Kinetic Concepts, Inc. v. Wake Forest University Health Sciences, Nos. SA-11-CV-163-XR, SA-11-CV-713-XR, slip op. (W.D. Tex. Nov. 25, 2013)(Rodriguez, J.)

The case pits two long-time allies in the development and sale of Negative Pressure Wound Treatment (NPWT) products.  After licensing NPWT patents from and jointly prosecuting patent litigation with Wake Forest for nearly two decades, Kinetic Concepts changed tack.  On In late February 2011, it sued for a judgment declaring that it owes Wake Forest no royalties under the license agreement, the patents covering its NPWT products are invalid, and its products do not infringe any valid or enforceable Wake Forest patents.  In response, Wake Forest terminated the license and sued for damages.  Id. at 4.

In mid-September 2013, the District Court held hearings on Wake Forest’s motion for summary judgment of no invalidity and claim construction.

Wake Forest’s motion contended that Kinetic Concepts was judicially estopped to challenge the validity of the disputed, having urged in prior proceedings that they were valid.  Slip op. at 10.  Whether the doctrine applied hinged on (a) whether Kinetic Concepts was adopting a “clearly inconsistent” position, (b) whether a court had accepted Kinetic Concepts’ prior position, and (c) whether fairness compelled the application of the doctrine.  Id.  The District Court determined that Kinetic Concepts’ current position was not “clearly inconsistent with its prior position because the combination of prior art that it relied upon was not identical to the combination at issue in prior litigation.  Id. at 11.  The District Court determined that the second prong—acceptance by a court—was satisfied.  Id. at 13-14.  Finally, the District Court determined that offsetting fairness considerations kept the fairness scale from weighing clearly in favor of the doctrine.  Id. at 14-15.

The six terms the District Court construed were “healing,” “selected stage of healing,” “wound,” “treating,” “area of skin including and surrounding the room,” and “tissue surrounding the wound.”  Slip op. at 15-28.

Measured by time to trial, the scheduled 29 months in this case is in line with the 29.9 months in the Northern District of California, the 28 months in the District of Delaware, and the 28.4 months in the Eastern District of Texas.  See LegalMetric Time to Trial District Comparison—Patent Cases (January 2013).

Fisher v. United States of America, No. SA-13-CV-610-XR, slip op. (W.D. Tex. Nov. 25, 2013)(Rodriguez, J.)

This opinion highlights the advantage the government enjoys by virtue of the accelerated deadlines for responding to administrative compulsory process, as compared to civil discovery.  The IRS issued a third-party summons for Fisher’s credit card records to American Express and served her by certified mail.  The summons cautioned Fisher of the need to “begin a proceeding to quash . . . not later than the 20th day after the day such notice is given.”  The District Court pointed out that a proceeding is begun by filing—not mailing—a petition, whereas notice is given on the date mailed—not the date received by the investigative target or summons recipient.  Id. at 3 (citing cases).  Since Fisher mailed her petition 20 days after the date on the summons, the petition was not was timely filed.  The District Court, therefore, dismissed for want of jurisdiction.  Id. at 4.

Morales v. Wells Fargo Bank, N.A., No. SA-13-CV-410-XR, slip op. (W.D. Tex. Nov. 14, 2013)(Rodriguez, J.)

In this foreclosure litigation, the District Court granted the bank’s Rule 12(b)(6) motion.  Initially, it rejected the plaintiffs’ contention that their amended complaint—virtually identical to the original version—rendered the motion moot.  Slip op. at 3-4.  The District Court then addressed the property owners’ causes of action—stock allegations for quiet title and violation of Chapter 12 of the Texas Civil Practice and Remedies Code—and detailed the reasons they failed to state a viable claim.  Id. at 7-22.  The District Court, however, afforded the property owners an opportunity to amend their quiet title claim based on lack of proper notice because their “attention was not drawn to [the specific pleading] deficiency” that grounded dismissal.  Id. at 21.