not be instituted." 

This is what I call the Albright Doctrine:  that a district court can moot an IPR by moving quickly to trial so that a jury can adjudicate validity rather than the PTAB.  I am a fan, because I agree with Judge Albright that juries are wise and will make the correct decisions through the longstanding U.S. trial system if allowed to do so.    I am sure that infringers and those that do not respect patents would disagree.
​

Board Rejects Institution of IPR of FinTiv Patent
Last Wednesday, May 13, the PTAB denied institution of an IPR of Fintiv Inc.'s Patent No. 8,843,125.  Apple had requested institution while Fintiv asserted that the PTAB should deny institution because Apple had raised the same invalidity challenges in the district court proceeding, which should be resolved before the PTAB reached its final decision. 

The PTAB in its previous March 20 order regarding the same matter identified six factors for determining whether to institute the IPR under 35 U.S.C. § 314(a):​
Picture
After reviewing the parties' briefs as to whether the Board should use its discretion to deny Apple's petition based on the board's precedential NHK Spring decision, the PTAB declined to institute review. 
In NHK, the PTAB refused to institute an IPR when a trial was set to take place before the Board was expected to issue a final written decision, after analyzing factors six non-exclusive factors:
  1. - the similarities and material differences between the asserted art and the prior art involved during examination;
  2. - the cumulative nature of the asserted art and the prior art evaluated during examination; 
  3. - the extent to which the asserted art was evaluated during examination, including whether the prior art was the basis for rejection;
  4. - the extent of the overlap between the arguments made during examination and the manner in which Petitioner relies on the prior art or Patent Owner distinguishes the prior art;
  5. - whether Petitioner has pointed out sufficiently how the Examiner erred in its evaluation of the asserted prior art; and
  6. - the extent to which additional evidence and facts presented in the Petition warrant reconsideration of prior art or arguments.” Citing Becton, Dickinson & Co. v. B. Braun Melsungen AG, IPR2017-01586, slip op. at 17–18 (Paper 8) (PTAB Dec. 15, 2017) (informative).
Six Factors Made Precedential
The Panel in its March 20 order made the six factors precedential, building on its NHK Spring decision and requiring future panels to analyze these factors when determining whether to exercise discretion to refuse review of a challenged patent on the ground that an upcoming district court trial will address the patent's validity.

Specifically, in its May 13 decision denying institution, the Board found that five of the six factors weighed in favor of denying Apple Inc.'s IPR bid, including the upcoming trial date of March 8, 2021 (postponed from November 16, 2020 due to COVID-19 pandemic) in the parallel litigation in the Western District of Texas (case no. 1:19-cv-01238-ADA).  

Other factors that supported denial of institution of IPR included:
  • the petitioner and the defendant in the parallel proceeding are the same party;
  • there was significant investment by the court and parties in the Texas federal court litigation (Apple had argued that only two depositions had been taken, and only substantial investment regarded claim construction, which was fully complete.  The Court admitted that "fact discovery is in its early stages, with document production ongoing and depositions just getting underway, expert reports are not yet due, and substantive motion practice is yet to come" but still found that "[b]ased on the level of investment and effort already expended on claim construction and invalidity contentions in the District Court, this factor weighs somewhat in favor of discretionary denial in this case";
  • the same claims were challenged based on the same prior art in both the Petition and in the District Court; and
  • Apple's arguments appeared to have weaknesses.​

This PTAB decision makes the most sense of any I have seen in some time. I hope other courts around the country will adopt Judge Albright's policy of not staying cases and moving cases quickly to trial.  Only time will tell, but right now, the PTAB just gave Judge Albright a vote of confidence.
0 Comments

Part 2 of IAM's Interview with Judge Albright (aka "Why Waco is Fair, and Not Plaintiff-Oriented)

4/9/2020

0 Comments

 
Picture
Richard Lloyd at IAM has published part 2 of his interview with Judge Albright of the Western District of Texas Waco Division.  For part 1, see my earlier post.  Interestingly, Judge Albright makes a point to point out that his court should not be considered plaintiff-friendly, but rather, "scrupulously fair":
So, every single time I have ever given a talk to anybody, I have tried to stress that what I am hoping the people are going to get from my court is someone who had 20 years of experience handling patent cases and handled a fair number of patent trials to verdict - but also handled them on both sides of the docket. I want every party that comes out of my court to feel like I was scrupulously fair:

Picture
I have been saying this since Judge Albright (re)took the bench.  Patent owners are rejoicing at the ability to file in Waco not because they get an unfair advantage, but rather because -- unlike many district courts and the PTAB -- the rules are not 100% against them.  Perhaps the most important aspect of Judge Albright's court is that he generally does not stay litigation pending IPRs at the PTAB.  As he says in part 2 of the interview: 
"​I think that people have a constitutional right to assert their patent. I mean, patents are in the Constitution, the right to a jury trial is in the Constitution. I am not taking away anyone's right to go to the PTAB, but I think people ought to have a jury trial. [] I don't have any problem with the idea of the PTAB handling validity issues, but I will say this: I think juries are very wise and I think we can count on them to make the right decisions if they are provided with the right evidence. So, I have great faith in the juries on every issue."
It's sad that because defendants do not have their normal huge advantage, they are eager to imply that Waco is "plaintiff-friendly."  Like Judge Albright, I think the better term is "fair."
0 Comments

Excellent interview with Judge Albright

4/6/2020

0 Comments

 
Picture
Picture
Richard Lloyd at IAM just published his excellent interview with Judge Albright of the Western District of Texas Waco Division.  I fully recommend everyone give it a read.

0 Comments
<<Previous
    Subscribe to The Waco Patent Blog by Email

    RSS Feed

    Picture
    Picture

    Archives

    January 2021
    October 2020
    September 2020
    May 2020
    April 2020
    March 2020
    August 2019
    July 2019
    June 2019
    May 2019

    Categories

    All
    Baylor
    Judge Albright

Privacy Policy    |    Disclaimer
© 2020  Erick Robinson