Venue: East Coast Wins

Third Dimension v. Fairchild (E.D. Tex. 2008)

  • Third Dimension sued Infineon in the E.D. Texas for infringement of U.S. Patent No. 5,216,275, et al.
  • One month later, Fairchild filed a declaratory judgment action against Third Dimension in D. Maine on the same patents.
  • Later that same day, Third Dimension sued Fairchild for infringement in the E.D. Texas on the same patents.

Holding: The first case stays in Texas. The second two cases are consolidated in Maine. “Third Dimension argues that the Maine case should be denied first-filed status because it filed an earlier case against Infineon involving the same patent as this case. . . . While this case and the Infineon case involve the same patent, that is the extent of the similarity.”

Time Zone Problem: An interesting aspect of this case is the inherent time-zone problem. Fairchild filed its action in Maine at 12:01 a.m. EST on May 17. Third Dimension at 12:00 a.m. CST on the same day. Fairchild wins because it filed on the East Coast. Can that be right? (This conflict usually arises when a right is cemented on a particular day — such as a patent issuing.)

15 thoughts on “Venue: East Coast Wins

  1. 15

    “Actually, if you fax file you get East Coast time, not local time”

    Yes, but again a certificate of transmission allows your filing to be considered timely based on local time.

  2. 13

    I agree with Left Coast. There has been more than one occasion where i am glad my outside counsel has CA offices to file that provisional-that-covers-our-hastily-made-disclosure meetings with clients!

  3. 12

    One more thing to consider: will the CAFC treat this timing issue a matter of Federal Circuit law? That could go either way, given how this timing issue takes on such significance in the patent context (DJ action vs. infringement action).

  4. 11

    I think it’s far from clear that the Federal Circuit will fall in line with a couple of old 5th Circuit decisions on “absolute time” versus “time zone time”. I suspect the CAFC, which takes great pride in being a “national court”, will be very skeptical of giving the district courts of one side of the country venue priority over other courts in these races to the courthouse.

  5. 10

    “Consider that the USPTO has fixed all their electronic filings to ET”

    Not quite true. When using EFS the PTO will accept a certificate of transmission that allows getting credit for local time for at least some filings. Also if you fax rather than file electronically, you get to use local time.

  6. 9

    I don’t think there is much of an issue here. Consider that the USPTO has fixed all their electronic filings to ET, so if you want to beat that bar date in LA by e-filing, you have to do it by 9PM local time. The reverse should also be true: if a patent issues at 12:01AM ET, then the LA patentee/DJer should be able to file suit at 9:01PM local time, even though the calendar may read a different date.

    That’s how it _should_ work, anyway.

  7. 8

    Of course in the patent world it is sometimes good to be on the other coast.

    I know of at least one instance where a filing was sent to an office on the west coast so it could be timely filed with the PTO, when it was already after midnight on the east coast.

  8. 7

    “The easy way to avoid the problem…”

    Alternatively, since these were electronic filings, we could designate the filing times with respect to UTC. So the complaints were filed at 0401 UTC and 0500 UTC. :)

  9. 6

    Pet peeve:

    The complaints were filed in May. Daylight savings time began in March. The “S” in EST or CST refers to “standard” (non-daylight saving) time. During daylight savings time, the time zones are (respectively) EDT and CDT. So the complaints were filed at 12:01 EDT and 12:00 CDT, not EST and CST.

    The easy way to avoid the problem of getting the time zone designation wrong depending on time of year is just to skip the generally unnecessary fact of the middle initial – which is what the Court did, by simply going with ET and CT.

  10. 5

    “Both parties are free to file first in any of the venues in the easternmost time zone. It may not be desirable to file somewhere other than your own home turf, but the parties still have equal rights.”

    This reminds me of the reasoning of SCOTUS in Burger King v. Rudziewicz, 471 U.S. 462 (1985). As a practical matter some parties are greatly favored while others are kicked in the teeth.

    Aside: I despise both Democrats and Republicans. Warring bands of thieves and criminals.

  11. 4

    Both parties are free to file first in any of the venues in the easternmost time zone. It may not be desirable to file somewhere other than your own home turf, but the parties still have equal rights. (I’m beginning to sound like the Republicans: everyone has the equal right to marry someone of the opposite gender, even if that’s not their home turf.)

  12. 2

    “I don’t see how the time zone difference matters. Fairchild filed 59 minutes before Third Dimension. What was to stop Third Dimension from filing before Fairchild, e.g. on May 16?”

    Probably didn’t here. But you can imagine situations where a complaint or an appeal cannot be filed before a certain event occurs, in which case the easternmost time zone has first dibs on venue, unless we move toward a blanket nationwide time reference, relative to Universal Time. Probably requires Congressional action, don’t hold your breath waiting.

  13. 1

    I don’t see how the time zone difference matters. Fairchild filed 59 minutes before Third Dimension. What was to stop Third Dimension from filing before Fairchild, e.g. on May 16?

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