James Rodney Gilstrap

James Rodney Gilstrap (born May 1, 1957) (also known as J. Rodney Gilstrap or Rodney Gilstrap) is the Chief United States District Judge of the United States District Court for the Eastern District of Texas. He is notable for presiding over more than one quarter of all patent infringement cases filed in the nation and is often referred to by various sources as the country's single "busiest patent judge."[1][2]

James Rodney Gilstrap
Chief Judge of the United States District Court for the Eastern District of Texas
Incumbent
Assumed office March 1, 2018
Preceded by	Ron Clark
Judge of the United States District Court for the Eastern District of Texas
Incumbent
Assumed office December 6, 2011
Appointed by	Barack Obama
Preceded by	Thad Heartfield
Personal details
Born	May 1, 1957 Pensacola, Florida
Education	Baylor University (BA, JD)

Early life and education

Gilstrap was born in Pensacola, Florida. He is an Eagle Scout. He received a Bachelor of Arts from Baylor University in 1978, where he graduated magna cum laude.[3] As an undergraduate he was inducted into Phi Beta Kappa. He also earned a Juris Doctor from Baylor Law School in 1981,[4] where he was associate editor of the Baylor Law Review. While on the review, he published the article Video Recorders: Copyright Infringement, 33 Baylor Law Review 695 (1981).[5] Gilstrap later served as president of the Baylor Law Alumni Association.[3][6]

Career

After graduation from law school, Gilstrap entered private practice in the town of Marshall, Texas as an Associate with the firm of Abney, Baldwin & Searcy from 1981–1984.[7][6] He later became a founding Partner of Smith & Gilstrap in Marshall from 1984–1989, where his practice covered oil and gas, real estate, probate law and occasionally patent cases.[7][8] Among the patent cases Gilstrap worked on while at Smith & Gilstrap included defending Capital One Financial Corporation in a patent suit brought by LML Patent Corporation alleging patent infringement by several banks on patents covering payment services and the representation of a company called Bluestone Innovations Texas in a patent infringement suit brought against a number of foreign companies involving Light-emitting diodes (or LED) technology.[9] Gilstrap served as a Harrison County Judge from 1989 to 2002.[10] Judge Gilstrap also served 16 years on the Courthouse Preservation Council in Marshall, and also served as the Chair of the Unauthorized Practice of Law Committee with the State Bar of Texas.[10] In 2004, Judge Gilstrap co-authored an article with Leland de la Garza which appeared in the Texas Bar Journal: UPL: Unlicensed, Unwanted and Unwelcome 67 Texas Bar Journal 798 (2004). While and after serving as a Harrison County Judge, Gilstrap was practicing at Smith & Gilstrap until he became appointed to the federal bench in 2011.[6]

Federal judicial service

On May 19, 2011, President Barack Obama nominated Gilstrap to a seat on United States District Court for the Eastern District of Texas.[4] "Throughout their careers, these nominees have displayed unwavering commitment to justice and integrity," stated President Obama in a press release about Judge Gilstrap's nomination, "[t]heir records of public service are distinguished and impressive and I am confident that they will serve the American people well from the United States District Court bench. I am honored to nominate them today."[7][11] Gilstrap was rated as Unanimously Qualified by the American Bar Association and had a hearing before the Senate Judiciary Committee on July 28, 2011.[12] On September 15, 2011, the Senate Judiciary Committee reported his nomination to the Senate floor by voice vote. The Senate confirmed his nomination by voice vote on December 5, 2011.[13] He received his commission on December 6, 2011.[6] He became the Chief Judge on March 1, 2018, after Ron Clark assumed senior status.[14]

Patent law experience

The busiest patent judge in the country

According to Lex Machina and other sources, Judge Gilstrap is the United States District Judge that hears the most patent cases in the country and has been referred to by many sources as the nation's single "busiest patent judge".[1][2] In 2016, for example, 1,119 cases were brought before Judge Gilstrap, who saw more new cases than the next 10 highest ranking judges – 2016 was also the fourth year in a row where Judge Gilstrap had more patent cases than any other federal judge.[15] In 2015, over 28% of the nation's patent cases were filed before him.[1] Judge Gilstrap and United States Magistrate Judge Roy S. Payne, who are the only two judges based out of the Marshall division of the United States District Court for the Eastern District of Texas, also have the most patent cases filed before them out of the predominant share of the nation's patent cases that are filed in the Eastern District of Texas.[1][16][17][18]

From 2014 to 2015, Judge Gilstrap was ranked first amongst all federal judges (either United States District Judge or United States Magistrate Judge) with the most patent cases filed before him.[19] According to Docket Navigator, in 2015 Judge Gilstrap was also ranked first as to the single federal judge having to preside over the highest number of filed cases, the highest number of litigants, and the highest number of accusations.[20] Also according to Docket Navigator, Judge Gilstrap is the top ranked (#1) most active federal judge (either District or Magistrate judge) by number of parties, number of orders and by number of cases from the years of 2014 to 2008 (even though he came on the bench in 2011) for patent litigation.[21]

Notable decisions

In 2013, Judge Gilstrap presided over the case of TQP Development v. Newegg where the jury ordered Newegg to pay $2.3 million for infringing four asserted claims in a patent involving modem technologies and Internet security systems such as SSL or TLS together with the RC4 Cipher.[22] However in 2015, Judge Gilstrap ruled that Newegg did not infringe TQP Development's patent, effectively overturning the verdict.[23]

In 2015, Judge Gilstrap ruled that a $533 Million jury verdict (the largest ever for a Patent assertion entity, Smartflash) in Smartflash, Inc. v. Apple be thrown out due to a faulty jury instruction, and ordered a new trial just on the issue of damages.[24]

Also in 2015, Judge Gilstrap denied a request by ZTE Corporation for a new trial after a jury found that it infringed two patents owned by DataQuill covering data entry technology and awarded DataQuill $31.5 Million.[25]

In 2015, Judge Gilstrap ordered 35 U.S.C. 285 "exceptional case" fees to be levied against a notorious Non practicing entity (the worst of them known as Patent trolls), eDekka LLC.[26] He ruled that the case was "objectively unreasonable" after previously invalidating eDekka's patent under the U.S. Supreme Court case of Alice v. CLS Bank International.[26][27]

In 2016, Judge Gilstrap enhanced damages based on a jury verdict that LG willfully infringed two Standard essential patents (SEPs) owned by Core Wireless covering cellular standards.[28] He previously denied LG's motion for summary judgement that the SEPs were not willfully infringed, letting that issue go to the jury.[29]

In 2017, Judge Gilstrap levied sanctions against Patent assertion entity Iris Connex, which had a patent covering phone technology used to take "selfies".[30] In his Order, Judge Gilstrap mentioned that due to the misconduct of the parties, this was "the clearest example of an exceptional case to yet come before" him.[31]

In June 2017, Judge Gilstrap provided a four-part test in determining venue after the U.S. Supreme Court case of TC Heartland LLC v. Kraft Foods Group Brands LLC in the case of Raytheon v. Cray,[32] but in September 2017 was overturned by the Court of Appeals for the Federal Circuit in response to a petition for writ of mandamus by Cray.[33][34]

In September 2019, Judge Gilstrap presided over the first trial on patent-eligible subject matter in the history of the United States.[35] Judge Gilstrap previously denied a motion for summary judgment that the asserted patents—banking patents directed to the electronic transmission of check images—were invalid under 35 U.S.C. § 101. PPS Data, LLC v. Jack Henry & Assocs., Inc., 404 F. Supp. 3d 1021 (E.D. Tex. 2019).

In denying the defendant's motion for summary judgment, Judge Gilstrap set forth a novel burden-shifting framework for determining claim representativeness in the context of invalidity defenses. Because each claim is presumed independently valid, Judge Gilstrap held that the defendant must demonstrate "that there are no legally relevant distinctions between the claim identified as representative and the remaining asserted claims." Id. at 1030–31 (citing Solutran, Inc. v. Elavon, Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019)). Judge Gilstrap's representativeness framework was received positively by commentators, and has been adopted by other judges in the Eastern District of Texas as well as judges in the District of Delaware. See NICE Ltd. v. CallMiner, Inc., Case No. 1:18-cv-02024-RGA-SFA (D. Del. Feb. 3, 2020). Following the denial of the motion for summary judgment and a week-long trial, the jury found by clear and convincing evidence that the asserted patent was invalid for being directed to patent-ineligible subject matter. [36]

In February 2020, Judge Gilstrap determined that tobacco manufacturer R.J. Reynolds Tobacco Company must continue making its full portion of an $8 billion dollar annual payment to the State of Texas pursuant to a 1998 Settlement Agreement.[37] In 1996, Texas brought historic litigation against all major tobacco manufacturers, including Reynolds, asserting that their products injured both Texas citizens and Texas itself, which had to expend money on healthcare for citizens who suffer from tobacco-related illnesses.[38] On the eve of trial in 1998, in exchange for a perpetual release of liability for all claims, Reynolds promised to make an annual payment in perpetuity to compensate Texas for its healthcare costs. However, in 2015, Reynolds sold off several major brands which were subject to the 1998 Settlement Agreement and argued that its sale of the brands extinguished its liability under the settlement. The purchaser of the brands, Imperial Tobacco Group LLC, also denied that it was liable for payments on the brands. Texas argued that a party cannot unilaterally extinguish its contract obligations via an assignment of the contract's subject matter—otherwise, reimbursement for the billions of cigarettes sold every year under the brands would "go up in smoke," to the detriment of the Texas citizenry. Judge Gilstrap agreed with Texas, and held that Reynolds remained liable for its full portion of the $8 billion dollar annual payment to Texas. "Reynolds accepted a perpetual release in return for agreeing to make perpetual payments. Nothing that has intervened since then has lessened that obligation. Reynolds remains as liable today as it was when it entered into the Texas Settlement in 1998." Texas v. American Tobacco Co., Case No. 5:96-cv-91-JRG (E.D. Tex. Feb. 25, 2020).

References

1. Kaleigh Rogers (May 5, 2016). "The Small Town Judge Who Sees a Quarter of the Nation's Patent Cases". Motherboard. VICE. Retrieved September 26, 2016.
2. Krochtengel, Jess. "Judge Gilstrap Keeps Eastern District's Tight Ship Afloat". Law360. Retrieved 2018-04-03.
3. KCENTV (Dec 7, 2011). "Baylor Law Alumnus Rodney Gilstrap Confirmed as Federal Judge". Archived from the original on January 27, 2013. Retrieved July 16, 2012.
4. The White House: Office of the Press Secretary (May 19, 2011). "President Obama Nominates Three to the United States District Court". whitehouse.gov. Retrieved June 12, 2011.
5. "Judge J. Rodney Gilstrap Public Questionnaire" (PDF). Senate Judiciary Committee.
6. "Gilstrap, James Rodney – Federal Judicial Center". www.fjc.gov.
7. Richardson, Robin Y. (May 20, 2011). "Gilstrap tapped to be federal judge". Marshall News Messenger. Retrieved 2018-04-03.
8. Goldberg, Andrew. "Straight Outta Marshall: Local Lawyer Gilstrap Tapped to Replace Ward". The Prior Art Blog.
9. "Profiles of Other Federal Judges" (PDF). Berkeley Law.
10. Smith, Michael C. (May 19, 2011). "Judge Rodney Gilstrap of Marshall Named for Eastern District Judgeship". Eastern District of Texas Federal Court Practice. Retrieved 2018-04-03.
11. "President Obama Nominates Three to the United States District Court" (Press release). The White House. 2011-05-19. Retrieved 2018-04-03.
12. "James Gilstrap". Ballotpedia. Retrieved 2018-04-03.
13. "Senate Executive Calendar" (PDF). Senate of the United States.
14. "New Chief Judge for Eastern District of Texas". United States District Court. February 26, 2018. Retrieved 2018-04-03.
15. "Lex Machina's Fourth Annual Patent Litigation Year in Review Report Shows 22 Percent Decline in Patent Filings in 2016" (Press release). Lex Machina. March 2, 2017. Retrieved 2018-04-03.
16. Howard, Brian (March 16, 2016). "Announcing the Patent Litigation Year in Review 2015". Lex Machina. Retrieved 2018-04-03.
17. Smith, Michael C. ""Patent Law: Best Practices As Seen From The Bench" with Judge Gilstrap and Judge Payne – part 1". Eastern District of Texas Federal Court Practice. Retrieved 2018-04-03.
18. Smith, Michael C. ""Patent Law: Best Practices As Seen From The Bench" with Judge Gilstrap and Judge Payne – part 2". Eastern District of Texas Federal Court Practice. Retrieved 2018-04-03.
19. Michael Chibib, Partner, Austin, TX, Matt Stephens, Associate, San Diego, CA, Pillsbury Winthrop Shaw Pittman LLP, Part 2: Section 101, Alice & Mayo – Litigation Trends for Invalidity Challenges Under Section 101, March 8, 2016, Slide 45/46, http://www.pillsburylaw.com/siteFiles/Events/AliceMayoPresentation.pdf Archived 2017-01-31 at the Wayback Machine
20. Docket Navigator, 2015 Year In Review: Patent Litigation, Page 23, http://www.sughrue.com/files/Uploads/Documents/Docket%20Navigator%20Year%20in%20Review%202015.pdf
21. Gibbons IP Law Alert, Patent Litigation Statistics, http://www.iplawalert.com/wp-content/uploads/sites/242/2014/03/Patent-Litigation-Research.pdf Archived 2017-02-02 at the Wayback Machine
22. Mullin, Joe (November 26, 2013). "Jury: Newegg infringes Spangenberg patent, must pay $2.3 million". Ars Technica. Retrieved 2018-05-15.
23. Mullin, Joe (July 16, 2015). "Newegg wins TQP patent case after challenging judge over delays". Ars Technica. Retrieved 2018-05-15.
24. Mullin, Joe (July 8, 2015). "Judge tosses jury's $533M patent verdict against Apple, orders new trial". Ars Technica. Retrieved 2018-05-15.
25. Knaub, Kelly (October 13, 2015). "Judge Gilstrap Rejects ZTE's New Trial Bid After $31M Verdict". Law360. Retrieved 2018-05-15.
26. Mullin, Joe (December 20, 2015). "In a first, East Texas judge hits patent troll with attorneys' fees". Ars Technica. Retrieved 2018-05-15.
27. Siegal, Daniel (December 17, 2015). "Gilstrap Awards Fees, Slams EDekka For 'Weak' IP Suits". Law360. Retrieved 2018-05-15.
28. Long, David (2016-11-22). "Judge Gilstrap enhances damages for willful infringement of SEPs (Core Wireless v. LG)". Essential Patent Blog. Essential Patent LLC. Retrieved 2018-05-15.
29. Long, David (2016-09-07). "Judge Gilstrap rules that damages can be enhanced if SEPs subject to a FRAND commitment are willfully infringed (Core Wireless v. LG)". Essential Patent Blog. Essential Patent LLC. Retrieved 2018-05-15.
30. Leung, Peter C. "Wanted: Selfies With Judge Rodney Gilstrap". Intellectual Property Blog. Bloomberg BNA. Retrieved 2018-05-15.
31. Daniels, Melissa (January 25, 2017). "Gilstrap Calls Dell Patent Suit Most Exceptional Yet". Law360. Retrieved 2018-05-15.
32. Graham, Scott (July 3, 2017). "Texas Judge Sets Patent Venue Test for a Post-TC Heartland World". Texas Lawyer. Retrieved 2018-05-15 – via Law.com.
33. In re Cray, Inc., no. 2017-129 (Fed. Cir. Sept. 21, 2017).
34. "Fed. Circ. Strikes Down Gilstrap's Patent Venue Rules". LexisNexis. Law360. September 21, 2017. Retrieved September 21, 2017.
35. "First Jury Verdict on Section 101 Inquiry Post-Berkheimer Finds Asserted Claims Routine and Conventional". IPWatchdog.com | Patents & Patent Law. 2019-09-27. Retrieved 2020-11-16.
36. "Texas Verdict May Pave Path to More Juries Judging Patents". news.bloomberglaw.com. Retrieved 2020-11-16.
37. "RJR Owes for Former Brands Under Landmark 1998 Tobacco Deal". news.bloomberglaw.com. Retrieved 2020-11-16.
38. https://www.law360.com/articles/1247412/rj-reynolds-must-keep-paying-texas-for-98-settlement

External links

• James Rodney Gilstrap at the Biographical Directory of Federal Judges, a public domain publication of the Federal Judicial Center.
• James Gilstrap at Ballotpedia