The Exodus: Following TS Tech, Patent Lawsuit Transferred from E.D. Texas to Oregon

A few days ago I was discussing TS Tech with a patent law guru. I suggested that TS Tech would not have a major impact on the location of patent cases – largely because local judges still retain a large amount of discretion in determining whether another venue is more convenient. . . . What do I know.

Odom v. Microsoft (E.D. Tex, Jan 30 2009)

Famed patent blogger Gary Odom sued Microsoft in the Eastern District of Texas – alleging that the Office 07 toolbar infringes Odom's software patent. Judge Love was assigned the case — but now he has granted Microsoft's motion to transfer the case to Oregon. You see, Odom is located in Oregon, Microsoft in Washington, the Klarquist firm (who once worked with both Odom and Microsoft) is in Oregon.

Judge Love relied on the Federal Circuit's TS Tech (J. Rader) opinion and the 5th Circuit's VW opinion (en banc) in determining that the suit should continue in the Northwest rather than Texas.

Under the circumstances presented here, the convenience of witnesses and localized interests weigh in favor of transfer with the other factors neutral or weighing slightly in favor of transfer. This is a case that is significantly localized in the Northwest. Both parties are residents of the Northwest, and Microsoft’s equitable defenses all arise out of conduct and contracts in the Northwest. No Texas resident is a party to this litigation, nor is any Texas state law cause of action asserted. All identified witnesses—with the possible exception of one—are located in the Northwest. This is not a case where witnesses are expected to be traveling from all over the country or world. In summary, there is little convenience to the parties for this case to remain in Texas, while there are several reasons why it would be more convenient for the parties to litigate this case in Oregon.

Case transferred.

Notes:

  • Order to transfer order to transfer from texas
  • E.D. Texas Blogger Michael Smith has more details
  • It remains to be seen if Judges Ward and Davis follow suit.
  • In the opinion, Judge Love did distinguish some portions of TS Tech. Importantly, much of the likely evidence is in electronic form. The court found that the physical location of the servers holding that electronic evidence did not impact the inconvenient forum analysis.

18 thoughts on “The Exodus: Following TS Tech, Patent Lawsuit Transferred from E.D. Texas to Oregon

  1. What, no response to my Northern Mariana Islands offer?! I’m willing to negotiate, you know. Open for discussion are:

    D. Hawaii
    D.V.I.
    S.D. Cal.
    E.D. La.

  2. Based on Network-1 (discussed in Michael Smith’s blog) and common sense, won’t these kinds of transfers be fairly limited to single-defendant cases, or cases with a small number of defendants who are similarly situated geographically and for whom witnesses overlap due to some kind of business relationship between them? I can’t imagine a sue-the-industry type case getting the boot.

  3. 6 or another examiner,

    Since we’ve turned todays post into a dialog, I have a question for you. Can you access EP and WO docs published after Jan. 31st, 2008 on your EAST terminal in the EP database. As far as I can tell, the PTO has not updated this internal databases since that time. I need to know if this is a universal issue or specific to the Public’s access to EAST. They are accessible in the separate Derwent database, but then you run into lots of redundancy issues prior to that date.

    And yes, finding knock out refs is fun. Even better when it’s an issued patent and you’re “competing” against an examiner for both pride and $.

    Thanks,
    DIP

  4. Boagrius eh? Never heard of him. But I know him now. Never know what I might learn, on this blog. Don’t move from where you are 6. You’re doing a great job, if you’re finding the best art before the wretched claim goes to issue. You know, I have the feeling that most Applicants at the USPTO are like Horatio Nelson, raising the telescope to their blind eye. “Art? I see no art” They do this because, once it issues, even an untenable claim is a powerful business tool, In any half-decent patent system, however, Applicants would have a powerful incentive to do their own Googling, genuinely making their very best efforts to get all the best art in front of the Examiner’s nose, so that what issues is not tainted by a bad claim, that until it is cut out would render the whole patent unenforceable.

  5. Idk why this thing is giving me such issues posting.

    That’s achilles v boagrius but the hector clip is cool too. I use every weapon I can man :) I have had attorneys tell me that they were surprised that I found the sorts of things I have. I use a lot of NPL. A lot. Other than that, idk what you mean by using surprise other than surprising them with a 102b lol. I was looking at an RCE I just got back, where the FOAM showed a 102e, they amended to narrow it down, 102b 9th hit 1st google. I’d say they were slightly surprised, I was lol.

    But yes, I would rather be a litigator. It’s such a thrill to go in for the kill in court. I’ve only done it a few trivial times so far, but it has been fun. If I do go into patent law, it probably will not be prosecution except maybe for a small bit to get started.

  6. I see your point, 6. And I enjoyed the Achilles v Hector clip. No problem working out which character you identify with. Do you often rely on the weapon of surprise, to win your battles with giants? I can appreciate its massive destructive power in litigation, or any other kind of warfare, but I hadn’t thought that the PTO might be deploying it against Applicants. Bit scary, that. Would not life as a litigator suit you better?

  7. “Quite why you need more windows I don’t know but, then, I’m not an Exr and I’ve never had the chance to open several windows,”

    I need to compare sets of claims to other sets of amended claims. And the arguments to the sets of claims. Things like that. Most anytime I open a case in Edan I open: claims, drawings, arguments, previous claims, (oath or bib for fd sometimes), and spec. Otherwise I’ll just end up opening them one at a time later and they’ll end up open anyway.

    Right now I have 8 windows open in firefox. I’m a poweruser what can I say? You’ve got to try this sht dude.

    What does 6 keep on tap? 30 second googles from 3000 years ago:

    “Quite why you need more windows I don’t know but, then, I’m not an Exr and I’ve never had the chance to open several windows,”

    I need to compare sets of claims to other sets of amended claims. And the arguments to the sets of claims. Things like that. Most anytime I open a case in Edan I open: claims, drawings, arguments, previous claims, (oath or bib for fd sometimes), and spec. Otherwise I’ll just end up opening them one at a time later and they’ll end up open anyway.

    Right now I have 8 windows open in firefox. I’m a poweruser what can I say? You’ve got to try this sht dude.

    What does 6 keep on tap? 30 second googles from 3000 years ago:

    link to youtube.com

  8. 6: Glad you find http://www.epoline.org acceptable, for reading every doc on every EPO prosecution file. Actually, there is a one click to downnload every page of every doc, but me I never use it. Instead I just select the one doc I want to read. If its page 1 is right then I click on “all pages”. It only takes a jiffy. Quite why you need more windows I don’t know but, then, I’m not an Exr and I’ve never had the chance to open several windows, so I don’t know what I’m missing. You (and other readers) might be tickled by the further possibility epoline offers: give it your email address, and it tips you off when the next Office Action issues, or the next applicant response arrives on the file. Does that option exist at the USPTO? I have thought for a long time now, that USPTO Exrs will steal a peep at the EPO file, given that these days its search and patentability opinion (EESR) is posted soon after the applicant files at the EPO. It’s a crib sheet for the Exr of every other patent family member.

  9. Great new comments software. It makes it much easier to exclude comments that are not in alignment with the Mooney agenda. How credible.

    signed AllSeeingEye

  10. Hey, no knocking PAIR – as many foibles as it has, it is SCADS better than using paper mail.

    Or, make my skin crawl, the central fax number (which we called the pit).

  11. What I hate about espacenet is that after you’ve searched then hit the back button it clears the information you previously entered (WIPO doesn’t have this issue). I also hate the single page PDF loading and PDF protection.

  12. Idk why this thing didn’t post my earlier comment. Yes the sys is good except that you can’t open more than one window for the docs easily. Just like in PAIR iirc. They use java to open those doc windows and fail to do it well. I would go beat some sense into Pair’s people, but I have better things to do. And download all pages should be the default. Who do they think we are? A bunch of dial upers?

  13. Any thoughts how strongly place of incorporation will weigh in transfer decisions? Say for patent suits filed in the District of Delaware?

  14. 6: have you got on to http://www.epoline.org yet, selected Register Plus, and found the box to put your number in? (No account or password needed). If you choose “Application Number” you don’t need the prefix “EP” but if you opt for “Publication Number” you do. There are other tasty choices there, like “Inventor Name”, which you might enjoy. When you drop on to a specific application, luxuriate in browsing the full list of docs on file, but when you have pdf page 1 mind you click on “download all pages” to get the successive pages of the EESR or FAOM, or whatever.

    After that, will you tell us all whether that’s a good tool? Would be grateful.

  15. Max, where are you when I need you?

    How can I view the search reports and OA’s from an EU application? Are they publicly available? I can’t seem to find them when viewing the patent from their website. I’m not talking about a WIPO case though, they always have everything right there for you.

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