Tag: Patent

Dance Like No One is Watching

How does filing a routine notice of dismissal turn into a “deliberate attempt to circumvent the Court’s lawful order” resulting in sanctions?  Plaintiff’s colorfully worded public Facebook posts regarding the case and the Judge may have had something to do with it…

The cases are De La Vega v. Microsoft Corp. and De La Vega v. Google LLC, both filed in the Waco Division in October 2019.   Both Defendants moved to dismiss for failure to state a claim, the motions were fully briefed, and the Court set a hearing.  Nothing remarkable. At this hearing, Judge Albright agreed with Defendants but gave Plaintiff the chance to replead to fix the deficiencies.  In an interesting turn of events, Plaintiff’s counsel asked to address the Court, in response to the Court’s oral ruling, and stated that Plaintiff was essentially unable to fix the deficiencies by repleading.  In light of this, the Court orally granted Defendants’ Motions and dismissed the claims noting that a written Order would follow.  The minute entry reflected the dismissal with prejudice.

The day after the minute entry was entered, but before the Court’s written Order was entered, Plaintiff filed a Notice of Voluntary Dismissal without prejudice.  Both Defendants opposed the Voluntary Dismissal, noting that the Court’s oral ruling left no remaining claims that could be voluntarily dismissed.  The Court then issued its written ruling granting Defendants’ Motions to Dismiss with prejudice. 

The Court held another hearing whereby he questioned why Plaintiff filed a Notice of Voluntary Dismissal following his ruling to dismiss the claims with prejudice.  While Plaintiff contended that he did not understand the Judge’s ruling was with prejudice, Defendants presented contrary arguments.  The most interesting came in the form of Plaintiff’s Facebook post from the day before the Notice for Voluntary Dismissal was filed stating: “Today all my cases were grossly blatantly dismissed with the word “PREJUDICE” attached to all my law suits…”  As expected, this slightly undermined the argument that Plaintiff did not know the dismissal was with prejudice.

Microsoft moved for attorneys fees associated with responding to the Notice of Voluntary Dismissal as well as sanctions.  Finding that Plaintiff and Plaintiff’s counsel acted in bad faith by filing the Notice, the Court awarded Microsoft attorneys fees and ordered Plaintiff’s counsel to complete legal ethics courses.  The Court further banned any attorney at Plaintiff’s counsel’s law firm from filing anything in the Western District of Texas ECF system until Plaintiff’s counsel provides proof of completion of legal ethics courses to the Court.

The moral of this story: Dance like no one is watching, email like it will be read aloud in a deposition, and tweet and post like it will be read aloud to a Federal Judge in open court.

Enjoy your social media responsibly!

Note: the sanctions in these cases were directed at one specific attorney for Plaintiff, the other attorney of record was not a subject of the Court’s Order.

Through the Looking Glass

Since the Supreme Court’s decision in Alice Corp. v. CLS Bank Int’l five and a half years ago, many Defendants have considered it standard practice to file a § 101 motion early on in litigation.  However, several courts seem to be following a general rule denying pre-Markman §101 motions without prejudice, noting that that the patent-challenger can re-urge the motion post-claim construction.

Here in Waco, Judge Albright appears to follow this practice in typical patent cases.  In his recent decisions denying pre-claim construction §101 motions, he followed the guidance of the Federal Circuit’s decision in MyMail, Ltd. v. ooVoo, LLC, 934 F.3d 1373 (Fed. Cir. 2019).  In MyMail, the Court noted that the question of patent eligibility under § 101 may turn on the proper construction of claim terms and thus it could be error for a district court to rule on a § 101 motion without first resolving a claim construction dispute.

While this initially may seem frustrating to Defendants, Judge Albright’s practice is balanced by limiting pre-Markman discovery.  So, while patent challengers may have to wait until after claim construction for a definitive ruling on their § 101 motions, patent holders may have to wait until after claim construction to obtain discovery.  These practices aim to limit the unnecessary accumulation of large attorneys’ fees on both sides before a determination on claim construction has been made. 


Welcome to Waco Patent Litigation Updates: a blog by Jacqueline Altman, John Palmer, and Andy Powell, discussing newsworthy developments out of Waco, TX that don’t have to do with Chip and Joanna Gaines (for now).

Unless you are brand new to the patent litigation game, you should be aware that Waco is finally on the map for something other than Fixer Upper, Baylor football, or the Branch Davidians.  The Western District of Texas, Waco Division is now the newest patent litigation hub in the nation thanks to the appointment of its latest District Judge, Alan Albright.  If patent filings continue in Waco at the rate they have been since he took the bench, this small courthouse on Franklin Ave. is poised to widen its influence far past the Heart of Texas.

This blog is designed to be a forum for up-to-date, local information on all thing patent litigation, focusing on aspects unique to the Waco Division.  Our goal is to be your one-stop resource for all things local patent litigation in Waco.

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