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`How the Pandemic Is Shaping Patent Trials in District Courts | Troutman Pepper
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`APPLE ET AL. 1021
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`INSIGHTS
`HOW THE PANDEMIC IS SHAPING PATENT TRIALS IN DISTRICT COURTS
`How the Pandemic Is Shaping Patent Trials in District
`Courts
`02.18.21
`Published in Law360 on February 18, 2021. Reprinted here with permission.
`This article explores the eect of the pandemic on patent trials. Early in the COVID-19 pandemic,
`rapidly shifting conditions, state and federal guidance, and many unknowns forced federal district
`courts to adapt their procedures. Courts faced the task of balancing the safety all involved in the
`case, including court sta, witnesses and lawyers, with concerns over fairness and access to
`justice.
`COVID-19 Procedures by Jurisdiction
`District courts with signicant patent dockets, such as the U.S. District Courts for the District of
`Delaware, Northern District of California, Eastern District of Texas and Western District of Texas, all
`issued COVID-19 governing procedures that followed three basic steps.
`First, these courts continued all civil jury trials for at least one month.[1] Second, they suspended
`paper ling requirements.[2] Third, they encouraged the use of telephone or videoconferencing
`instead of in-person proceedings.[3] All four courts continued to issue monthly or bimonthly orders
`extending the continuance of civil jury trials.
`
`These district courts also issued and extended orders regarding the use of videoconferencing in
`criminal matters, citing Section 15002(a) of the Coronavirus Aid, Relief, and Economic Security, or
`CARES, Act.[4] Since neither the CARES Act nor the resulting general orders on criminal
`proceedings address civil trials,[5] the courts simply added language encouraging the use of
`telephone or videoconferencing to their standing orders continuing current civil trials.[6]
`Articles & Publications
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`Current Restrictions on Civil Jury Trials[7]
`District of Delaware
`
`Since Sept. 15, 2020, the U.S. District Court for the District of Delaware has permitted civil jury trials
`at the discretion of the presiding judge, but no judge has held a patent jury trial since March 2020.
`[8]
`
`Beginning this year, however, the District of Delaware has held two patent bench trials. U.S. District
`Judge Maryellen Noreika presided over a four-day bench trial from Jan. 19-22 in Vifor Fresenius
`Medical Care Renal Pharma Ltd. v. Lupin Atlantis Holdings SA, and U.S. District Judge Leonard
`Stark presided over a 14-day bench trial from Jan. 15-28 in H. Lundbeck A/S v. Lupin Ltd.[9]
`Northern District of California
`
`The U.S. District Court for the Northern District of California suspended all in-person proceedings
`through Feb. 15.[10]
`Eastern District of Texas
`Litigants in the U.S. District Court for the Eastern District of Texas must notify opposing counsel if
`an in-person proceeding would put those in attendance at risk of COVID-19 exposure.[11] If a party
`gives such notice, the parties must meet and confer regarding the appropriate means to conduct
`the proceeding, including videoconferencing or delaying the proceeding.[12] After determining the
`appropriate means, parties must jointly move for the requested relief.[13]
`Western District of Texas
`Civil jury trials scheduled to begin before March 31 in the U.S. District Court for the Western District
`of Texas have been continued to a date to be reset by each presiding judge: ”[J]udges in individual
`divisions may determine that the conditions in their communities safely allow for” in-person jury
`trials.[14] One such patent jury trial is scheduled to begin in late February before U.S. District Judge
`Alan Albright.[15]
`Eect of COVID-19 on Patent Trials
`COVID-19 has unsurprisingly hindered courts’ ability to hold bench and jury trials. Last year, seven
`district courts with signicant patent dockets[16] saw an abrupt drop-o in patent jury trials
`compared to the previous ve years.
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`The number of patent bench trials also fell in 2020.
`Notably, it appears that litigants and/or courts have chosen to postpone jury trials rather than hold
`them as bench trials, as shown by the overall decline in the total number of patent trials compared
`to previous years.
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`Length of Delays Due to COVID-19
`Courts have not taken a one-size-ts-all approach to rescheduling trial dates. While some have
`pushed trial dates back by only one to three months, others have indenitely postponed trials or
`rescheduled trial dates by six or more months. The length of delay depends on several factors,
`including the stage of litigation, the particular jurisdiction and the individual presiding judge.
`
`For example, two trends have emerged from the District of Delaware: (1) early in the pandemic,
`litigants saw delays of several months for nontrial deadlines, and (2) most trial dates have been
`postponed indenitely.
`For instance, the court in TQ Delta LLC v. 2Wire Inc. initially pushed back all deadlines by three
`months.[17] After continuing the trial in August 2020, the court indenitely postponed the trial in
`January, stating that “jury trial on Feb. 22, 2021 is not feasible.”[18]
`Similarly, the court in Blackbird Technologies LLC v. Feit Electric Co. Inc. postponed the trial in late
`2020 until “a date to be determined.”[19] Likewise, in postponing the trial date in Sunoco Partners
`Marketing and Terminal LP v. Powder Springs Logistics, Judge Stark emphasized COVID-19
`s
`eects on the court’s ability to hold trials, stating that the trial was continued to a date to be
`determined and “certainly NOT in 2020.”[20]
`Where judges in Delaware have set a trial date, some opted for a signicant delay. In ChanBond
`LLC v. Atlantic Broadband Group LLC, U.S. District Judge Richard Andrews postponed the trial
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`date by nine months, from Aug. 19, 2020, to May 17, 2021.[21] U.S. District Judge William Orrick in
`the Northern District of California took a similar approach, recently rescheduling the trial date in
`Contour IP Holdings LLC v. GoPro Inc. to May 6, 2021, nearly nine months after its original August
`2020 trial date.[22]
`
`In view of the delays and uncertainty in scheduling patent jury trials, some litigants have opted to
`move forward with bench trials or alternative dispute resolution. For example, Judge Andrews
`ordered the parties in
`Wonderland Switzerland AG v. Eveno Co. Inc. to discuss converting a
`scheduled jury trial to a bench trial, stating that “the court doubts that a jury trial will be
`feasible.”[23] The parties agreed to a bench trial.
`
`In the Western District of Texas, the parties in Finalrod IP LLC v. John Crane Inc. opted for
`mediation rather than face continuances and uncertain trial dates.[24] Unlike trials, which faced
`consistent delays, “arbitrations saw little, if any, interruption.”[25] The relative lack of interruption in
`arbitration was due to some private dispute resolutions forums’ existing means for conducting
`remote dispute resolution, as well as their quick adoption of new virtual protocols.[26]
`
`Overall, courts in the Northern District of California and the District of Delaware have taken a more
`cautious approach to restarting patent trials. While hearings, conferences and other proceedings
`are being successfully conducted over videoconference or telephone, many patent jury trials have
`been postponed until at least May, if not later.
`
`Patent Jury Trials in Texas
`In the jurisdictions surveyed, all ve patent jury trials that have taken place since the pandemic’s
`interruption have occurred in Texas. In the Eastern District of Texas, Chief U.S. District Judge
`Rodney Gilstrap presided over three trials, with U.S. District Judge Davis and U.S. District Judge
`Schroeder presiding over the fourth. In the Western District of Texas, Judge Albright presided over
`the fth.
`Cases before Judge Gilstrap have progressed with relatively little COVID-19 related interruption.
`The parties in Optis Wireless Technology LLC et al v. Apple Inc. requested a two month
`continuance of the trial date,[27] but Judge Gilstrap moved the trial date by only one month.[28]
`
`Apple subsequently asked that the trial be continued for another two months,[29] but Judge
`Gilstrap denied the motion, stating that Apple’s expert witness, a professor of internal medicine at
`University of Texas Southwestern Medical Center, was not able to “project when in the future his
`ultimate conclusion might change.”[30]
`
`Judge Gilstrap reasoned that the trial should not be continued because it was impossible to say
`when “an in person jury-trial might be able to go forward.”[31] Instead, Judge Gilstrap expressed
`condence in the court’s planned safety measures — e.g., excluding symptomatic and high risk
`people from the courtroom, limiting the number of people at counsel tables, requiring face shields,
`and encouraging participants to follow Centers for Disease Control and Prevention guidelines.
`
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`Judge Gilstrap’s two other jury trials cases saw similar case timelines and trajectories. In GREE Inc.
`v. Supercell Oy, the judge granted an initial motion for a continuance, but denied further motions,
`citing the Optis case as evidence that jury trials could be conducted without incident or complaint.
`[32]
`
`Judge Albright in the Western District of Texas held a patent jury trial in MV3 Partners LLC v. Roku
`Inc. in October 2020.[33] Unlike the above cases in the Eastern District of Texas, there were no
`continuances of the trial date. Judge Albright’s second in-person patent jury trial is scheduled to
`begin on Feb. 22.[34]
`
`After a delay of two months, Judge Albright moved the case from the closed Austin court to the
`open Waco court, stating that a virtual jury trial would not be fair and/or appropriate and that
`further delays would likewise be unfair. [35] Like Judge Gilstrap, Judge Albright cited condence in
`the court’s safety precautions for the upcoming trial, including mandatory daily COVID-19 testing
`and use of N95 masks.[36]
`
`Conclusions
`Parties seeking a patent jury trial in 2020 had the most success in the Eastern and Western
`Districts of Texas. While these courts initially granted limited continuances in view of COVID-19,
`they quickly began to schedule and hold patent jury trials under new and modied procedures.
`District courts for the Northern District of California and the District of Delaware have taken a
`dierent tack, rescheduling trials until later this year or postponing them to a date to be
`determined.
`Parties in patent cases should be mindful of the dierent approaches taken in each jurisdiction and
`factor that into their decisions regarding whether to seek a continuance — and for how long — if
`they should postpone their jury trial or proceed with a bench trial and whether an alternative
`dispute resolution option may be more suitable for their needs.
`
`Disclosure: Apple Inc. is a current client of Troutman Pepper. Sunoco Partners Marketing and
`Terminal L.P. is an aliate of Sunoco Inc. (R&M), which is a client of Troutman Pepper. The rm
`does not represent these companies in any matters discussed in this article.
`[1] Court Order March 18, 2020 (D.Del); General Order 20-03 (E.D.Tex); General Order March 13,
`2020 (W.D.Tex).
`
`[2] General Order 72-6 (N.D.Cal); Court Order March 13, 2020 (D.Del).
`[3] General Order 72-6 (N.D.Cal); Court Order March 18, 2020 (D.Del); General Order March 13,
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`2020 (W.D.Tex); General Order 20-03 (E.D.Tex).
`[4] General Order 74 (N.D.Cal); General Order 20-06 (E.D.Tex); Court Order April 1, 2020 (D.Del);
`General Order March 30, 2020 (W.D.Tex).
`
`[5] https://www.congress.gov/116/bills/hr748/BILLS-116hr748enr.pdf.
`[6] Court Order May 27, 2020 (D.Del).
`
`[7] (as of Feb. 16). https://www.law360.com/articles/1252836#.
`[8] Id.
`[9] Vifor Fresenius Medical Care Renal Pharma Ltd. v. Lupin Atlantis Holdings SA, No. 1:18-cv-0039
`(D. Del. 2021) (Minute Entries 1/19/2021 – 1/22/2021); H. Lundbeck A/S v. Lupin Limited, No. 1:18-cv-
`00088 (D. Del. 2021) (Minute Entries 1/15/2021-1/28/2020).
`
`[10] https://www.cand.uscourts.gov/category/announcements-home-page/.
`[11] Court Order March 3, 2020 (E.D. Tex.).
`[12] Id.
`[13] Id.
`[14] Court Order February 2, 2021 (W.D. Tex.).
`[15] VLSI Technology LLC v. Intel Corp., No. 6:21-cv-00057 (W.D. Tex. 2021) (D.I. 426).
`[16] The Northern District of Illinois, the Northern District of California, the Central District of
`California, the Western District of Texas, the Eastern District of Texas, the District of Delaware, and
`the District of New Jersey.
`
`[17] TQ Delta, LLC v. 2Wire, Inc., No. 1:13-cv-01835 (D. Del. 2020) (D.I. 1321).
`[18] Id. Oral order 1/11/2021.
`[19] Blackbird Tech, LLC v. Feit Electric Co., Inc., No. 1:15-cv-00056 (D. Del. 2020) (D.I. 198).
`[20] Sunoco Partners Marketing and Terminal L.P. v. Powder Springs Logistics, No. 1:17-cv-01390 (D.
`Del. 2020) (D.I. 616); see, Sprint Communications Company L.P. v. WideOpenWest, Inc., No. 1:18-cv-
`00361 (D. Del. 2020) (D.I. 365) also postponed indenitely.
`[21] ChanBond, LLC v. Atlantic Broadband Group, LLC, No. 1:15-cv-00842 (D. Del. 2020) (D.I. 527).
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`[22] Contour IP Holdings, LLC v. GoPro, Inc., No. 3:17-cv-04738 (N.D. Cal. 2020) (D.I. 505, 508).
`[23] Wonderland Switzerland AG v. Eveno Company, Inc., No. 1:18-cv-01990 (D. Del. 2020) (D.I. 147,
`149).
`
`[24] Finalrod IP LLC v. John Crane Inc., No. 7:15-cv-00097 (W.D. Tex. 2020) (D.I. 394).
`[25] https://www.law360.com/articles/1323085/weighing-litigation-vs-arbitration-amid-court-
`disruptions-.
`
`[26] Id.
`[27] Optis Wireless Technology, LLC et al v. Apple Inc., No. 2:19-cv-00066 (E.D. Tex. 2020) (D.I. 115).
`[28] Id. (D.I. 120).
`[29] Id. (D.I. 341)
`[30] Id. (D.I. 387).
`[31] Id.
`[32] GREE, INC v. Supercell Oy, No. 2:19-cv-00070 (E.D. Tex. 2020) (D.I. 453).
`[33] MV3 Partners LLC v. Roku, Inc., No. 6:18-cv-00308 (W.D. Tex. 2020) (D.I 415),
`
`[34] VLSI Technology LLC v. Intel Corp., No. 6:21-cv-00057 (W.D. Tex. 2021) (D.I. 426);
`https://www.law360.com/articles/1354281/albright-orders-daily-covid-19-tests-at-intel-patent-trial.
`
`[35] Id.
`[36] Id.
`Authors
`Dabney J. Carr IV
`Dustin N. Ferzacca
`L. Andrew Tseng
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