Q & A with Newly Appointed Judge Derek Gilliland

Magistrate Judge Derek Gilliland took the bench this past week and has already jumped into the massive pool of patent cases in the Waco Division. Judge Gilliland was gracious enough to give me a few minutes to ask him a few questions on topics that are of interest to all litigators in the Western District of Texas. What follows is an interview I conducted with Judge Gilliland last week in which I attempt to shed some light on some of these topics.

Judge Gilliland comes to the bench as a veteran trial lawyer, with over two decades of patent, trademark, copyright, trade secret, and other civil litigation experience. Prior to joining the bench, Judge Gilliland was partner at Sorey & Gilliland, LLP, where he oversaw the firm’s intellectual property litigation practice. He has tried numerous IP cases and has obtained one of the largest patent infringement verdicts in the country. Furthermore, Judge Gilliland is a Baylor lawyer, with deep roots in Waco. Judge Gilliland, thank you for joining us today.

Q: How do you feel about leaving private practice to join the bench this month?

A: Very, very excited about it. One of the things that really appealed to me about it is that I really enjoyed private practice and trying cases. Sometimes the grind of litigation gets tough and can be a drag. But I’m excited about it because it’s a way to still be involved in a game, but without being an actual litigant. It’s going to be a lot of fun, and I am really looking forward to it.

Q: How will your new role as Magistrate Judge assist Judge Albright?

A: Sure. And this week is a really good example—which is my first week. We spent a lot of time getting email set up. But he has had a patent trial going on, and the jury started deliberating yesterday. So, to keep the docket moving, I’ve got my first Markman hearing. So, I will take discovery, Markman, and venue hearings, so that normally, if Judge Albright is in trial, I’ll be able to handle those on a referral basis and keep the docket moving.

Q: How is your position similar or different to that of Judge Manske’s?

A: Well, it’s technically exactly the same. But practically speaking—and there is an order on this—he will be referred all criminal cases, and I’ll get all the patent cases, and then he and I will split the non-patent civil cases 50/50. So, his docket will be all criminal and half civil, and mine will be all patent and half civil. But both of us will learn enough and help each other to keep the dockets moving.

Q: Are y’all treating soft-IP cases differently?

A: We haven’t directly discussed it yet, but I suspect those will fall into the non-patent civil docket.

Q: How will your extensive IP background impact your courtroom? Is there anything you want to bring to the Western district?

A: So, I think at least my IP and technical background will help short circuit a lot of arguments. I haven’t thought about things that I want to bring to the Court room per se. I would have to say one goal is to get a more technical court room—as our electronic displays are not much to talk about.

Q: What are the most common/relevant IP issues you’ve seen in your litigation experience, and how do you plan to address those in your courtroom?

A: Let’s see. Well, the motions to dismiss for failure to state a claim are ones that seem—at times—pretty popular. And those are the kind of thing that I view that where if you really don’t know what someone is asserting when they sue you legitimately, then that seems like something that could be handled with a phone call rather than a motion that requires a bunch of briefing and expense to clients. So, hopefully people will get that impression and understanding. And I think that’s in keeping with Judge Albright’s thinking as well. We will have to coordinate Motions to Transfer Venue and work with Judge Albright’s chambers to help speed the resolution of those as well.

Q: Do you have the same opinions on 101 as Judge Albright—as he likes to handle them after the Markman hearing? Do you have the same philosophy?

A: I do. You know, in so many of them, claim construction affects whether it’s an abstract idea. And also, so many of them can have fact issues underlying them as well. So, I think those are better addressed when you have a better record to address them with.

Q: With over 20 years of IP experience, what have you found most impactful in the patent trials you have litigated in?

A: That’s a good question because you don’t get to talk to the jury too often in federal court. I think the credibility of the lawyers and witnesses is paramount. And the juries may not understand the technical stuff, but if the witnesses and lawyers come across as someone who tries to get information to the jury and be open and credible, and polite and knows their stuff, and is trying to communicate that information—without objecting to every technical thing—then that helps a jury show that you are trying to bring out the truth. If you have expert witnesses who are understandable and, in my opinion, polite, professional, and candid, as opposed to evasive or hostile—I think those are things a jury will pick up on.

Q: How do you plan on handling voir dire—will you give a fair amount of freedom to the parties?

A: That’s a good question. At least initially—and the referral order has been entered—I’m going to pick the jury in the VLSI trial in a few weeks. So, I’ll probably stay more initially towards what Judge Manske has been doing, so sort of a hybrid, but a little more similar to standard federal court practice as opposed to state court. I’m still considering giving the lawyers a little more time and freedom. It won’t all the way be like state court voir dire, but give them more time to ask general questions to the panel. But I haven’t decided 100% on that yet.

Q: What are the most common mistakes or dislikes you have encountered with litigants in your trial court experience?

A: Common mistakes are just not being prepared. It’s like when people show up, and it takes them a while to find their witness notebook. I think that looks bad and frustrates everyone. Another is lawyers that are too technical but don’t know how to talk to a jury. I’ve seen a lot of really good patent lawyers, really good ones and extremely smart, but they have trouble—having the self-awareness of how what they are saying is being perceived. They have a hard time communicating with a jury, who is just walking into the factual stuff to where they can understand it. So, having someone who can—and I don’t want to say “dumb down”—because I don’t think that’s right, but if you’ve been a 20-year patent lawyer and know it inside and out and live with this patent for a year or more, you will understand it a whole lot better than someone who just walked off the street. So, you have to realize how to communicate with the jury. And I’ve seen a lot of lawyers who have a hard time with that.

Q: And sticking with the trial setting for just a second. How do you plan to handle closing and openings concerning objections?

A: Initially I’d say I’ll let the parties have freedom during openings, at least until I’ve been burned a time or two. But I’ll say if you want to object to the other side during opening or closing, just do so at your peril, because I think that gets held against you by the jury.

Q: In this post-Covid world, we have been seeing a lot of Markman hearings and other hearings over Zoom. Do you plan to have Zoom hearings, in-person hearings, or both?

A: Well, I’d love to have a lot of in-person stuff. But Zoom is here to stay, and it is convenient, especially for discovery disputes. That will probably stay a key part of discovery disputes. But I want to incorporate as much in-person stuff as possible. And actually, this afternoon, we are having a hybrid in-person and Zoom Markman hearing.

Q: Do you have any advice for attorneys who will litigate in your courtroom?

A: Stand up when talking to the Court, partly because it was beaten into me as a young lawyer. So, I think that’s important. When you address the Court, be on your feet, and be as prepared as you can. I always tell other lawyers this, but I don’t know if they really listen, but try and object and fight about things that you really need to fight about. Consider whether it is reasonable to bring every dispute or give a little ground where you can streamline things, especially in front of the Court. I will hopefully get some referrals, and it be the kind of thing that I can handle objections before and after the jury leaves. So, when the jury is in, it will be just testimony.

Q: On referrals, I understand that one of the benefits of agreeing to consent before Judge Manske is more trial time. Will you make the same offer?

A: Yes, absolutely. Yes, I think the lawyers will find more flexibility in both the trial setting and length of trial, as well as how the trial proceeds if they consent.

Q: You have experience litigating and trying cases in both the EDTEX and WDTEX—what are some of the primary differences between the two districts you expect attorneys appearing before you to know?

A: The most striking thing to me—and it isn’t something the lawyers can control—but the size of the Waco division is huge. There are jurors sitting in this trial that have driven 80 miles to get to this courthouse. I was recently told by the jury clerk that in the past year or more they have had very few McLennan County residents show up on the venire panel. In East Texas, you get a lot more localized people. And the Western District of Texas, they are going to be a lot more spread out and more diverse.

The other interesting difference—and I know he has his reasons—but Judge Albright does not pre-admit any exhibits for trial. But in East Texas, the judges pre-admit everything, so you can use exhibits on the fly without having to prove them up. But in Western District, you are going to need to prove them up and offer them.

Q: What are your views on only charting a representative product rather than charting a complete list of products for infringement contentions?

A: I think if you can show and you have a reasonable basis to assert that a product is truly representative of a group in the ways that matter for the claim limitations, then you can just chart the representative product. But if there are nuances between the products that affect the claim limitations, then you should chart at least a representative product of each group. As an example, one that comes to mind is if you have a patent on printers, and the functionality across an entire body of printers is the same for purposes of the claim limitations then I think you should be fine with a representative printer. But if there is a claim element that differs among them, like laser versus inkjet or whatever, then you may need to at least pick a representative from each group. But I don’t think you would need to say, chart 1000 printers.

Q: While we are on the topic of contentions, do you have any thoughts on invalidity contentions? For example, do you believe a defendant needs to identify which specific sections of invalidity are implicated, or just show the elements?

A: Good question. Definitely as long as you show the elements for each section. The one thing I will say on invalidity contentions, I have seen some where there are these catch-all phrases thrown in where it says, you know, reference A shows these elements and reference B shows those elements, and if A & B are missing, you can find them in references C through Z. I think you must be specific in identifying in the references for each element and where they are found.

Q: What are your views on motions to stay pending PTAB proceedings, such as IPRs or EPRs? What are some circumstances where you may consider granting such a motion?

A: As the Magistrate for Judge Albright, my view will be very similar to his, which is to not favor a stay in light of PTAB proceedings because we are going to do to our best to stay ahead of anything that would happen at the PTAB. But on the other hand, for example, if the parties agree that they want a stay, then obviously I would be inclined to grant a stay in that situation. And if somehow it were to work out that the PTAB was definitely ahead and the stay factors heavily favored a stay under unique timing circumstances, then I would give it some serious consideration because that is a different situation.

Q: Judge, what is your general view on damages, especially regarding a Daubert challenge?

A: Damages is always in my opinion a very squishy area. Because you take equally qualified experts that take the same factors and apply them to the same facts and come up with diametrically opposed opinions as to what the numbers should be. But things to look for, as an example, would be if an expert is relying on licenses, then whether the licenses have a good relationship to the patents and products asserted in the case. And going back to our printer example, and if the only license the expert can point to is a cellphone that has none of the same components as a printer, then it is probably not a really good comparison and should be something to look at on a Daubert. Also, whether the expert has adequately tied revenue that they are using for royalty base, and if the revenue is specifically tied to the infringing products and features rather than some general revenue.

Q: What is your view on local counsel, and do you think hiring local counsel is a good thing?

A: I think it can be very helpful. I don’t think it is absolutely necessary. Both in private practice and what little I’ve watched here in the Court, I do think that hiring local counsel is good thing if they are good lawyers and you use them. I’ve heard other judges say this for years, but if you hire local counsel just to help you to and from the courtroom, then you probably aren’t well served. A good example is the trial Judge Albright just had, and I think it was Magistrate Judge Manske, but one of the venire panel members worked in Bell County, and Judge Manske knew they just had a nice new high school built down there, and was able to ask some effective follow up questions based on that information. That’s a good example of the kind of thing that local counsel is very helpful with. I’ve met a lot of lawyers who don’t realize that SpaceX is in McGregor, which is 15-20 minutes from the courthouse. And if someone says, “Yeah, I work at SpaceX” or “I live in McGregor,” living in McGregor could mean you are a farmer, or it could mean you are a rocket scientist. That is the kind of thing local counsel could help you understand if you listen to them.

Q: Judge, you have deep ties to Waco, and I’m sure you are excited to move back. What are your favorite aspects of Waco?

A: One of my favorites is Cameron Park. Now, I have to get a new mountain bike so I can ride the trails. I love the river and hopefully we will be able to pull off coming to the Court by river as opposed to car. Of course, Baylor, and all the things that Baylor brings to town. I love track and field, and Baylor has a good team, so I’ll enjoy watching that. And the diversity of Waco—it’s a great community and growing like crazy. It’s a friendly place and has a lot of really good places to eat.