Federal Judiciary

"Death and Texas: How to Survive and Thrive in Patent Litigation in the Eastern District": ABA's 23rd Annual Intellectual Property Law Conference

By Michael Smith

I have been asked to chair a panel discussion at the American Bar Association's 23rd Annual Intellectual Property Law Conference in Arlington, Virginia next week. The panel will be at 10:15 am Friday, April 11, and is entitled "Death and Texas: How to Survive and Thrive in Patent Litigation in the Eastern District."  (No, I didn't pick the name).  Confirmed speakers are Hon. Don D. Bush, U.S. Magistrate Judge, Sherman, Texas, Scott Partridge with Baker Botts, and Mark Reiter with Gibson Dunn.  Depending on trial conflicts, we also expect a fourth speaker (or I may just grab a familiar face out of the audience - depends on how much coffee I've had).
We have been working on topics to be discussed, and I wanted to circulate the current draft of the questions/subjects I intend to try to cover with the panel.  Please send me any comments or questions you think a panel on this subject should cover.  You can post the questions below or simply e-mail them to me at michaelsmith@siebman.com.

1.        The Eastern District is reputed to be a place where the judges expect certain behavior from lawyers.  Can you comment on what the judges expect and more importantly, what they expect not to see?
2.            I've gotten orders from Eastern District judges asking me to consider consenting to the use of a magistrate judge at trial.  Should I agree?
3.            I've heard Eastern District judges don't transfer cases very often.  Is this true, and what can I do to help my chances to getting my case transferred.
4.       There is a lot of discussion about how much detail is required in infringement and invalidity contentions under the local patent rules.  How do you know when there's enough, and what do you do about it?
5.       What do you need to show under the patent rules to be able to amend your contentions?  What, if anything, should you be concerned about here?
6.       Most patent cases have several defendants, which often participate in a joint defense group.  Are these worth it?  Are there things about JDAs to be concerned about?
7.            How do Eastern District judges use technical advisers or special masters in patent cases.  Does the practice vary among the judges?
8.             Is mediation required in the Eastern District?  Is it any different there than what I'm used to in other districts.
9.       You and the other side are disagreeing about a discovery issue - what do you do, or more importantly, what do you NOT do?
10.       What are some do's and don'ts in Markman hearings in the Eastern District?
11.       I have a really good summary judgment motion - what can I do to help get it granted?  I heard the Eastern District is not very receptive to those.
12.       Do I really need local counsel in the Eastern District?  What should I ask them about, and how should I use them?
13.       I've heard the Eastern District is pro-plaintiff in patent cases, but lately I've heard defendants are winning most of their cases.  What's the deal?  What makes trials winnable in the Eastern District - for either side?  How about foreign defendants?  Also, can you offer any wisdom about the judges and juries and what makes them decide cases the way they do?

Full post as published by Eastern District of Texas Federal Court Practice on April 04, 2008 (boomark / email).