Cases Filed Now May Not Get Trial Dates Until Late 2011 or Early 2012

Eastern District Rocket Docket Decelerates in Marshall Division

Cases Filed Now May Not Get Trial Dates Until Late 2011 or Early 2012

By Mary Alice Robbins

As noted on Maland's statistical charts, patentees filed 31 cases in the Marshall Division in 2003. The number of filings in Marshall has climbed steadily since then, with 69 in 2004, 103 in 2005 and 134 in 2006.

Ward says Everingham has helped with the patent caseload and is trying cases in which parties on both sides have given their consent. "It helps a lot," Ward says.

Everingham says he has tried four patent suits, including one that settled during trial, since taking the bench.

Maland says the number of patent case filings in Marshall is down slightly this year. During the 12-month period ending Aug. 11, the Marshall Division had 229 cases filed, Maland's charts show. During the same 12-month period, the Tyler Division had 70 patent case filings; the Lufkin and Texarkana Divisions had 20 filings each; the Sherman Division had eight and Beaumont had three, according to the charts.

However, U.S. District Judge Leonard Davis of Tyler says he currently has about 100 patent suits pending and has not encountered difficulties in managing that caseload. Davis estimates that, in most instances, the patent cases in his court are going to trial within 24 to 30 months after they are filed.

"Our rocket is still flying high," Davis says.

Ted D. Lee, immediate past chairman of the State Bar of Texas Intellectual Property Section and a shareholder in San Antonio's Gunn & Lee, says the docket in Ward's court is so clogged, because so many patentees file suit there based on the perception that the Eastern District is pro-patentee.

"The perception of the people who are getting sued is that the playing field is not level," says Lee, who usually represents defendants in patent cases filed in the Eastern District.

Lee says it's almost impossible for a defendant to get a motion for change of venue granted, because Ward places such emphasis on a plaintiff's choice of forum.

Ward says, "I try to follow the law as I understand it."

Patent litigator Doug Cawley, a shareholder in McKool Smith in Dallas, says the U.S. Congress has tried in its last three sessions to pass legislation that included provisions to limit forum-shopping by plaintiffs. Cawley, who follows such legislation, says the House passed H.R. 1908 in September 2007 but the Senate could not come up with a bill that would pass in that chamber.

Michael C. Smith, who also monitors patent legislation, says U.S. Sen. Patrick Leahy, D-Vt., abandoned the Senate's version of the bill, S. 1145, in April after determining that he did not have enough votes to win passage.

"The legislation doesn't appear to be going anywhere in this Congress," says Smith, a partner in Siebman, Reynolds, Burg, Phillips & Smith in Marshall.

Cawley says he believes such legislation is unnecessary because of the length of time it takes to move cases to trial in the Marshall Division, combined with the fact that defendants are having good experiences with judges and juries in the Eastern District.

Patentees' Preference

Several patent attorneys attribute the slowdown in the rocket docket to the combination of increased filings and the requirement that courts hold hearings in patent suits to interpret the claims in patents. In 1996's Markman, et al. v. Westview Instruments Inc., et al., a unanimous U.S. Supreme Court affirmed the Federal U.S. Circuit Court of Appeals' decision that the construction of a patent, including terms of art within the patent claim, is an issue of law to be decided by a judge, not a jury.

Patent attorney Joseph Grinstein, a partner in Susman Godfrey in Houston, says if the number of personal-injury cases filed in the Eastern District matched the number of patent suits filed there, the personal-injury cases would go to trial quickly. But in patent cases, he says, the judge must conduct a Markman hearing before trial.

"The claim construction process really slows things down," says Grinstein, who represents plaintiffs in patent litigation.

Everingham says it usually takes him about three hours to conduct a Markman hearing but that he must do a substantial amount of preparation before the hearing. Following the hearing, Everingham says, he must write and issue a memorandum opinion, which can take anywhere from a few days to about 90 days, depending on the complexity of the case.

Smith, who represents plaintiffs and defendants, says the Eastern District judges who hear patent cases are able to do only between 65 and 75 Markman hearings a year - substantially fewer than the number of suits filed annually.

"No one seems to want to settle until after the Markman hearing," he says.

Smith, who monitors the Eastern District's patent docket for his Web log,

If it takes from three to four years to get to trial, the defendant has time to challenge the validity of the patent, Daniels says. Such challenges involve asking the U.S. Patent and Trademark Office to re-examine the patent.

"It takes about two years from the time the office grants a petition for a re-examination to make a final determination," Daniels says.

But Daniels says that having a lengthy period between the filing of a patent case and the trial raises the costs for the patentee and the defendant.

The costs for patent litigation are high, even without delays. In 2007, the median cost of a patent suit in which less than $1 million was at risk was $350,000 through discovery and $600,000 if the suit went through a trial, according to the American Intellectual Property Lawyers Association 2007 member survey. When more than $25 million was at risk, the median cost was about $3 million if the suit concluded after discovery and about $5 million through trial, the AIPLA reported.

Despite the length of time it takes to get a patent case to trial in Marshall, Grinstein still thinks the Eastern District is "a great venue," because the judges there are experts on patent matters, and there is a pool of experienced patent lawyers available to serve as local counsel. "It's hard to say to a client, 'You ought to go elsewhere,' " Grinstein says.

Smith says he has found that some patentees prefer to file their suits in Marshall. "Generally, I assume they're going to want to go to one of the quicker venues," he says. "But to my surprise, they prefer to go to Marshall, where the judges have the expertise."