Both the Eastern and Western Districts of Texas are well-known for promptly calendaring patent trials. But parties’ odds of actually proceeding to trial during the COVID-19 pandemic may vary between the Districts, as shown by two recent case studies.
- E.D. Tex.: Parties with patent cases pending in the Eastern District would do well to assume their cases will proceed to trial, even in light of the COVID-19 pandemic. Judge Gilstrap of the Marshall Division of the Eastern District of Texas recently denied a plaintiff’s motion to continue a patent jury trial that was scheduled to proceed on July 6; the case settled thereafter. And Judge Mazzant of the Sherman Division has already conducted one jury trial (in a non-patent case) in June.
- W.D. Tex.: Parties with patent cases pending in the Waco Division of the Western District may be faced with a longer wait to get to trial for as long as the COVID-19 pandemic is pending. The Western District of Texas has taken a more conservative District-wide approach to scheduling jury trials. Judge Albright of the Waco Division has so far declined to exercise his discretion to proceed with civil jury trials.
In deciding to what extent court operations should proceed in light of the COVID-19 pandemic, the Federal Judiciary issued COVID-19 Recovery Guidelines, as described in an April 27, 2020, announcement. These Guidelines direct U.S. Courts to “consider the local public health agency’s recommendations, which rely on conditions such as total population, population density, number of people over age 60, the availability of intensive care unit beds, and confirmed cases of COVID-19.” Consistent with their obligations under these guidelines to consider locally-tailored facts and circumstances, Courts in the Eastern and Western Districts with pending patent jury trials have recently arrived at diverging outcomes, as illustrated by the Image Processing v. Samsung case in the Eastern District and the MV3 Partners v. Roku case in the Western District.
E.D. Tex. Case Study – Image Processing Techs. LLC v. Samsung Elecs. Co., Ltd. (No. 2:20-cv-00050)
As noted above, the Eastern District of Texas has long been a preeminent venue for patent jury trials, with 34 non-ANDA cases filed in 2015 or later proceeding to trial.1 A recent example shows that the Court does not intend to let the COVID-19 pandemic unduly disrupt that track record.
On May 13, 2016, Image Processing Technologies (“IPT”) commenced suit against Samsung before Judge Gilstrap of the Marshall Division, asserting seven patents. Following a lengthy stay entered after multiple inter partes review proceedings were instituted and severance of one asserted claim that had survived those IPRs, trial was initially set in the severed case for April 13, 2020. On March 12, 2020, the Court granted-in-part the parties’ Joint Motion for Relief Relating to the Coronavirus; reset trial to June 1, 2020; and further directed the parties to “prepare to go to trial with or without the physical presence of witnesses” (e.g., by conducting remote depositions of witnesses located in Korea). The trial date was thereafter bumped a month, to July 6, based on IPT’s counsel’s scheduling conflict.
On June 29, with trial seven days away, IPT moved to continue the trial, citing spiking COVID-19 cases in Texas, and resulting health concerns relating to IPT’s counsel (particularly in light of travel to Marshall) and distraction to the jury. Samsung filed a response “tak[ing] no position on plaintiff IPT’s motion” and promising to “abide by the Court’s orders and preferences without objection”—but also noting that “[m]any counsel and witnesses have already traveled to Texas” and that “[m]ost of Samsung’s trial team is now in Marshall.”2 Samsung further requested that if the Court were to grant IPT’s motion, that the trial be “rescheduled for a later date when quarantining of visitors from overseas will foreseeably no longer be necessary,” given the “hardship for [Samsung’s witnesses] to complete quarantine in their home countries only to have to turn around and return to the United States to begin the cycle again.”3
That same day the Court denied IPT’s motion.4 The Court observed that the pandemic-related “circumstances in this division and district have not impacted the Court’s operations, to date, as it has its sister Texas districts.” It further found that “it would be prejudicial to Samsung, its witnesses, and its representatives to continue the trial” because “Samsung has expended great effort and expense to ensure that all its necessary witnesses and representatives are in Marshall.”5 Finally, the Court noted the “arduous task” of rescheduling a trial and called attention to the Court’s “extensive efforts and planning to ensure that the trial in this case can proceed as safely as possible.”6 The following day, July 1, the parties filed a notice of settlement and joint motion to stay all deadlines, which the Court granted.
Of note, even if the IPT-Samsung case had proceeded to trial on July 6, it would not have been the first civil jury trial to occur in the Eastern District of Texas since the COVID-19 pandemic began. Judge Mazzant of the Sherman Division conducted a three-day civil jury trial in a personal-injury case on June 8-10. Media coverage of the trial indicated that Judge Mazzant and counsel “all said they were surprised at just how little concern about the virus jurors expressed from voir dire to verdict, and said the trial itself went off without a hitch.”8
Accordingly, barring a marked increase in COVID-19 cases within the boundaries of the Eastern District, parties and counsel should probably presume that any cases presently slated for trial within the District will proceed. A party wishing to postpone the trial should raise the issue as soon as practicable in order to have any chance of success.
W.D. Tex. Case Study – MV3 Partners LLC v. Roku, Inc. (No. 6:18-cv-00308)
Judge Albright’s Court in the Waco Division of the Western District has become the nation’s busiest patent jurisdiction, with 370 new patent actions commenced in that division during the first six months of 2020 alone.9 However, despite this large number of filings, the Court has been unable to conduct a jury trial in a patent case due to the COVID-19 pandemic. MV3 v. Roku is projected to be the first such patent jury trial before Judge Albright, but the date for the trial has been repeatedly adjourned.
MV3 initially sued Roku on October 16, 2018. As of February 2019, the case was calendared for trial to begin June 1, 2020. On April 2, 2020, in the early stages of the pandemic, Roku moved for a continuance of the trial date, but the Court denied Roku’s motion later that week. However, in light of subsequent guidance issued by the Western District, Judge Albright has since needed to continue the case trial date three times—first moving it to June 29 on May 13, and then moving it to August 3 on June 15, shortly after conducting a final pretrial conference.
The third continuance occurred following issuance of the Western District’s Supplemental Order Regarding Court Operations Under the Exigent Circumstances Created by the Covid-19 Pandemic on July 2. Based on the District’s “close monitoring [of] the outbreak of novel coronavirus (which causes the disease designated as COVID-19),” the Court expressed its “concern with the health and safety of the public, Court employees . . . , litigants . . . , counsel, interpreters, law enforcement officials, and jurors who must work in close quarters to hear evidence and to deliberate.”10 To that end, the Supplemental Order provided that “[a]ll civil and criminal bench and jury trials scheduled to begin on any date from now through August 31, 2020, are continued, to a date to be reset by each Presiding Judge.”11 Notably, the District acknowledged the wide geographic diversity of the Western District, and provided that “[i]f judges in a specific division determine jury trials can be safely conducted, the most senior district judge may enter an order making those findings and resuming jury trials for the division despite this order.”12
Shortly after the Western District’s July 2 Order, Judge Albright held a status conference, at which time he “let the parties know that due to the pandemic unfortunately . . . the trial will have to be continued again.”13 The Court then tentatively set a rescheduled jury selection for September 3 or 4, with trial to commence on September 8.14
At this time, it remains to be seen whether circumstances as of late August and early September will permit the MV3 v. Roku trial to proceed as scheduled, or whether the Court will order a further continuance. But it is effectively certain that the entire patent bar will be watching these proceedings very closely.
1) See www.docketnavigator.com.
2) ECF No. 196.
4) ECF No. 200.
7) See Newberry v. Discount Waste Inc., No. 4:79-cv-00147.
8) See https://www.law360.com/articles/1282603/tough-texas-jurors-make-for-smooth-trial-during-pandemic.
9) See www.docketnavigator.com.
10) Supplemental Order Regarding Court Operations Under the Exigent Circumstances Created by the Covid-19 Pandemic
13) ECF No. 301.