Texas Patent Litigation Monthly Wrap-Up: December 2023

This post reviews developments from the Northern, Southern, Eastern, and Western Districts of Texas in December 2023. 

Northern District

Starting with the Northern District, on December 7, 2023, Chief Judge David Godbey issued Special Order No. 3-351 referring all cases assigned to former Magistrate Judge Irma C. Ramirez to other magistrate judges in the Dallas Division. On December 4, 2023, Judge Ramirez was confirmed as a circuit judge for the Fifth Circuit Court of Appeals. Judge Ramirez had served as magistrate judge for the Northern District since 2002.

On December 13, 2023, Judge Barbara M. G. Lynn heard oral argument on motions for summary judgment and a motion to exclude in Hoya Corporation v. Alcon Laboratories, Inc., No. 3:20-CV-3629-M, 2024 WL 310706 (N.D. Tex. Jan. 26, 2024). The court ruled on some of the motions during the hearing, and fully disposed of the motions in an order that was made publicly available in January 2024. 

Hoya alleged that Alcon’s UltraSert IOL insertion devices used in cataract surgeries infringed patents related to intraocular lenses and ocular implant insertion devices. The court granted Alcon’s motion for summary judgment of noninfringement for some asserted claims, and found that Hoya is not entitled to damages for certain patents for its failure to mark. The court also considered Alcon’s motion of no willful infringement for the remaining asserted patents. Although evidence indicated that Alcon was aware of Hoya’s competing iSert product, the court found no evidence that Alcon was aware of the specific asserted patents and granted Alcon’s summary judgment of no willful infringement on that basis. The court also denied summary judgment of anticipation for certain asserted patents, and granted and denied in part Hoya’s motion to exclude Alcon’s damages expert.

Southern District

At the end of 2023, Magistrate Judge Sam Sheldon issued an order in C&M Oilfield Rentals, LLC v. Ensign US S. Drilling LLC, No. 4:22-CV-965, 2023 WL 9007238 (S.D. Tex. Dec. 28, 2023), denying the defendant’s motion to stay pending inter partes review (IPR) and construing certain claims. The parties in this patent dispute provide services and equipment in the oilfield industry. C&M alleges that Ensign infringes two patents concerning lighting equipment for drilling rigs.  Ensign filed petitions for IPR on both asserted patents. The Patent Trial and Appeal Board (PTAB) instituted IPR on one of the challenged patents but has not yet weighed in on the second patent.

After considering the factors for a stay, the court determined that a stay pending resolution of the IPRs was not warranted. Beginning with prejudice to the non-moving party, the court found that C&M’s interest in timely enforcing its patent rights, avoiding the risk of lost evidence, and the inability to remedy the harm with monetary relief weighed in favor of denying a stay. The court then considered whether a stay would simplify the issues. Because Ensign had not stipulated to relitigate the invalidity issues it raised with the PTAB, and additional issues such as breach of contract would not be resolved by the IPRs, the court concluded that any potential benefit from the stay was speculative. Finally, the court determined that the stage of the case weighed against a stay. The parties had engaged in some discovery, completed claim construction briefing, and attended a Markman hearing.

Eastern District

Magistrate Judge Roy S. Payne issued a number of opinions in the dispute between Entropic Communications and Charter Communications shortly before the parties filed a stipulated dismissal notice on December 10, 2023. See Entropic Commc’ns, LLC v. Charter Commc’ns, Inc., No. 2:22-CV-00125-JRG-RSP (E.D. Tex.). Among the motions filed by Entropic, Judge Payne recommended grant of the motion for summary judgment of validity under 35 U.S.C. § 101 (Dkt. No. 364, 2023 WL 8535214) and the grant-in-part and denial-in-part the motion for summary judgment of no invalidity under §§ 102 and 103 (Dkt. No. 362, 2023 WL 8535212). Judge Payne also recommended denying Charter’s motion for summary judgment of invalidity of one of the asserted patents (Dkt. No. 363, 2023 WL 8534976). Judge Gilstrap adopted all of Judge Payne’s recommendations.

On December 8, 2023, Judge Payne issued an order granting the defendant’s motion to amend its invalidity contentions in RJ Tech. LLC v. Samsung Electronics Co., No. 2:22-CV-00401-JRG-RSP, 2023 WL 8587254, at *1 (E.D. Tex. Dec. 8, 2023). Samsung sought leave to amend its invalidity contentions two months after initially serving them to include a reference that was not disclosed to or identified by the U.S. Patent Office or foreign patent offices. The court found that Samsung was diligent in its prior art searches and in seeking amendment. The court also found that the case was in early stages given that claim construction had not yet occurred.

In multidistrict litigation before Judge Rodney Gilstrap, the court issued a claim construction order on December 13, 2023, following a hearing held in October 2023. See In re Taasera Licensing LLC, Pat. Litig., No. 2:22-MD-03042-JRG, 2023 WL 8628323 (E.D. Tex. Dec. 13, 2023). Judge Gilstrap found two terms indefinite: “the application of the restriction of the user’s transaction” and “substantially real time” / “substantially real-time data.” The court agreed with defendants that the first term lacked an antecedent basis and was not subject to reasonable correction. With respect to “substantially real time,” the court found that the specifications suggested a difference in scope between “real time” and “substantially real time” without explaining that difference.

On December 14, 2023, Judge Gilstrap denied the defendant’s Rule 12(b)(6) motion to dismiss in Greenthread, LLC v. OmniVision Techs., Inc., No. 2:23-CV-00157-JRG, 2023 WL 8653155, at *1 (E.D. Tex. Dec. 14, 2023).  OmniVision argued that the complaint failed to adequately plead direct infringement because the infringement charts attached to the complaint lacked annotations indicating the accused features that were present in complaints filed against other defendants.  OmniVision also argued that certain limitations were absent in the accused products. The court ruled that Greenthread had met the pleading standard and that annotations were not required.  Further, the court noted that it could not determine whether limitations were absent before construing those limitations. The court also found that Greenthread had adequately pled indirect infringement at least as of the filing of the complaint.

Western District

On December 6, 2023, Judge Alan D. Albright denied the defendant’s motion to dismiss under 35 U.S.C. § 271(g) and collateral estoppel in ACQIS LLC v. Quanta Computer, Inc., No. W-23-CV-00265-ADA, 2023 WL 8461643, at *2 (W.D. Tex. Dec. 6, 2023). Quanta argued with regard to § 271(g) that it could only be liable if the method was performed directly in the manufacture of physical goods rather than merely the transmission of data. Quanta further argued that the asserted method claims were carried out “during the operation” — “not during the manufacture” — of the accused products. Judge Albright denied the motion based on his finding that “[t]he inclusion of claim limitations directed to data transmission does not change that the claims cover methods of manufacturing, which include testing, a physical computer product.” ACQIS, No. W-23-CV-00265-ADA, 2023 WL 8461643, at *3.  Quanta also argued that ACQIS had previously litigated infringement in a case filed in the District Court of Massachusetts against EMC Corp. Judge Albright found the previously litigated patents were not the same as the patents asserted against Quanta and denied the motion on that basis.

Magistrate Judge Derek T. Gilliland issued an order requiring the plaintiff to narrow its asserted claims prior to the defendant’s deadline for invalidity contentions in Jawbone Innovations, LLC v. Meta Platforms, Inc., No. 6:23-CV-00158-ADA, 2023 WL 8856049, at *1 (W.D. Tex. Dec. 20, 2023). The plaintiff had asserted 208 claims across 8 patents, “nearly half” of which the court had already found indefinite. Jawbone, No. 6:23-CV-00158-ADA, 2023 WL 8856049, at *1. The court found that Jawbone had sufficient information to narrow its claims prior to invalidity contentions at least because it had previously litigated the patents in four other suits and received a claim construction order. The court further noted that it “routinely grants related requests to reduce asserted claims to a reasonable number.” Id.  Based on those findings, the court ordered Jawbone to reduce its asserted claims from 208 to 40 prior to invalidity contentions.

Judge Gilliland also issued an order denying defendant’s motion to stay pending IPR in Datanet LLC v. Dropbox Inc., No. 622CV01142OLGDTG, 2023 WL 9005604, at *1 (W.D. Tex. Dec. 28, 2023).  Judge Gilliland emphasized that the court had already held its Markman hearing before Dropbox filed its motion; no IPRs had been instituted; and any final written decision was not expected until at least two months after the currently scheduled trial date.