Texas Patent Litigation Monthly Wrap-Up: February 2023

This post summarizes some of the significant developments in the Western District of Texas and the Eastern District of Texas for the month of February 2023.

SpaceTime3D, Inc. v. Apple Inc., No. 6:22-cv-00149 (W.D. Tex. Feb. 2, 2023) (J., Albright)

Motion to Stay Pending Decision on Intra-District Transfer

The defendant moved for an intra-district transfer to the Austin Division of the Western District of Texas, and subsequently filed a motion to stay the case proceedings pending the court’s ruling on the defendant’s motion to transfer.¹ The defendant argued that the court should prioritize its intra-district motion the same as an inter-district motion and stay the case pending a decision on its motion to transfer.

The court denied defendant’s motion to stay, finding that 1) intra-district and inter-district transfer motions are treated differently, and 2) the court does not have to stay the proceedings or decide whether to transfer the case intra district until closer to trial. The court explained that there is no case law instructing District Courts to prioritize or stay cases pending the resolution of intra-district transfer motions, noting that trial courts enjoy greater discretion in deciding intra-district transfer motions than inter-district motions.

Next, the Court analyzed the four relevant factors for deciding whether to grant a motion to stay. The court assumed that the first factor favors the defendant but found that the other three factors weigh strongly against a stay. For the second factor, the court found that the defendant failed to demonstrate that it would suffer any harm. For the third factor, the court found that the plaintiff will suffer a particularized harm, specifically, the plaintiff’s interest in the timely enforcement of its patent right. For the fourth factor, the court found that a stay would greatly disserve the public interest by wasting the already-spent judicial resources connected with the court issuing preliminary constructions for a Markman hearing.

Communication Technologies, Inc. v. Samsung Electronics America, Inc. et al., No. 2:21-CV-00444 (E.D. Tex. Feb. 2, 2023) (J., Gilstrap)

Motion to Stay Pending Inter Partes Review

The defendants moved to stay until the Patent Trial and Appeal Board concludes inter partes review of all asserted claims in the asserted patent. The court granted the motion, finding that a stay is warranted because the PTAB instituted review of every asserted claim, and this suggested a substantial likelihood of simplification of the case.

The court analyzed the stay in view of the four stay factors.1 The court explained 1) the plaintiff failed to establish that monetary damages are inadequate to remedy any harm caused by the defendants; 2) while the defendant could have acted sooner in filing an IPR petition, with the close of discovery, the claim construction hearing, and the trial setting all in the future, the second factor slightly weighs in favor of a stay; 3) given that all claims are being reviewed, the likelihood of simplification is material, and the third factor favors a stay. Given these three factors together, the court stayed the case until the PTAB issues its ruling regarding the asserted patent.

Mel NavIP LLC v. Toyota Motor North America, Inc. et al., Civil Action No. 2:22-CV-00152 (E.D. Tex. Feb. 3, 2023) (J., Gilstrap)

Motion to Dismiss

The defendant argued that the asserted patent specification disclaims certain subject matter and the products accused of infringement fall into that subject matter. The court denied the motion, finding that the defendant has not shown, at this early stage, any clear and unmistakable disavowal in the asserted patent. The court explained that the patent language does not rise to the level of a clear and unmistakable disavowal, and the patentee did not manifestly exclude or restrict the claim scope. The court concluded that the parties have neither completed claim construction discovery nor briefed claim construction issues, and it was too early to decide the issues presented by the defendant.

Staton Techiya, LLC et al v. Samsung Electronics Co., Ltd. et al., Civil Action No. 2:21-cv-00413 (E.D. Tex. Feb. 21, 2023) (Mag., Payne)

Motion for Leave to Depose After Close of Fact Discovery

The defendants filed a motion for leave to depose after the close of fact discovery, arguing that they diligently pursued the deposition, including attempts to contact the deponent through various communication channels. The court denied the motion, finding that no cause exists to allow a deviation from the court’s scheduling order.² Specifically, the court explained that the defendant failed to show diligence for the period before the first contact of the deponent, for example, by failing to provide dates for the purported contact, how the contact means were obtained, and an explanation as to whether those sources of contact were previously unavailable. Further, the court explained that the defendant made no effort to notify the plaintiff of its intention to take the deposition until just four days before the discovery deadline, which further supported lack of diligence. The court concluded that the factors on balance do not support granting a late deposition, and the importance of the deposition does not outweigh the prejudicial impact upon the plaintiff.

¹ A motion to stay is a request to pause or delay proceedings in a case. The four factors that a court considers in deciding whether to grant a motion to stay are 1) whether the movant has made a showing of likelihood of success on the merits of the case, 2) whether the movant will suffer potential irreparable harm, 3) whether granting the stay would substantially harm other the partie,; and 4) whether the stay would serve the public interest. See, e.g., United States v. McKenzie, 697 F.2d 1225, 1226 (5th Cir. 1983).

² The court considered four factors: (1) the explanation for the failure to meet the deadline, (2) the importance of the modification of the deadline, (3) potential prejudice in allowing the modification, and (4) the availability of a continuance to cure any such prejudice. See, e.g., Reliance Ins. Co. v. The Louisiana Land & Exploration Co., 110 F.3d 253, 257 (5th Cir. 1997).