Quinn partner got stuck in Texas and won his case anyway

After failing in his attempt to transfer a patent infringement lawsuit against Alphabet Inc-owned Google out of the Eastern District of Texas, Quinn Emanuel Urquhart & Sullivan LLP partner Charles K. Verhoeven persuaded a jury there to reach a defense verdict.

It took a jury in Marshall, Texas less than two hours to conclude last Friday that Google did not infringe four Personalized Media Communications LLC patents used for streaming content on YouTube.

The plaintiff was seeking $185 million in damages. Verhoeven dropped Google's invalidity defense a week before trial and instead argued only that the PMC patents did not infringe.

The trial lasted a week after a longer battle between the companies' attorneys over whether the case should be tried in the Lone Star State or moved to California.

By concluding none of the patents were infringed, the jury did not have to address any other questions over whether the YouTube functions were covered by a license. Personalized Media Communications LLC v. Google LLC, 19-CV00090 (E.D. Texas, filed March 21, 2019).

The plaintiff, a Sugar Land, Texas patent holding company, has reached licensing agreements with a variety of technology companies. But Google balked and the case headed to court.

Verhoeven, who is based in San Francisco, declined to comment Wednesday. Google also declined to comment.

A PMC spokesperson, Bruce Berman, said in an email Thursday the company had no comment. One of its lawyers, Susman Godfrey LLP partner Arun S. Subramanian, could not be reached.

In September, a U.S. Court of Appeals for the Federal Circuit panel ruled against Google's writ petition asking U.S. District Judge J. Rodney Gilstrap to reconsider his decision against transferring the case to the Northern District of California.

Federal Circuit Judge Jimmy V. Reyna ruled the Mountain View-based company's right to a writ was not "clear and indisputable," even though a different Federal Circuit panel had ruled earlier in the year Google could not be sued in the Eastern District of Texas just because it had servers there.

Reyna wrote for the panel that Google could appeal the decision if it lost at trial. Last week's trial result means it will not have to do so and is a reminder that Texas patent trials are not automatic wins for plaintiffs.

The debate over whether California technology companies can transfer patent lawsuits out of Texas has been contentious since the U.S. Supreme Court ruled three years ago that venue is proper only in a district "where the defendant has committed acts of infringement and has a regular and established place of business." TC Heartland LLC v. Kraft Food Brands LLC, 137 S. Ct. 1514 (2017).

The issue is cropping up not only in the Eastern District of Texas, a popular patent plaintiff's venue, but also now in the Western District of Texas, where U.S. District Judge Alan D. Albright of Waco is attracting a number of patent cases.