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                                   NEWS for the BAR
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                                                                                                                       Spring 2008



T                                                                                     C HAIR’S U PDATE:
       HE COURT ADMINISTRATION TASK FORCE
       is examining the very complicated structure
       of Texas state courts and looking at possible
changes to create a better and more efficient court                                   Modernizing Our Court System
system. The current court system is complicated to
say the very least. Overlapping jurisdictions are the                                 by Alistair Dawson
rule more than the exception. The multiple tiers of
courts provide confusing options and uncertainty for
participants in the judicial system—including members of               how their rights are affected if they choose one or the other.
the legal profession. The fundamental goal of the potential                 At the state level, appellate courts and district courts have
changes is to make the court structure more efficient and              their own problems. Judicial districts are a maze, and each
accessible.                                                            court was created as its own district. The state constitution
     The Texas court system is a multi-tiered system. The              envisioned large districts with multiple judges (i.e. North
difficulty of even providing a simple overview of the system           Texas) but that has never happened. Judicial districts are
for this update evidences the inherent complexities of the             supposed to be redrawn after a census, but this has also
system. Some state district courts have general jurisdiction           never happened. As a result, a single county can be in as
with a “preference” for civil cases. Other district courts have        many as four different judicial districts. The jurisdictional
general jurisdiction with a “preference” for family or criminal        boundaries of the courts of appeals are then drawn without
cases. Some district courts are required to be family or civil         regard to district court lines, so some district judges report
courts. We also have county courts at law, constitutional              to more than one court of appeal. Texas even has one court
county courts, probate courts, justice courts, municipal               that reports to four courts of appeals. In Houston there are
courts, and small-claims courts.                                       two appellate courts, the First and Fourteenth courts, with
     The desire to allow the counties and municipalities to            jurisdiction over the same trial courts.
have local governmental control has essentially created a                   As members of this profession, we need ask ourselves:
multitude of different court systems within the state of Texas.        is our system of justice in Texas needlessly complicated
The counties control the jurisdiction of the county courts at          and at times even duplicative? As members of the Bar, we
law, and some of these courts have equal jurisdiction to state         have the responsibility to evaluate the effectiveness of our
district courts, in El Paso and Nueces counties for example,           system and be a proactive part of reshaping and improving
while others do not even have a judicial function. Family              it. The problems and issues I cite here are just a few of many
courts, probate courts, and criminal courts are similarly              that complicate our system, all of which affect the rights of
all over the map, with differing jurisdictions and functions.          citizens and the fair administration of justice. So how can
Justice courts and small-claims courts, at the most local level,       we make a better court system for all participants? There
are presided over by one judge who does not have to be a               are no easy answers or quick fixes, but the Task Force has
lawyer. The rules of evidence do not apply at those levels, and        convened to consider possible changes and to evaluate our
outcomes in those courts are appealed de novo to the county            system thoughtfully and make informed decisions about the
courts at law, where the rules of evidence are then applied.           consequences of any proposed changes.
Many citizens and lawyers do not seem to understand the                     At the trial court level, one common proposal from those
difference between justice court and small-claims court, nor           who have studied the Texas court structure is to move to



   1          Chair’s Update             9    Evidence & Discovery Update                  20     Living the Rules:
   3          The Psychology of Bad     12    Who Wants to Be an IP Litigator?                    The Honorable Judge Sim Lake
              Economic Decisions              Making the Transition from                   24     Litigation Calendar
   6          News from the Bar               General Litigation to IP Litigation          25     Tips from Trial Lawyers:
   7          Appellate Update          16    Report on Equal Access to Justice                   Ervin A. Appfel, Jr.
                                        17    Federal Update



                                                                   1
Moving to a single-tier system would be
a major cultural shift for Texas.
a single-tier trial court system. This is the system that is           those judges to apply the rules of evidence. In a single-tier
currently in place in many other states, where each trial court        system, the general jurisdiction courts would have to continue
has general jurisdiction and the local administrative judge            to absorb the justice court appeals, the volume of which can
in each county determines which of these courts should                 be considerable, particularly in large communities.
be civil, which family and which criminal. Alternatively, the               Should the justice courts, then, have more final authority
local administrative judge may decide it is best for his or her        over disputes? This would require, it seems, a more stern
county for each court to retain general jurisdiction for civil,        application of legal and evidentiary rules at those levels, but
family and criminal cases. Moving to a single-tier system, or          what would that mean for the many participants at those
something similar, would be a major cultural shift for Texas.          levels that represent themselves pro se? How would a pro se
However, it would clear up much of the confusion and give              defendant, trying to keep his or her family from being evicted,
local judges the ability to decide how many courts should be           fare against an attorney who knows the rules of evidence? If
dedicated to criminal, civil, and family matters.                      the rules did apply and their decisions were made more final,
     Another issue that is being discussed is whether to have          what would be the appellate implications?
“specialty courts” – sometimes called “complex courts.”                     At the appellate court level, in some parts of the state,
There is no doubt that there are cases that would benefit from         there is overlapping jurisdiction among different Courts of
additional resources. For example, in some cases, having a             Appeal. Sometimes, this overlapping jurisdiction can affect
briefing attorney would help our judges. In some cases, courts         the outcome of case. A case that goes to the Dallas Court
should have specialized technology so that jurors can readily          of Appeals may be reversed, but the same case affirmed if it
see the documents that are being used during trial. Should             goes to the Texarkana Court. Should we redraw the maps
we allow or encourage judges to send so-called “complex”               to eliminate this overlapping jurisdiction? What should be
cases to other judges for adjudication? If so, what process            done in Houston where we have two Courts of Appeal? Some
should be used to make that determination? Or should we                favor merging the two courts. But, that creates its own set of
make sure that all of our judges receive adequate training and         problems, not the least of which is whether it is practical to
education on the administration of a large “complex” case?             have en banc hearings with an 18-member court.
These are some of the difficult and challenging issues that the             Clearly the need is great for the members of our
Task Force is examining.                                               profession to take an active look at our system and to make
     There is substantial overlap in the jurisdiction of justice       our voices heard in proposing reforms. In conjunction with
courts and municipal courts. The distinction between small             the ongoing efforts of the Task Force, it is imperative that the
claims courts and justice courts really does nothing more              broader membership of our Bar continue to weigh in on how
than confuse the participants, particularly since the same             to improve the court system. Given the current situation, no
judge typically presides over both forums. The jurisdictional          idea is too trivial, and no suggestion will be overlooked. If you
amount for justice court was recently increased from $5,000            have suggestions for how we can improve the administration
to $10,000, and not surprisingly increased dockets are                 of justice in Texas, I entreat you to please contact someone on
expected to follow. With this in mind, the Task Force has              the Court Administration Task Force. You can find the list of
considered whether we should merge justice and municipal               Task Force members on our website (www.litigationsection.
courts. While we are at it, we should examine whether to               com). I thank you in advance for your efforts to improve our
require that justice court judges be lawyers and to require            justice system for all Texans.



                                                                   2
                                                               The Psychology of
                                                               Bad Economic Decisions
                                                               by Don Philbin




I
    F HUMANS WERE COMPLETELY RATIONAL and                                     People tend to make risk-averse choices when facing a
    shared equal information, their legal decisions might                gain; that is, they prefer certain gains over larger but riskier
    resemble rational economic choices. But we know                      gains. People facing losses, however, tend to make risk-
better than to assume that humans are completely rational                seeking choices; that is, they prefer riskier outcomes to sure
and our experience with legal disputes is evidence of                    losses. Kahneman emphasizes the point by contemplating
consistent information gaps. In this short piece (reprinted              salary offers of $40,000 and $45,000 to people making
with permission from 7 Dispute Resolution Alert No. 4                    $35,000 and $50,000. He then notes that the “psychological
(JAMS Inc. Fall 2007) (available at http://www.jamsadr.                  differences between the alternatives is likely to be greater in
com/images/PDF/DRA-2007-11.pdf) and excerpted from a                     the latter case.”
longer forthcoming piece in Vol. XIII of Harvard Negotiation                  In another experiment, groups of students were given
Law Review), I describe a few ways that disputing parties and            the chore of buying and selling coffee mugs. With exactly
their lawyers systematically depart from rational decision               the same information, the median price set by the sellers was
making. Along the way, I offer tips on how to get productive             $7.12, but the median buyer was only willing to pay $2.88
settlement discussions back on track after being derailed by             for the same mug. So it is with lawsuits. Well-intentioned
some pitfalls that are part of our all-too-human psychology.             parties and lawyers arrive at different valuations of the same
                                                                         outcomes not because of forces of good or ill, but differences
A.	 Risk	Tolerance	and	Loss	Aversion	                                    in assigned position. Negotiators recognize that sellers and
                                                                         plaintiffs will usually assign higher values to a negotiated
     Some people are risk-takers and others are risk-averse.             item than buyers and defendants.
Filing and defending lawsuits is inherently risky, but                        Partisan aspirations are tempered, we hope, by the
having a higher risk tolerance than one’s opponent may be                expert opinions of the lawyers. If those aspirations are
advantageous in negotiations. Differences in risk tolerance              aggressive, the chances of impasse naturally increase. To
are a source of value creation – the party more willing to bear          the extent that aggressive aspirations are the product of a
risk should get some benefit in the negotiation. If mediators            risk-seeking attitude coupled with incomplete information, a
knew more about parties’ risk attitudes, they could help                 mediator may unearth that reality and help the parties adjust
them craft more successful settlement offers. Just what is               their tactics and attitudes. At the very least, we would do
known about decisions under conditions of risk?                          well to recognize that not everyone views risk from the same
     Nobel Laureates Daniel Kahneman, Amos Tversky, and                  perspective.
others have done important work in the areas of adaptive
thinking and bounded rationality. While it is difficult to               B.	 Optimistic	Overconfidence
determine exactly how much more risk-seeking or risk-
adverse a party to a particular suit is at a given point, research            Life would be dull without optimists, but excessive
has uncovered important generalities.                                    optimism increases the odds of impasse. Faced with a nasty
     Risk attitudes are dependant, in part, on whether the               lawsuit, litigants want lawyers to be their champions, to hold
party faces a gain or loss. Plaintiffs generally seek recoveries         an optimistic view of their chances. Most clients do not like
that their defendants resist paying. Those roles change the              their champions to be poking holes in their case. They expect
lens through which each views potential outcomes. Unless                 mediators and judges to do that. But whoever does it, parties
they have high sunk costs or face fee shifting provisions,               are unlikely to settle cases unless they perceive the negotiated
plaintiffs face a sure gain in settlement or the possibility of a        outcome to be more attractive than their alternatives.
larger gain at trial. In the absence of counterclaims or offers          While a cold water evaluation may dampen overconfident
of judgment, defendants look through the other end of the                expectations, economic analyses iteratively guide litigants
telescope – they face a sure loss by settling or the potential of        through probability-adjusted outcomes without turning
a bigger loss at trial. In experiments, Tversky and Kahneman             them off by telling them they are wrong.
found that a large majority of subjects facing gains preferred                Overconfidence leads people to discount small
a certain $240 to a 25 percent chance of $1,000 (worth on                probabilities and luck, and overestimate unattractive
average $250). On the other hand, when facing a loss, the                consequences. It is human nature to place more emphasis on
same group preferred a 75 percent chance of loss of $1,000               facts that support desired outcomes and to make self-serving
(worth $750) to a sure loss of $750.                                     assessments of one’s own ability. More than 80 percent of



                                                                     3
interviewed entrepreneurs described their chances of success            dealing with a client who is comfortable navigating risk with
as 70 percent or better, and 33 percent described them as               less information.
“certain.” That compares with a five-year survival rate for new               Decision trees can help determine how much to pay
firms in the 33 percent range. Couples about to be married              to close an informational gap. As one would expect, it has
estimated their chances of later divorcing at zero, even                everything to do with the spread between the decision points
though most knew that the divorce rate is between 40 and 50             (“litigate” v. “settle”). Assume a hypothetical driver involved in
percent. Negotiators in final arbitrations overestimated the            an automobile accident. Her (overly simplified) legal analysis
chance that their offer would be chosen by 15 percent.                  tells us that her principal claim is negligence and that the
     Although most negotiators believe that they are more               range of remedies is $0 to $100,000. The probabilities are
“fair” than average, in specific mediations they tend to                50:50 for each outcome. A settlement offer is outstanding for
overestimate their trial alternatives. People focus attention           the expected value: $50,000. Graphically, the decision looks
on assets while under-appreciating the issues on which their            like this.
claim is weaker. A myopic focus on a case strength blurs focus
on less favorable points. Focusing tightly on case merits runs
the risk of undervaluing the transaction costs of continuing
to trial.
     However, while overconfidence is prevalent, it is not
universal. A mediator cannot simply discount the value of
each side’s offers by the same amount or proportion. One
side might be well calibrated while the other is far off. What
they can do is prepare alternative scenarios looking through
different ends of the same telescope. Some scenarios will
be rosy and others thorny, but together they are more likely                The economic analysis reflects the simplicity of the
to cover the range of potential outcomes – worst case to                hypothetical; the plaintiff should be indifferent to the two
best. Requiring specific explanations for various outcomes              options since they both equal $50,000. But the gap is wide.
can break single-minded focus on one. In the process,                   So expected value may not be as helpful as improving the
overconfidence can be reduced.                                          information she has available to make a dichotomous
                                                                        choice.
C.	 Perfect	Information

     Lawsuits sound better to lawyers and judges when they
only hear one side. As information improves, the bloom may
fade. People undervalue aspects of the situation of which they
are relatively ignorant. As an example, in one study, subjects
given only half of the evidence in a case predicted the jury’s
decision with greater confidence than those who were given
all of it. Not only were they more confident than those who
were better informed, they were not able to compensate
adequately when told that their evidence was lopsided.
     While people want all available information before
making decisions, experts and seasoned executives are                        While decision points are rarely this elementary,
accustomed to making decisions under uncertainty. Shell                 plaintiff’s decision is whether to accept the $50,000 offer or
executives made billion-dollar investment decisions based on            spend more money discovering additional information that
Joe Jaworski’s hypothetical scenarios for the price of crude oil        may improve her odds – and the offer. Since she stands to
in 30 years. Business clients routinely take risks with limited         double her money, she may seek more information than she
information.                                                            might want in a closer call. But how much will she and her
     Lawyers are held to a different standard. Sixty percent            lawyer spend to take a swing at the $100,000 outcome?
certainty that a new product launch will be successful is                    Once plaintiff has a $50,000 settlement offer (or
considered great information. But missing 40 percent of the             reasonably expects one in that range), she is bracketed by a
possible information in discovery may lead to a malpractice             choice between a 50 percent chance of recovering $100,000
suit for a losing lawyer. Part of any litigator’s analysis should       and a sure $50,000 settlement. Since the offer comes early,
include the amount her side is willing to spend to find out             she must make that choice with less than perfect information.
additional information. Since price and risk are inversely              Of course, if she knew the jury was coming back in an hour
correlated, if one accepts the risk of limited information              with a $100,000 award, she would not settle (“win” fork).
by adjusting price downward, he should balance the risk                 If she knew the jury was going to zero her out, she would
portion of the equation too. The alternative puts the lawyer in         take the offer. But her choices come in the real world. The
the uncomfortable position of leaving rocks unturned when               amount she is willing to spend turns out to be half the spread



                                                                    4
between outcomes. We take the probabilities (50:50) and                absence of such explanations, parties fill in the blanks – and
solve for the difference between the outcomes by examining             make attribution errors in the process. In certain carefully
each scenario. That means we set the “litigate” probabilities          chosen circumstances, apologies have been shown to reduce
on the “win” and “lose” forks to 100:0. The “win” outcome is           anger and increase the likelihood that a party will accept a
swinging for $100,000 at trial and the “lose” outcome prefers          settlement offer, but apology comes with risks.
to “settle” at $50,000. The expected value for the new “win”/               One of the inherent strengths of economic analysis is that
”lose” fork is $75,000. Therefore, plaintiff should be unwilling       it focuses the parties on the component parts of the problem
to spend more than $25,000 to obtain additional information            at hand. That is not to suggest that there is not an important
to decide between a $50,000 settlement offer and the chance            and cathartic role for emotions and venting in negotiation,
of $100,000 at trial. Of course, the information she discovers         even in commercial disputes. There certainly are. It is to say
could also be damaging and push her closer to $0.                      that when deciding to pass up an opportunity to negotiate an
                                                                       alternative to litigation, the parties should objectively evaluate
                                                                       the price they put on those emotions. “[G]ive me liberty or
                                                                       give me death!” carried a lot of meaning. It also clarified the
                                                                       price one patriot was willing to pay for his alternative. While
                                                                       the alternatives to inevitable human conflict are usually less
                                                                       stark, it is important for our analyses to contemplate the
                                                                       attributions we are likely making about our opponent, and
                                                                       the ones they are surely making about us.

                                                                       E.	 Anchoring

                                                                            As we move from dispute analysis to negotiation planning,
                                                                       we are often faced with making the first offer or awaiting
                                                                       one from the other side. That decision turns on a number
                                                                       of variables. Because the car dealer knows its real costs, it
                                                                       posts a sticker price that is intended to push negotiations
                                                                       above those costs. With less information, we may await our
    People often face these choices irrationally. Many will            opponent’s move. Their offer may telegraph informational
spend more to “increase theprobability of a desirable outcome          asymmetries or align with our expectations. It may reflect
from 0.99 to 1 than from 0.80 to 0.85.” But that decision              overconfidence borne of ignorance and it might just be a
should be made wide-eyed. We all make decisions with less              strategic move. No matter whether they are rooted in reason
than perfect information. In litigation, we do well to balance         or something else, first offers have power.
price and risk.                                                             Psychologists call the phenomenon “anchoring” and
                                                                       have studied its influence on opening offers and demands,
D.	 Attribution	Errors	and	Anger                                       insurance policy caps, statutory damage caps, negotiator
                                                                       aspirations, and other “first numbers.” And while training and
     The same psychological lenses that give us confidence             information asymmetry certainly limit the impact of anchors,
also color our perception of others’ conduct. The likelihood           even “real estate agents’ judgments about the market price of
of settling a lawsuit is impacted by the parties’ attitudes            homes were influenced by manipulations of the list prices.”
toward one another.                                                    Anchors function much like our “gut” reactions to the value
     In his best-selling book Blink: The Power of Thinking             of an object or lawsuit. The more relevant information our
Without Thinking, Malcolm Gladwell notes that “there are               analytical mind has, the less we are swayed by an unreasonable
highly skilled doctors who get sued a lot and doctors who              anchor. Mistaken or misguided anchors can increase the odds
make lots of mistakes and never get sued.” The differentiator          of impasse and have unintended consequences.
is not shoddy medical care, it’s “something else” – “patients               Information quality and symmetry can have a clear
say that they were rushed or ignored or treated poorly” and it         impact on the weight of an anchor. Our legal and economic
made them mad. “‘People just don’t sue doctors they like,’ is          analyses increase our confidence in our valuations and
how Alice Burkin, a leading medical malpractice lawyer, puts           thus the offers we make. These analyses place us in a better
it.” Medical schools teach bedside manners and “[i]nsurers list        position to influence the negotiations by dropping an anchor
a good bedside manner and a willingness to answer patient              or disregarding an unreasonable attempt to anchor by
questions as effective ways to reduce the odds of facing a             another.
malpractice suit.”
     Trial lawyers are equipped as repeat players to help              F.	 Reactive	Devaluation
clients factor this bias into their analyses too. Mediators can
help by probing alternative explanations for conduct in an                 There are certain things we just do not want to hear from
effort to debias models, if not actually reduce anger. In the          our adversaries. In fact, the perceived source of a message has



                                                                   5
a lot to do with our perception of it. We discount whatever              G.	 Other	Factors	–	
the other side offers, even if it’s favorable (“They wouldn’t            	   And	There	Are	Always	Other	Factors
have offered those terms if those terms strengthened our
position relative to theirs.”). We also tend to reject or devalue             There are always other factors impacting case valuation.
whatever is freely available and strive for whatever is denied           One litigant may want to avoid the market or bankruptcy
– the “grass is always greener on the other side of the fence.”          effects of an adverse verdict, the risk of a no-liability finding,
Student assistants were given the option of cash or authorship           or the distraction of litigation on management. Another
credit by a professor writing an article. The students who               may want to set precedent or ward off future claims with
were offered cash expressed a desire for authorship credit.              a consistent litigation strategy. Others may be intent
Those offered authorship credit wanted cash.                             on legislation or appellate decisions that change their
     A Cold War experiment quantified the magnitude of this              opponents’ alternatives. We all use “rules of thumb” to short-
bias. Soviet leader Gorbachev made a proposal to reduce nuclear          circuit decisions. Sometimes they work, but if we overpay for
warheads by one-half, followed by further reductions over                something, we experience the “winner’s curse.” We perceive
time. Researchers attributed the proposal to President Reagan,           whatever we are selling to have a higher value than the buyer
a group of unknown strategists, and to Gorbachev himself.                appreciates – the endowment effect.
The surprise was not that the group reacted differently to the                Decision-makers allocate resources based on anticipated
same proposal depending on its source, but the wide range of             returns. Once we have thoroughly analyzed a case (or series
difference. When attributed to the U.S. President, 90 percent            of cases) from different perspectives, a decision-maker can
reacted favorably. That dropped marginally when attributed               better decide how much time and money she is willing to
to the third-party (80 percent), but in half (44 percent) when           spend to make those points or avoid those costs. A hard-
attributed to the Soviet leader. It also comes as no surprise that       fought principle may be at stake – at least until an objective
the responsiveness of Israeli student subjects to a proposed             analysis places a dollar price tag on it. The existence of
peace agreement between Israel and the Palestinians depends              these and other psychological impediments to successful
on whether they perceive the proposal as emanating from the              resolution call for objective models to test party aspirations.
Israeli government or the Palestinian Authority.                         Mediators are well-positioned to check many of these biases
     If we know that our proposals could be discounted by                as they nudge the focus back to future outcomes. The proper
half just because of their source, we should consider the                use of objective tools that continually redirect litigants to the
source in scenario planning. The arms control proposal from              problem rather than the personalities should only work to
“unknown strategists” was viewed almost as favorably as                  increase effectiveness.
the same one coming from the home team – nearly twice as
favorably as when it came from the opponent. A mediator                  Mr. Philbin is a mediator in San Antonio, Texas. He can be
can accept one side’s demonization of the other and gently               reached at don.philbin@adrtoolbox.com.
reframe the underlying issue as the parties work through
various outcome scenarios.



                                                                         2008	State	Bar	Annual	Meeting

                         N EWS                          B AR
                                                                         The Annual Meeting will take place June 26-27 in Houston.
                                     FROM THE                            The Bench Bar Breakfast will feature CNN legal analyst Jeffrey
                                                                         Toobin. Obtain quality CLE at a bargain price! Registrants
                         by Les Hatch                                    will receive a flash drive which includes all the CLE materials.
                                                                         Register now at www.texasbar.com/annualmeeting.

Judicial	Poll	Results                                                    President-Elect	Candidates	Nominated
Results of the 2008 Judicial Poll (Supreme Court, Court of               Candidates for 2008-2009 State Bar of Texas President-Elect
Criminal Appeals and Courts of Appeal) have been tabulated.              are Claude Ducloux of Austin and Roland K. Johnson of Fort
11,784 attorneys voted (3,323 online and 8,461 by paper).                Worth. Votes can be cast either via paper ballot or voting
The results are available at www.texasbar.com/pollresults.               online from April 2- May 1.

Survey	on	Insurance	Disclosure                                           State	Bar’s	Internal	Audit	Completed
In response to a request from the Texas Supreme Court, State             The recently-completed FY 06-07 audit yielded “no comments
Bar President Gib Walton has established a Task Force on                 or recommendations as a result of this engagement.”
Professional Liability Insurance Disclosure. The Task Force
has developed a survey seeking Bar input. You may complete               Building	Update
the survey online at www.texasbar.com by finding “This                   Remodeling continues as work began in late February on the
Survey” on the home page.                                                2nd to the 6th floors of the Texas Law Center in Austin.



                                                                     6
                                                              A PPELLATE U PDATE
                                                              by Jeff Burbach




Texas	 public	 policy	 did	 not	 prohibit	 liability	                      In this case, Emeritus Corp. and its employee, Richard
insurance	from	covering	punitive	damages	award.                       Morris, were sued by a resident of a nursing home owned
Fairfield Ins. Co. v. Stephens Martin Paving, LP, No. 04-0728,        by Emeritus for injuries allegedly suffered when the resident
2008 WL 400397 (Tex. Feb. 15, 2008)                                   was hit by a door Morris opened. For defense and indemnity,
                                                                      Emeritus was covered by its general liability policy provided
     Roy Edward Bennett died as a result of injuries incurred         by National Union Fire Insurance Company of Pittsburgh. As
during his employment with Stephens Martin Paving.                    an employee acting within the scope of his work, Morris was
Although Bennett’s survivors were barred by statute from              also an additional insured on the policy. However, Morris did
recovering actual damages from the employer, they sued the            not know that he was an additional insured under the policy.
employer, alleging, among other things, that the employer                  Although National Union attempted to contact Morris
failed to provide a safe workplace and failed to enforce OSHA         several times, Morris never responded to National Union and
safety rules.                                                         he never answered the lawsuit. After the Plaintiff presented
     The employer, Stephens Martin Paving, maintained                 its evidence, the claim against Morris was severed and default
worker’s compensation and employer’s liability insurance              judgment against Morris was granted. Conversely, after
provided by Fairfield Insurance Company. Shortly after                presentation of the evidence, the jury decided that Emeritus
Bennett’s survivors filed suit, Fairfield filed a declaratory         was not negligent and a take-nothing judgment was entered.
judgment action against the employer and Bennett’s survivors               In an effort to collect the default judgment against Morris,
in Federal District Court seeking judgment that it owed no            Plaintiff sued National Union in a case removed to federal
duty to defend or indemnify the employer in the suit for              court. The Plaintiff argued that despite the fact that Morris
exemplary damages. The District Court denied Fairfield’s              had failed to notify National Union of the suit against him,
Motion for Summary Judgment and declared that Fairfield               National Union’s knowledge of his inclusion in the lawsuit
had a duty to defend and indemnify the employer in the                required National Union to provide defense and indemnity.
underlying suit brought by Bennett’s survivors. In certifying         The insurer’s failure to provide such defense or notify Morris
the question to the Texas Supreme Court, the Fifth Circuit            of his right to defense was alleged to be a breach of the duty
asked whether Texas public policy prohibits a liability insurer       to defend, making the insurer liable for the amount of the
from indemnifying an award for punitive damages imposed               default judgment. After summary judgment was granted to
on its insured.                                                       the Plaintiff, the Fifth Circuit certified questions to Texas
     After considering arguments pertaining to public policy          Supreme Court.
and enforceability of express agreements, the Texas Supreme                In the first question, the Fifth Circuit asked: “When an
Court ruled that, at least in the worker’s compensation               additional insured cannot be presumed to know of coverage
circumstance, Texas public policy does not prohibit                   under an insurer’s liability policy, does an insurer that has
insurance coverage for exemplary damages. However, the                knowledge that a suit implicating policy coverage has been
Court avoided making a broader statement regarding Texas              filed against its additional insured have a duty to inform the
public policy in the context of all exemplary damage claims.          additional insured of the available coverage?” Put succinctly,
The Court in dicta provided some indication as to how it              the answer from the Supreme Court was “no.” The Court
might rule under other circumstances. For example, where              held that even though the additional insured may be ignorant
an entity becomes liable for the acts of an employee and              of its rights regarding coverage, the insurer did not have to
the employer was not aware of those acts, the purpose of              “gratuitously subject itself to liability” until it received notice
exemplary damages may be achieved by permitting coverage              from the additional insured of the suit against him.
for the employee so as not to penalize the entire business                 The Fifth Circuit also asked: “Does proof of an insurer’s
for the act of one employee.                                          actual knowledge of service of process in a suit against its
                                                                      additional insured, when such knowledge in sufficient time
                                                                      can provide a defense for the insured, establish as a matter of
Insurer	has	no	duty	to	defend	if	no	request	is	made	                  law the absence of prejudice to the insurer to the additional
and	 has	 no	 duty	 to	 notify	 an	 insured	 of	 available	           insured’s failure to comply with the notice-of-suit provisions
defense.	                                                             of a policy?” This question was also answered “no.” Simply
National Union Fire Ins. Co. of Pittsburgh, PA v. Crocker, No.        put, the insurer had no duty to notify the additional insured
06-0868, 2008 WL 400398 (Tex. Feb. 15, 2008).                         of coverage and no duty to defend the additional insured



                                                                  7
until the additional insured notified National Union that he               contended that the requirement of providing notice as soon
had been served with process and requested coverage under                  as practicable was a condition precedent to coverage, not
the policy.                                                                a covenant. Therefore, Hanover was not required to show
                                                                           prejudice from the delay in notification. In looking of the
                                                                           history of suits pertaining to notice provisions and insurance
Multiple	expert	reports	may	be	used	cumulatively	                          policies, the Court recognized that a prior case had held that
to	meet	the	requirement	of	an	expert	report	in	a	                          the insured’s failure to timely comply with policies’ forwarding
medical	malpractice	case.	                                                 conditions precluded the insurer’s liability, whether or not
Packard v. Guerra, No. 14-06-00546-CV, 2008 WL 516560 (Tex.                prejudice resulted. Members Mutual Insurance Company v.
App.—Houston [14th Dist.] February 28, 2008, no pet. h.).                  Cutiai, 476 S.W.2d 278, 281 (Tex. 1972). However, the Court
                                                                           also noted that the State Board of Insurance subsequently
     Plaintiffs sued Dr. Ugorji, claiming that his insufficient            issued a board order requiring a mandatory endorsement
care caused permanent brain damage in a newborn infant.                    to all general liability policies which precluded forfeiture
The Plaintiffs also amended the suit to assert vicarious                   of coverage for failure to comply with the notice provision
liability against various entities and individuals responsible             unless the insurer was prejudiced. In concert with the order
for the management oversight of Dr. Ugorji’s work. In an                   from the State Board of Insurance, the Court also sided with
effort to comply with Texas Civil Practice and Remedies                    the trend in Texas and a majority of other states which require
Code § 74.351, the Plaintiffs filed the expert report of Dr.               the insurer to show prejudice by the delay in notification in
Cooper. After the Defendants challenged the adequacy                       order to excuse the insurer’s performance under the policy.
of the report, trial court determined that it was adequate
with regard to Dr. Ugorji, but even with supplementation,
the expert report was deficient with regard to the other                   Insurer	may	seek	reimbursement	from	an	insured	
defendants and an opportunity was given to the Plaintiff to                after	settlement	only	if	the	insurer	obtains	consent	
correct the deficiencies. The Plaintiff supplemented the first             to	 settlement	 and	 the	 insurer’s	 right	 to	 seek	
two reports with an additional report from a third doctor and              reimbursement.
a report from an expert attorney, which explained the various              Excess Underwriters at Lloyd’s London v. Frank’s Casing Crew
corporate duties and responsibilities amongst the entities.                & Rental Tools Inc., No. 02-0730, 2008 WL 274878 (Tex. Feb.
     In an interlocutory appeal, the Defendants complained                 1, 2008).
that reports of several expert doctors should not be considered
collectively in order for a Plaintiff to meet the requirement                   In the underlying case, Frank’s Casing was sued by
of an expert report pursuant to § 74.351 of the Texas Civil                ARCO for the collapse of a rig in the Gulf of Mexico. After the
Practice and Remedies Code. The Fourteenth Court of                        claim was presented, the insurer reserved its right to dispute
Appeals concluded that statute specifically authorized the                 coverage. During the trial, Frank’s Casing requested the
consideration of more than one expert report in order allow                insurer settle the dispute. The insurer attempted to preserve
the Plaintiff to meet all required elements of a potential claim.          a right to seek a reimbursement on claims where there was no
Moreover, in this particular circumstance, because claims of               coverage. The insured did not consent to the insurer seeking
vicarious liability were being made against individuals and                reimbursement as part of the settlement.
entities, the affidavit of the legal expert outlining the respective            After the case was settled, the insurer filed suit seeking
duties of the Defendants could also be considered as part of               reimbursement of claims which were not covered and was
the determination made by the medical experts as to whether                initially granted a judgment in excess of 7 million dollars.
or not the duties of each respective defendant had been met.               However, after judgment was granted, the Texas Supreme Court
                                                                           decided Texas Association of Counties County Government Risk
                                                                           Management Pool v. Matagorda County, 52 S.W.3d 128 (Tex.
Insurer	must	be	prejudiced	by	late	notice	of	suit	in	                      2000), where the Court determined where there was no right
order	to	be	excused	from	its	contract	obligations.                         of the insurer to seek reimbursement for uncovered claims
PAJ Inc. v. Hanover Ins. Co., 243 S.W.3d 630 (Tex. 2008)                   where the insured had not consented to such a right. In light
                                                                           of Matagorda County, the trial court granted a new trial and a
     PAJ, Inc., a jewelry manufacturer, was sued by Yurmin                 take-nothing judgment for Frank’s Casing against the insurer.
Designs, Inc. for a copyright infringement regarding the                        On appeal, the Texas Supreme Court initially issued
marketing of a line of jewelry. Only 4-6 months after the                  an opinion in Frank’s Casing distinguishing the holding in
initiation of the suit did PAJ determine that its insurance                Matagorda County and reversing for the insurer. 2005 Tex.App.
policy might cover such a claim and Hanover Insurance                      Lexis 418 (Tex. May 27, 2005). The Court originally held that
Company was notified of the action. In the filing of summary               the concerns addressed in Matagorda County were not in play
judgments by both PAJ and Hanover, the parties stipulated                  where there was a coverage dispute and an insured demanded
that 1) notification within 4-6 months was not as soon as                  that an insurer accept a settlement offer within policy limits
practicable, as required by the policy; and 2) Hanover had                 while the insurer was asserting a right to reimbursement. On
not been prejudiced by the delay in PAJ’s notice. Hanover                  rehearing, the Court reversed its position.



                                                                       8
     In looking at the principles of Matagorda County, the Court          argument, the Defendant did not object to the argument.
determined that allowing insurers to seek reimbursement                        In reversing the judgment, the Court determined that
from its insured on claims it settles where there is a coverage           the closing arguments were aimed at improperly inciting the
dispute necessarily puts insurers and their insureds at odds.             passions of the jury against the Defendant and its counsel
Additionally, the Court determined that the insurer is best               for simply performing their obligations. More important,
able to cover the risk of coverage uncertainties, whether that            permitting this type of argument could impact the integrity
be through policy terms or premium rates. Alternatively, the              of the judicial system, which could not be permitted.
insurer could seek a prompt resolution to a coverage dispute
in order the clarify its obligations. In any event, the Court was
unwilling to add an extra-contractual provision to the policy,            Second	motion	for	new	trial	does	not	extend	trial	
allowing an insurer to seek reimbursement where the insured               court’s	plenary	power.
had not expressly agreed to such a provision. At the end of               In re Brookshire Grocery Co., No. 05-0300, 2008 WL 53702
the day, the Court determined that when the insurer pays the              (Tex. Jan. 4, 2008).
settlement and then seeks reimbursement, the insurer must
have the express consent of the insured to seek reimbursement                  After suffering a jury verdict, Defendant Brookshire filed
and the Court will not approve of implied or equitable claims             a NOV motion and a motion for new trial. Following hearing,
which are outside of the express terms of the policy.                     the trial court signed a judgment and entered an order
                                                                          denying both of Defendant’s motions. Almost four weeks
                                                                          after the first motion was denied, a second Motion for New
Offensive,	 improper	 jury	 argument	 compels	                            Trial was filed. Almost two months after the first Motion for
granting	of	new	trial.                                                    New Trial was denied, the trial court granted the Defendant’s
Living Centers of Texas, Inc. v. Peñalver, No. 06-0929, 2008              second Motion for New Trial.
WL 204502 (Tex. Jan. 25, 2008) (per curiam).                                   The Plaintiff received mandamus relief when the Court
                                                                          of Appeals agreed that the plenary power of the trial court
    In a closing argument, comparison of the Defendant to                 expired 20 days after the trial court overruled the first motion
Nazis was so offensive that it was incurable and required the             for new trial. In reviewing Brookshire’s mandamus request,
granting of a new trial. In this wrongful death suit, the plaintiff       the Court looked at Rule 329(b). While the rule permits
argued during closing arguments that defense counsel’s                    amendments to a Motion for New Trial before a ruling has
attempts to minimize damages because decedent was 90 years                been made, the rule does not permit the extension of the trial
old was comparable to Nazi Germany’s devaluation of life by               court’s plenary power by filing a second motion for new trial
experimentation on the sick and elderly. During the closing               following the denial of the initial motion.




                                                      E VIDENCE & D ISCOVERY U PDATE
                                                      by Mary Evelyn McNamara




United	States	Court	of	Appeals	for	the	Fifth	Circuit                      trial court rendered judgment on the verdict.
                                                                               Price contended on appeal, among other issues, that
Testimony	 Regarding	 Conduct	 Unrelated	 to	                             the district court erred in excluding the testimony of one
Plaintiff	Inadmissible	in	Discrimination	Suit.                            of his co-workers, Charles Lott, concerning discriminatory
Price v. Rosiek Constr. Co., 509 F.3d 704 (5th Cir. 2007).                conduct that did not involve Price. During the trial, Lott
                                                                          testified outside of the presence of the jury that a mutual
     Price brought suit against his employer, Rosiek                      supervisor of Lott and Price, who had fired Price, often
Construction, under Title VII of the Civil Rights Act and                 made racially discriminatory jokes and comments. The trial
42 U.S.C. § 1981a for alleged racial discrimination in his                court excluded Lott’s testimony as not relevant to the issue
termination from employment. At the trial in the U.S. District            of whether Price’s discharge was racially motivated because
Court for the Southern District of Texas, the jury found that             Lott was not fired by the supervisor and because Price’s case
Price had not shown that race was a substantial or motivating             was not brought on the theory that Rosiek created a hostile
factor in Rosiek’s decision to terminate his employment. The              work environment. The trial court determined additionally



                                                                      9
that, to the extent Lott’s testimony was relevant, its relevance                  ordered that Browne’s deposition proceed at a place of the
would be outweighed by its prejudicial effect.                                    parties’ choosing “without limitations and the Rule 11.” The
     The court of appeals found no error. Even assuming there                     trial court found additionally that Browne’s public statements
was an abuse of discretion in excluding Lott’s testimony, Price                   justified setting aside the discovery agreement on grounds of
did not demonstrate that admitting it would have altered the                      misrepresentation, estoppel, and changed circumstances. BP
outcome of the case. Lott’s testimony concerning racially                         first sought mandamus relief in the court of appeals, which
discriminatory jokes and comments did not bear on Rosiek’s                        was denied, and then in the Texas Supreme Court.
decision to discharge Price. Therefore, even if the testimony                          The court, cautioning that a “court should be particularly
were admissible, it would have had no more than a slight                          reluctant to set aside a Rule 191.1 agreement after one party
effect on the verdict.                                                            has acted in reliance on the agreed procedure and performed
                                                                                  its obligations under the agreement,” found that the trial
                                                                                  court had abused its discretion in setting aside the discovery
Texas	Supreme	Court                                                               agreement. There was no evidence of misrepresentation,
                                                                                  estoppel, or changed circumstances to support setting
Parties’	Discovery	Agreement	Cannot	Be	Set	Aside	                                 aside the agreement. As for changed circumstances, the
Without	Good	Cause.	                                                              court found that a “subsequent development reducing the
In re BP Prods. N. Am., Inc., No. 07-0119, 51 Tex. Sup. J. 372,                   usefulness of a discovery agreement to one party, without
2008 WL 204506 (Tex. Jan. 25, 2008) (orig. proceeding).                           more, does not justify a refusal to enforce the agreement.”
                                                                                  Further, the trial court was without authority to set aside
     The Texas Supreme Court, in an issue of first impression,                    the agreement as a sanction, in the absence of a motion for
considered the scope of a trial court’s power to set aside an                     sanctions, proper notice and opportunity to be heard, or the
otherwise enforceable discovery agreement under Texas Rule                        trial court’s invocation of its power to sanction. As for BP’s
f Civil Procedure 191.1.1 In a consolidation of hundreds of                       motion to quash, the court found that Manzoni’s inability to
lawsuits filed after an explosion at a BP Products refinery                       answer a question about budget cuts could reasonably be
in Texas City, the plaintiffs sought the depositions of John                      construed as new evidence sufficient to support Browne’s
Manzoni, BP’s head of refining and marketing, and John                            one-hour deposition by telephone, according to the terms of
Browne, BP’s CEO. After BP unsuccessfully attempted to                            the parties’ discovery agreement.
quash the depositions on the ground that the plaintiffs had
not met their burden under the apex doctrine, the parties
entered into a discovery agreement under Texas Rule of                            Texas	Courts	of	Appeal
Civil Procedure 191.1, which was filed with the court. The
agreement provided that BP would produce Manzoni for a                            Monetary	Sanctions	Upheld	for	Discovery	Abuses,	
four-hour deposition and that the plaintiffs would withdraw                       But	 Case	 Remanded	 for	 New	 Trial	 Where	 Trial	
their notice of Browne’s deposition. The agreement also                           Court	 Did	 Not	 Explain	 Appropriateness	 of	 Non-
provided that if the plaintiffs developed new evidence of                         Monetary	Sanctions
Browne having “unique and superior knowledge of relevant                          Scott Bader, Inc. v. Sandstone Prods., Inc., Nos. 01-05-00940-
facts,” the plaintiffs could issue a new notice of Browne’s                       CV & 01-06-00593-CV, 2008 WL 522870 (Tex. App.—Houston
deposition. BP retained its right to file motions for protection                  [1st Dist.] Feb. 28, 2008, no pet. h.).
and to quash the new notice. If it were determined that
Browne’s deposition was not protected, Browne’s deposition                             Sandstone Products brought suit against Scott Bader
would be limited to one hour by telephone.                                        for an allegedly defective product used in Sandstone’s
     After Manzoni’s deposition was taken, the plaintiffs filed                   manufacturing. In discovery, Sandstone sought information
a new notice to take Browne’s deposition in Galveston. BP                         about Scott Bader product specification and testing, the
filed motions for protection and to quash. The plaintiffs                         identity of the Scott Bader employee most knowledgeable
responded that at the time the parties entered into the                           about product development, and complaints by other
discovery agreement, it was not anticipated that Browne                           customers. Over the course of a year, Scott Bader produced
would demonstrate new knowledge through numerous                                  two hundred pages of documents and stated it had no other
public statements. The trial court denied BP’s motions and                        customer complaints. Then it produced eight thousand pages
                                                                                  of documents all at once. Included in the eight thousand
1
    The text of this rule is as follows:                                          pages of documents was a seventeen-page memorandum by
      191.1 Modification of Procedures
                                                                                  a witness who had already been deposed. Only the first page
      Except where specifically prohibited, the procedures and limita-            of the memo had been previously produced. Shortly before
      tions set forth in the rules pertaining to discovery may be modi-           trial, Sandstone sought sanctions, contending the memo was
      fied in any suit by the agreement of the parties or by court order          a “smoking gun” because it refuted many of Scott Bader’s
      for good cause. An agreement of the parties is enforceable if it
      complies with Rule 11 or, as it affects an oral deposition, if it is
                                                                                  previous representations in discovery.
      made a part of the record of the deposition.                                     The trial court found several instances of discovery abuse
      Tex. R. Civ. P. 191.1.
                                                                                  and imposed sanctions against Scott Bader, including an



                                                                             10
instruction that the jury presume that Scott Bader’s product            responses. The trial court granted the defendant’s motion to
did not meet specifications for a certain time period and that          strike the expert affidavit, as well as the defendant’s motion
the specifications Scott Bader provided to Sandstone for that           for summary judgment.
time period were modified. The trial court also prohibited                   The court of appeals affirmed. The plaintiff failed to
Scott Bader from rebutting the presumptions, struck Scott               assert good cause and lack of surprise concerning the expert
Bader’s affirmative defenses on these issues, and ordered               witness’s affidavit. Absent a showing of good cause or lack of
that Scott Bader pay $68,000 in attorney’s fees. At trial, Scott        surprise, it was not an abuse of discretion for the trial court
Bader’s lead trial counsel violated a limine order concerning           to strike the expert affidavit. Without the affidavit, there was
liability insurance. Sandstone requested a mistrial, which was          no evidence to support the plaintiff’s claim.
granted. After the mistrial, the trial court granted an order
severing the sanctions orders from the rest of the case. At             Unserved	 John	 Doe	 Party	 Has	 Standing	 for	
the second trial, the jury instructions imposed as a sanction           Mandamus	 Relief;	 Disclosure	 of	 John	 Doe	
were included in the charge, over Scott Bader’s objection.              Defendant’s	 Identity	 Permissible	 Only	 Upon	
Scott Bader appealed the imposition of sanctions as well as             Showing	 of	 Defamation	 Evidence	 Sufficient	 to	
the judgment rendered after the second trial.                           Defeat	Summary	Judgment.
     The court of appeals examined whether the sanctions                In re Does 1-10, 242 S.W.3d 805 (Tex. App.—Texarkana 2007,
were just under the two-part test set forth in TransAmerican            orig. proceeding).
Natural Gas Corp. v. Powell. 811 S.W.2d 913, 917 (Tex. 1991).
Under this test, there must be a direct nexus among the                      A hospital filed suit against ten John Does, alleging
offensive conduct, the offender, and the sanction imposed,              that they had defamed the hospital by posting anonymous
and the just sanction must not be excessive. Id. The court              comments on an Internet blog. The hospital sought the
upheld the findings that Scott Bader had engaged in                     identity of blogger Doe I to be disclosed by his Internet
sanctionable conduct and the attorney’s fees sanction.                  service provider (ISP). The ISP was not a party to the suit.
However, because the trial court “offered no reasoned                   The hospital did not attempt to obtain Doe I’s identity
explanation” of the appropriateness of the non-monetary                 through traditional discovery rules, instead seeking Doe I’s
sanctions, did not consider lesser sanctions, or explain why            identity through the Cable Communications Policy Act of
lesser sanctions would not have deterred the conduct, the               1984 (CCPA). 47 U.S.C. § 551. After the trial court ordered
non-monetary sanctions imposed constituted an abuse of                  that Doe I’s identity be disclosed to the hospital, Doe I filed
discretion. Because non-monetary sanctions caused harm in               a petition for writ of mandamus with the court of appeals,
the second trial, the case was remanded for a new trial.                requesting that his name not be released because of a possible
     One justice dissented and would have held that there               invasion of personal and constitutional rights.
is no requirement that the trial court explain its rejection                 In the mandamus proceeding, the hospital asserted that
of lesser sanctions when the trial court’s order detailed the           Doe I did not have standing to assert a petition for writ of
discovery abuses and directly tailored sanctions specifically           mandamus because he had not been served with citation.
authorized by Texas Rule of Civil Procedure 215. Of note to             The court of appeals disagreed. Any person affected by a
the dissenting justice was that the sanctions imposed did not           discovery request may move for a protective order. One of the
rise to the level of “death penalty” sanctions.                         reasons to seek a protective order under Texas Rule of Civil
                                                                        Procedure 192.6(b), as in this case, is to protect personal and
Affidavit	Stricken	Where	Expert	Was	Not	Timely	                         constitutional rights.
Disclosed.                                                                   After extensive analysis of interpretations of the CCPA,
Carbonara v. Texas Stadium Corp., 244 S.W.3d 651 (Tex.                  the court of appeals determined that the CCPA is not a
App.—Dallas 2008, no pet.).                                             procedural vehicle for seeking disclosure of Doe I’s identity.
                                                                        An order compelling production could have been issued
     In this premises liability case, the plaintiff designated          under the Texas discovery rules, but neither the hospital
Level Two discovery in his original petition. See Tex. R. Civ.          nor the trial court employed traditional rules of discovery.
P. 190. The discovery period in Level Two cases begins when             The court of appeals therefore found that the trial court’s
the suit is filed and continues until the earlier of thirty days        order constituted an abuse of discretion. “[W]hen a discovery
before trial or nine months after the earlier of the date of            order entirely fails to apply the rules of discovery, issuance
the first oral deposition or the due date of the first response         of mandamus requiring the trial court to utilize those rules
to written discovery. Id. 190.3(b)(1)(B). The case was never            and procedures is appropriate.” The court of appeals then
set for trial. Further, although the parties filed an agreed            provided guidance concerning the degree of proof required
discovery control plan, the trial court did not sign or enter           before Doe I’s identity could be disclosed. Because the
an order adopting it.                                                   First Amendment protects anonymous speech, but not
     More than a year after the discovery period ended, the             libelous statements, for the anonymous blogger’s name to be
defendant moved for summary judgment. The plaintiff’s                   disclosed the hospital would have to produce evidence on its
response to summary judgment included the affidavit of an               defamation claim sufficient to defeat summary judgment.
expert witness who had not been designated in discovery



                                                                   11
                              W HO W ANTS T O B E AN IP L ITIGATOR ?
                              Making the Transition from General Litigation to IP Litigation
                              by Steven R. Daniels




A
         MERICAN FINANCIER JOSEPH KENNEDY                                HOW	CAN	YOU	MAKE	THE	CHANGE	EFFECTIVELY?
         reputedly claimed that he predicted the stock
         market crash of 1929 when he started receiving stock            Study,	Study,	Study
tips from his shoe-shine boy. Of late, I have found myself
wondering if a similar phenomenon might be apparent in                        At some level, litigation is litigation and a good training
the field of intellectual property (“IP”) law, augured by the            in general litigation will serve equally well in the IP world.
law firm that advertises itself as “PI or IP,” as though the two         However, IP law is comprised of some unique and often
disciplines are as interchangeable as the initials. Indisputably,        arcane concepts. And patent litigation is rife with pitfalls
the ranks of those characterizing themselves as IP litigators            for the uninitiated. In recognition of this intricacy, Congress
are swelling. The websites of large law firms these days                 in 1982 established the United States Court of Appeals
contain a surprisingly large number of lawyers who designate             for the Federal Circuit, a special court with the mission
themselves as IP practitioners. The American Intellectual                of “harmonizing” the law related to patents. The Federal
Property Law Association (“AIPLA”)—whose membership is                   Circuit is comprised of twelve judges, many of them with
only a fraction of the active IP lawyering community—has                 drastically different perspectives on the law, and, with the
seen its membership grow from 6,180 members in 1990 to                   rare exception of en banc decisions, the Federal Circuit’s
15,702 members in 2005. And filings in patent infringement               opinions are rendered by three-judge panels. As a result, it is
actions have nearly doubled since 1993, going from 1,553 in              only a modest exaggeration to say that one can find a Federal
1993 to 2,898 in 2007. Why is this?                                      Circuit opinion to support virtually any position one wishes
     Part of this growth, of course, has to do with the ongoing          to take. This is particularly true with respect to such heavily
transformation of the American economy into one based on                 litigated issues as the construction of patent claims and
technology. When technological advances become the coin                  infringement by an equivalent rather than a direct copy of the
of the realm, IP laws grow in importance and IP lawyers find             claimed element (referred to as the doctrine of equivalents).
themselves increasingly in demand. Another part derives from                  For example, the United States Supreme Court’s 1996
the increasing number of so-called “patent trolls,” entities             decision in Markman v. Westview Instruments established the
established for the sole purpose of monetizing patents                   principle that a court sitting in a patent infringement case
through litigation and licensing, rather than through making             must construe the asserted claims of the patent as a matter of
use of the inventions. Yet another aspect of this growth is              law before the question of infringement may be addressed. But
driven by “tort reform,” which has drastically reduced the               the Court provided very little guidance with respect to how
dockets of many personal injury lawyers, driving them to                 claims are to be construed, or even when or by what process.
the potentially lucrative and seemingly stable world of IP               Thus, Federal Circuit case law is heavily weighted toward
law.                                                                     decisions reviewing and often reversing district court claim
     Regardless of the cause, the fact is that large numbers             constructions. The highly individualized nature of patents and
are making the move from general litigator to IP litigator. My           the language used in them renders such decisions extremely
sense is that the move can be made, but not without careful              ambiguous as precedent. And the manner whereby they are
thought. I know, because I’ve done it. I started my career in a          used by litigants is probably closer to the interpretation of
general litigation firm, and spent the first years of my practice        religious texts than it is to the application of precedent in
litigating everything from personal injury, to contracts, to             most other areas of the law. Further complicating things is the
insurance coverage, to consumer class actions. I loved it,               Supreme Court’s willingness to step in and overturn Federal
but when the opportunity arose to move to Austin and join                Circuit precedent, even long after practitioners have come
some of the best patent litigators in the country, I jumped at           to accept a wrongheaded principle as the law with which
it—armed with my law degree, a Master’s in literature, and               they must live, coupled with the high court’s reluctance to
enough chemistry, physics, and computer courses to sit for               provide specifics about how its new pronouncement is to be
the Patent Bar. Ten years later, with a few diversions along the         applied.
way, I’m still at it--along with many of the same people, but a               Therefore, it is essential for the practitioner new to the
different sign on the front door (which now reads “Dechert               field to learn as much as possible about the current state
LLP”). Below I offer a few admonitions to those venturing                of the law related to patents. Treatises are essential tools, as
forth into the brave new world of IP litigation—an arena that            are the ever-expanding digests of Federal Circuit decisions,
is, at present, very much in flux.                                       which are updated every year. Another particularly valuable



                                                                    12
source of information is the Internet, where patent law blogs            minimum, to define unusual terms before using them. You
abound. The United States District Court for the Eastern                 will also still likely see the forest for the trees and appreciate
District of Texas, which is now the busiest patent litigation            that one need not understand every nuance of a technical
forum in the country, even has its own blogs devoted to the              field in order to understand and render a decision based
trends and day-to-day developments in that court. Yet, as the            upon the core of disputed issues in the lawsuit. As with any
recent debacle involving one of Cisco’s in-house IP attorneys            litigation, the fact-finder cannot have in his or her head the
reveals, the Internet as a source of reliable information                full universe of facts that the lawyers have learned through
about patent law has its pitfalls, just as it does as a source           years of litigating the issues. Patent cases are no different.
of information about everything else. Even so, it is not                 And, just as in other cases, an effective presentation provides
difficult to find reliable and credible blogs, and most patent           just enough information to help the fact-finder, but not so
practitioners will happily provide links.                                much that he or she is confused. A person who has been
                                                                         forced to build an understanding from the ground up in a
Admit	Your	Technical	Limitations                                         short time is probably more likely to know where the line
                                                                         between comprehension and confusion lies and to formulate
     Most IP clients look for a good lawyer first and then for           factual showings accordingly.
someone who actually has formal training in the relevant                      So, is it good to have a degree in electrical engineering
field as icing on the cake. People without formal training in a          when you are facing a patent related to computer hardware,
technical discipline frequently express reluctance to make the           or a degree in chemistry to work with a patent on a chemical
transition to “hard” or technical IP law. Such reluctance is not         compound? Absolutely—and that is why I work with people
unreasonable. But to be able to “sell” yourself convincingly             who do have those credentials. But does the lack of such a
as an IP litigator, you have to overcome the fear of your own            degree preclude working in those fields? Absolutely not. But
technical limitations—first by admitting that both the fear and          again, it is tempting to oversimplify—reassuring yourself with
the limitations exist. Then, as long as you have an interest in,         the assumption that people with hard science backgrounds
and some aptitude for, the technical specialties in which you            do not communicate well or cannot identify with laypeople.
hope to work and you don’t mind looking dumb for a while,                My own experience with many technically trained lawyers
you can learn what you need to know to represent a client in             shows such facile conclusions to be wholly unfounded. There
a lawsuit involving a patent related to those specialties.               are indeed individuals who are highly trained in very difficult
     I tell people two basic facts when they ask me about                technical fields but who are also extremely effective teachers
this issue. First, in many technical fields, the technology is           and communicators. I have the good fortune to work with a
changing so fast that the lawyer who majored in the field as             lot of them. Yet, these people remain relatively rare among
an undergraduate ten or twenty years ago is not dramatically             practicing lawyers. Therefore, I feel that the most successful
better positioned to work on a patent case than a lawyer                 patent practices involve teams that combine people from
who has an interest in the field and a willingness to learn. It          many backgrounds and allow their strengths to complement
would be malpractice for either of them to assume they have              each other in serving the client’s cause.
sufficient personal knowledge of the specific area covered by
the patent or patents at issue to understand the invention               Embrace	Your	Litigation	Experience
and the relevant issues without the assistance of people
current in the field. Both lawyers will be required to consult                The combination of relatively arcane (and malleable)
with experts; the inventors, if possible; people in their firms          principles of law and often complex technology adds
who may have more direct training or experience; and, in the             nuance to IP cases that is not often present in traditional
case of clients that either practice the patent themselves or            business litigation, for instance. Yet, the day-to-day conduct
are accused of infringing it, the client’s employees in order to         of an IP lawsuit is essentially identical to any other lawsuit.
build sufficient knowledge of the patented technology to act             The case still needs to be managed so that associates and
as competent counsel in the case.                                        staff are used efficiently and the client is well represented.
     The second, and perhaps more critical, fact about                   There is still discovery and all of its attendant complexities,
technical expertise is that, at the end of the day, your client’s        confrontations, and motion practice. And there is still the
case will be presented to a judge and/or jury with even                  critical obligation to be ever-mindful of the trial at the end of
less training in the technical field than you have—and even              the process, which will be conducted very much like every
less time to learn it. Thus, it can be an advantage to have              other trial in every federal courthouse in the country.
only just gone through the arduous process of learning the                    Thus, an attorney with extensive litigation experience—
relevant minutiae. Unlike someone with extensive training                particularly if that experience includes substantial trial
in the field, you still remember how little you understood               experience—has many of the tools needed to work in IP
when you started out and the specific building blocks you                litigation. Indeed, since patent lawsuits go to trial even more
had to set down to bring yourself to your current state of               rarely than other kinds of lawsuits, the closer a case gets to
understanding. You also will be less familiar with the jargon            trial, the more an attorney coming from a non-IP litigation
associated with the field, so you will be more inclined to               background may have a significant leg up over someone who
use terminology that laypersons will understand or, at a                 has worked solely on patent cases. In short, the transition to



                                                                    13
patent litigation will require mastery of a specialized body           invention and therefore greater appreciation of its value, and
of law and a willingness to digest technical issues, but the           that infringement has been proven and thus this uncertainty
foundation of a successful career is transferable. Those who           has been removed from the negotiation. That is, the damages-
embrace and expand upon their general litigation experience            related cards that either side in a patent dispute can play is, at
can be extremely effective patent litigators.                          best, in flux.

YOU	CAN	MAKE	THE	CHANGE,	BUT	SHOULD	YOU?                               Inter	Partes	Reexamination

     Perhaps the larger question for anyone considering the                 A further brake on patent litigation is found in the
transition from general to IP litigation is whether now is             increasing popularity of so-called inter partes reexamination
a good time to do so. Recent years have seen a number of               of a patent. Congress established inter partes reexamination
changes in the law and a significant legislative effort, all of        in the American Inventors Protection Act of 1999. Before
which may render patent litigation a less lucrative field for          the Act, only the patentee was permitted to communicate
plaintiffs than it has been in recent years. And, needless to          with the PTO once a petition was filed to have the patent
say, when plaintiffs are discouraged, defense work suffers as          “reexamined” (that is, to have the PTO evaluate its continued
well. Although any budding patent litigator is wise to consider        validity in light of newly discovered prior art). This process
these changes—and the overall trend they reflect—in deciding           is referred to as ex parte reexamination. With inter partes
whether to change fields or specialize in patent law, they             reexamination, on the other hand, the party challenging
should not be overestimated either. While the changes may              the validity of the patent is entitled to submit comments on
discourage litigation by entities established for no purpose           actions of the examiner and in response to arguments made
other than to reap economic benefits from patents, they are            by the patent owner in support of the patent’s validity, and
not likely to dampen companies’ enthusiasm for enforcing               that party has the right to appeal any final finding in favor
patents as a way of capturing, or re-capturing, market share.          of the patent owner and to participate in the appeal. Thus,
Here are a few of the significant recent changes in the IP law         where a patentee in ex parte reexamination can significantly
landscape that any IP litigator should heed.                           control the message the examiner receives, the first salvo
                                                                       and subsequent commentary in inter partes reexamination
Leverage	after	eBay                                                    usually comes from a party with a vested interest in killing the
                                                                       patent. Early reports are that a sizeable majority of patents do
     With its decision in eBay v. MercExchange, the Supreme            not survive inter partes reexamination or, if they do survive,
Court rejected the presumption that a victorious patent                the patentee has been forced to amend the claims, generally
infringement plaintiff is entitled to an injunction precluding         narrowing their scope.
the defendant from using its invention. 547 U.S. 388 (2006).                Not surprisingly, this procedure has become very
This presumption, which had essentially been treated by                popular among defendants to patent litigation. Where strong
federal district courts as gospel, gave plaintiffs with patents        prior art is identified and the defendant has some measure
covering inventions that were integrated into products on              of confidence that the reexamination will be completed
the market tremendous leverage in settlement negotiations.             before the trial date, there is very little downside to filing
The risk for a defendant going to trial was not simply one of          a reexamination (although, under some circumstances, a
losing money, but of being forced to take a valuable product           defendant may be estopped from asserting in litigation prior
off the market.                                                        art that has been considered, or could have been considered,
     In eBay, the high court held that an injunction does not          in the reexamination). Moreover, because both parties to an
flow automatically from a finding of infringement and that             inter partes reexamination are bound by the final judgment
a court considering entering an injunction should take into            of the PTO regarding the prior art cited in the reexamination,
account a number of factors, including whether the plaintiff           some courts have been more willing to stay litigation involving
itself practices the patented invention, whether the plaintiff         a patent in inter partes reexamination pending the outcome
has licensed the patent to others, and whether the plaintiff           of the reexamination than they historically have been with ex
and defendant are direct competitors. In other words, “patent          parte reexamination. This eliminates the risk of an adverse
trolls” now face an uphill battle if they wish to enjoin the           judgment before the PTO completes the reexamination. Such
accused infringer and, thus, their leverage in settlement              stays have been granted by some judges in the Eastern District
discussions is seriously undercut. Cases following eBay                of Texas. Thus, inter partes reexamination is a powerful tool
reveal that courts continue to enter injunctions frequently,           for defendants that may curtail the filing of new patent
even (though less frequently) in cases in which the plaintiff          infringement lawsuits, at least where the state of the prior art
does not itself practice the patent. It also merits noting that        is not certain.
some of the discouraging effect of eBay has been undercut
by the fact that courts denying injunctions have been willing          Seagate	and	Willful	Infringement
to grant a royalty on future sales that can be larger than the
“reasonable royalty” for past infringement, apparently under               A somewhat less severe discouragement to patent
the theory that the defendant has greater experience with the          plaintiffs, but nonetheless a significant departure from prior



                                                                  14
practice, is reflected by the Federal Circuit’s decision in In re         a patentee seeking reasonable royalty damages to a royalty
Seagate Technology, 497 F.3d 1360 (Fed. Cir. 2007). Seagate               reflecting only the value of the improvement over the prior art.
addressed the standard for establishing willful infringement.             This provision is already the subject of much debate and, if
In patent infringement cases, a plaintiff is entitled to an               it becomes law, will inevitably need to be construed by the
enhancement of damages, up to treble, if it can show that                 courts. Such a change would also guarantee the livelihoods
the defendant’s infringement was “willful.” Simply stated,                of patent damages experts for years to come. Under almost
a defendant willfully infringes if it knows of the patent and             any interpretation of the provision, however, the proposal
knows that its product may infringe, but it proceeds to                   represents a dramatic downward departure from current
manufacture, use, and/or sell the product without a license               patent damages law, where the floor is a reasonable royalty,
anyway. Needless to say, the possibility of obtaining three               based on the amount the infringer would have paid for a
times the actual, proven damages for infringement presents                license to a patent that the patentee argues is necessary for
a strong incentive for plaintiffs and potent leverage in                  the infringer to do business, and where lost-profit damages
settlement negotiations.                                                  can include the profits lost on unpatented articles that are
     One way defendants can show that they did not act                    sold along with the patented product. Limiting damages to
willfully is to obtain an opinion of counsel that they do                 the actual economic value of the invention as an advance
not infringe and/or that the patent is invalid as soon as the             over prior technology would mean that reasonable royalty
defendant learns of the potential for infringement. Before                damage awards in the range routinely seen in patent lawsuits
Seagate, district courts essentially treated the failure to obtain        today would be quite rare. If this provision survives even in
an opinion of counsel as a proxy for willful infringement.                an amended form, it will place a significant brake on patent
Thus, where the defendant did not have an opinion or chose                enforcement as a revenue-generating, rather than competitive
not to produce one that it had (a choice made more difficult              (or anti-competitive), activity.
by the attendant requirement of a waiver of the attorney-                      With respect to forum selection, the version of the
client privilege), a finding of willful infringement was almost           Patent Reform Act that passed the House would limit the
a certainty and defendants would be forced to argue that                  available forums for patent lawsuits to the location in
their conduct was not so egregious as to warrant trebling                 which the defendant has its principal place of business or is
the damages. In Seagate, the Federal Circuit rejected the use             incorporated or where a substantial portion of the infringing
of opinions as a litmus test for willfulness and, instead, held           activity occurred and the defendant has a “regular and
that the willfulness inquiry turns on a number of factors                 established physical facility.” Special venue provisions allow
that demonstrate the defendant’s good faith, or lack thereof.             research institutions and individual inventors who have not
Among these factors is the closeness of the litigation and the            assigned their inventions to sue where they reside. But where
extent to which the defendant put up a good faith defense.                the plaintiff is not engaged in research or manufacturing
Thus, even where a defendant does not have an opinion                     activities (i.e., where the plaintiff is simply a patent holding
letter to produce, a finding of willfulness is now by no                  entity), it must sue where the defendant is. Now a patent
means certain. This fundamental—if common-sense—change                    infringement suit can be filed essentially anyplace in the
in the law should discourage the filing of patent lawsuits,               United States where acts of infringement occurred (that is,
particularly where the provable damages are small.                        wherever personal jurisdiction exists), and the defendant can
                                                                          challenge venue only on convenience grounds. The Patent
Patent	Reform	Legislation                                                 Reform Act would strictly limit venue to places in which the
                                                                          defendant has a substantial presence. This provision would
     Perhaps most significant of all, the United States                   likely discourage new filings by patent plaintiffs who do not
Congress is currently considering patent reforms that may                 have the wherewithal to pursue litigation in a distant forum
well take some of the wind out of the sails of patent litigation.         whose receptivity to adjudicating patent disputes is uncertain.
One version of the so-called Patent Reform Act has passed                 Although ostensibly targeted at forum shopping generally, if
the House, but does not appear to have sufficient support in              it becomes law, this provision would have a profound effect
the Senate. Nonetheless, the broad goals of reform appear to              on practice in the Eastern District of Texas.
be the same in both houses, and will ring familiar to those                    Patent litigators everywhere are watching the path of the
following “tort reform” efforts. Specifically, the proponents of          Patent Reform Act very carefully. Here in Texas, the Act could
the Patent Reform Act will endeavor, among other things, to               have a dramatic effect on patent litigators in certain parts of
put some form of cap or curb on damages in patent litigation,             the market, and, in its current incarnation, it represents a
restrict forum shopping, and curtail or eliminate business                grave threat to the preeminence of the Eastern District as a
method patents, which are seen by many as the most easily                 patent litigation forum. Of course, lobbyists on both sides of
abused form of patent protection. Importantly for readers of              each issue are working hard to pursue their clients’ interests.
this publication, many of the reforms appear directed almost              While it seems certain that some sort of reform will pass, it
exclusively to constricting the flow of cases into the Eastern            is extremely difficult to predict what final form the Act might
District of Texas.                                                        take. In any event, those seeking to make the transition—from
     With respect to limitations on damages, the version                  “PI to IP,” or simply from generalist to IP litigator—would do
currently under debate would limit the damages available to               well to monitor the debate over “patent reform” carefully.



                                                                     15
                                         R EPORT ON E QUAL A CCESS TO J USTICE
                                         by Jim Sales, Chair, Texas Access to Justice Commission




W
            ILLIAM CHRISS, THE EXECUTIVE DIRECTOR                       for pro bono hours. By removing this incentive to engage
            of the Texas Center for Legal Ethics and                    in pro bono work, these law firms are delivering a virtual
            Professionalism, recently spoke at a Litigation             death blow to the idea that their lawyers should provide legal
Section seminar. In his presentation, “The Noble Lawyer,”               service for the public good.
Chriss emphasized the need for lawyers to rehabilitate the                  Certainly, lawyers have a recognized legitimate interest in
legal profession in the public’s mind. Lawyers, he said, need           making a living through the practice of law. In the pursuit of
to connect with the public in such a way that their work is             ever more financial gain above all else, however, increasingly
perceived as meaningful to the protection of every individual’s         we are diminishing our sense of professional obligation to
most personal and fundamental rights.                                   serve those in need who cannot afford our services. The
     Words alone can never be enough to foster that                     profession, as noted by Justice Harlan Fiske Stone some
connection. Achievement of this goal cannot be accomplished             years back, “has transformed into an obsequious servant of
unless Texas attorneys truly provide legal representation to            the marketplace.” Indeed, we are effectively abandoning our
those low-income and poor Texans who need access to the                 ideal of access to justice for all.
justice system for their most basic needs but who cannot                    For the five million low-income and poor Texans
afford to pay for representation. As Chriss said, “By working           who desperately need basic legal help, high billable-hour
together … and standing for liberty and justice for all, lawyers        minimums and large bonuses present an impenetrable
will again be viewed as noble heroes.”                                                          barrier. Though the framework of our
     Chriss’s words should resonate                                                             current system may not encourage it,
deeply with all lawyers and should
move us to contemplate the reasons we                Do we                                      pro bono service is urgently needed.
                                                                                                As a litigator and long-time member

                                                  really mean
entered our profession. Did we aspire                                                           of this section, I implore section
to the legal profession to serve a noble                                                        members to embrace meaningfully
cause or simply to make more money                                                              the fundamental concept of access to
vis-à-vis other careers? Do we believe
it is important for us, as lawyers, to
stand for the right of all Texans to be
                                                “justice for all?”                              justice for all. Unless we acknowledge
                                                                                                and, more importantly, act upon this
                                                                                                ethical responsibility to serve the
afforded access to justice?                                                                     needs of the public, we cannot live up
     As Chair of the Texas Access to Justice Commission, I              to the ideals of the legal profession and we cannot expect
strongly believe every member of the legal profession must              the public to accord us the respect and reverence of our
profess a personal commitment to equal access to justice for            profession we once enjoyed.
every Texan and must act – not talk – on that conviction.                   Litigators are uniquely trained as trial advocates. As
Despite the fact that we have more than 74,000 active                   such, we possess a special ability, along with a concomitant
licensed attorneys in Texas, 77 percent of the legal needs of           obligation, to serve the needs of low-income Texans. I
low-income Texans are unmet. From this, I can draw only                 encourage you to take a pro bono case or participate in a pro
one conclusion – while dedicated to the principle of access to          bono program, if you do not already do so. These programs
justice, entirely too many lawyers are not committed to this            provide training, mentoring and even malpractice insurance
ideal in actual practice.                                               coverage for participating lawyers.
     A recent disturbing trend has led some law firms to                    As Texas lawyers, we are privileged to be members of
increase noticeably the minimum requirements for billable               the legal profession and officers of the court. The time has
hours and large bonuses for hours billed above those                    long passed for us to accord respect for and put into action
minimums. This was recently brought into stark focus by                 the responsibilities mandated by our unique and precious
the Texas Lawyer article “In the Grid: Large Firms Pay Many             privileged status. We may not have the opportunity for
Texas Associates Bigger Bonuses.” Granted, many law firms               high-profile, noble heroics. We do, however, all have the
enthusiastically continue to encourage pro bono work by                 opportunity to pursue the noble ideals that form the bedrock
allowing pro bono hours to count towards some portion of                of our profession by simply helping those who depend
expected billable hours. Alarmingly, however, more and more             on us to gain access to the justice system. To ignore that
firms seem to be reducing or de-emphasizing any allowance               responsibility is professionally unthinkable.



                                                                   16
                                                                   F EDERAL U PDATE
                                                                   by Matt Frederick




                                                                        and straightforward” duty to “apply Lawrence to the Texas
Substantive	Due	Process.                                                statute.” Id. With respect to the state’s primary justification—
Reliable Consultants, Inc. v. Earle, No. 06-51067, 2008 WL              its interest in “public morality”—the analogy to Lawrence
383034 (5th Cir. Feb. 12, 2008).                                        appeared to be straightforward, though the court’s language
                                                                        suggests rational-basis review:

     The Texas Penal Code makes it a criminal offense to                         [I]f in Lawrence public morality was an
sell, advertise, give, or lend—but not to use or possess—an                      insufficient justification for a law that
“obscene device,” which the statute defines as any device                        restricted “adult consensual intimacy
“designed or marketed as useful primarily for the stimulation                    in the home,” then public morality also
of human genital organs.” 2008 WL 383034, at *1 (quoting                         cannot serve as a rational basis for Texas’s
Tex. Penal Code § 43.21(a)(7)); see generally Tex. Penal                         statute, which also regulates private sexual
Code §§ 43.21–.23. The plaintiffs, businesses that sold such                     intimacy.
devices, filed a suit for declaratory judgment, alleging that
the prohibition on the sale of –obscene devices– violated               Id. at *5. The court invoked similar language in addressing
their substantive liberty interests under the Fourteenth                the additional interests asserted by the state, finding “no
Amendment and that the prohibition on advertising such                  rational connection between the statute and the protection
devices violated their First Amendment rights to commercial             of children” and “no rational relation” between “protecting
speech.                                                                 ‘unwilling adults’ from exposure to sexual devices” and the
     The district court granted the state’s motion to dismiss           ban on sales of sexual devices. Id.
for failure to state a claim, holding that Plaintiffs had no                 Dissenting from the substantive due process holding,
constitutional right to promote obscene devices. Relying on             Judge Barksdale criticized the majority’s refusal to identify
the Supreme Court’s decision in Lawrence v. Texas, 539 U.S.             the applicable level of scrutiny. Citing the Lawrence majority
558 (2003), the Fifth Circuit reversed the order dismissing             and Justice Scalia’s dissent, he maintained that Lawrence
the claims and held that the statute’s ban on the sale of sexual        “declined to employ a fundamental-rights analysis, choosing
devices violated the Due Process Clause of the Fourteenth               instead to apply rational-basis review.” Id. at *8 (Barksdale, J.,
Amendment. The court vacated the dismissal of the First                 dissenting). He agreed with the Eleventh Circuit’s conclusion
Amendment claim but declined to address its substance                   that Lawrence’s rejection of public morality as a legitimate
without specific facts about Plaintiffs’ advertisements.                state interest was limited to “laws that target conduct that is
     The court began by rejecting the state’s characterization          both private and non-commercial.” Id. (quoting Williams v.
of Lawrence as an equal protection case, responding that the            Morgan, 478 F.3d 1316, 1322 (11th Cir.), cert. denied, Williams
Supreme Court recognized a substantive due process right                v. King, 128 S. Ct. 77 (2007)). In the dissent’s view, the Texas
“to be free from governmental intrusion regarding ‘the most             statute regulated only public, commercial conduct—the sale
private human contact, sexual behavior.’” 2008 WL 383034                of obscene devices.
at *3. The court held that the Texas statute impermissibly
burdened this right by preventing individuals from legally
purchasing a sexual device for private use. It relied on Carey          Personal	Jurisdiction.
v. Population Services International, 431 U.S. 678 (1977),              Stroman Realty, Inc. v. Wercinski, 513 F.3d 476 (5th Cir. 2008).
and Griswold v. Connecticut, 381 U.S. 479 (1965), for the
propositions that restrictions on commercial transactions
can impermissibly burden individual rights and that sellers                 In an Ex Parte Young suit against an Arizona official,
may sue to enforce their customers’ rights. It also noted that          the Fifth Circuit held that due process did not permit a
the statute was not confined to commercial transactions, as             Texas federal court to exercise personal jurisdiction over
it prohibited individuals from “lending” or “giving” sexual             the defendant.
devices to one another. Id. at *4.                                          Stroman Realty, Inc., a timeshare resale broker, received
     The majority expressly declined to identify the standard           two cease-and-desist orders from the Commissioner of the
of review, explaining that Lawrence did not address the level           Arizona Department of Real Estate stating that Stroman–s
of scrutiny, and, as an inferior court, it owed a “mandatory            brokering of transactions involving Arizona real estate and



                                                                   17
Arizona residents constituted unlicensed resale brokering                The court noted that its previous decision in Great W. United
in violation of Arizona law. The Commissioner ordered                    Corp. v. Kidwell, 577 F.2d 1256, 1268 (5th Cir. 1978), rev’d
Stroman to cease its Arizona-related business activities and,            on other grounds sub nom. Leroy v. Great W. United Corp.,
in the second order, to cease advertising Arizona properties             443 U.S. 173 (1979), which upheld the exercise of personal
on its Internet site. After receiving the second order,                  jurisdiction over an Idaho official in a Texas company’s
Stroman filed a § 1983 lawsuit against the Commissioner in               suit challenging enforcement of an Idaho statute, had been
her official capacity in a Texas federal court.                          superseded by intervening Supreme Court decisions.
     Stroman’s complaint alleged that the Commissioner’s
attempt to enforce Arizona regulations violated the
Commerce Clause by discriminating against non-resident                   Service	of	Process,	Limitations.
real-estate brokers. The district court dismissed the case on            Nationwide Bi-Weekly Administration, Inc. v. Belo Corp., 512
grounds of claim preclusion (because the Commissioner’s                  F.3d 137 (5th Cir. 2007).
original order became a final administrative decision when
Stroman failed to respond) and Burford abstention. The
Fifth Circuit affirmed on different grounds, holding that                     Nationwide sued Belo Corporation and other
the district court lacked personal jurisdiction over the                 defendants for defamation based on a July 29, 2003 article
Commissioner.                                                            in The Dallas Morning News. Nationwide filed suit in
     The court began by expressing some doubt whether                    Ohio state court on July 28, 2004 but did not serve the
the Texas long-arm statute supported personal jurisdiction.              defendants until June 2005. Upon service, the defendants
Specifically, the court questioned whether a sister-state                removed to the Southern District of Ohio and filed a motion
official sued in his or her official capacity qualified as an            to dismiss under Rules 12(b)(2) and 12(b)(6). Before
“individual” within the meaning of the statute and whether               the court ruled on the defendants– motion to dismiss, it
the enforcement of Arizona regulations was among the                     granted Nationwide–s motion to transfer to the Northern
activities covered by the statute—namely, “doing business,”              District of Texas pursuant to 28 U.S.C . § 1406(a).
contracting, or committing a tort. See 513 F.3d at 482–83                     After the case was transferred, Belo filed a Rule
(citing Tex. Civ. PraC. & rem. Code §§ 17.041–.042). Because             12(b)(6) motion to dismiss the claims as time-barred.
the Commissioner conceded that the long-arm statute–s                    The parties agreed that the claim was governed by Texas
tort provision applied, however, the court left the question             law and therefore subject to a one-year limitations period
unanswered.                                                              commencing on the date of publication. Although the
     Assuming that the claim was covered by the long-                    complaint was filed within one year of the article’s initial
arm statute, the court held that the exercise of personal                publication, the district court held that Nationwide’s
jurisdiction over the Commissioner would violate due                     unexplained ten-month delay in serving the defendants
process. With respect to minimum contacts, the court noted               constituted a lack of diligence in service and rendered the
that the Commissioner’s contacts with Texas were limited to              suit untimely.
two cease-and-desist orders and her communications with                       On appeal, Nationwide was forced to overcome
Stroman’s attorneys. The court held that although she had                the “single publication rule,” which provides that the
“reached out” to assert Arizona’s authority, the Comissioner             limitations period begins on “the last day of the mass
had not “‘purposefully availed’ herself of the benefits of               distribution of copies of the printed matter” – such that
Texas law like someone actually ‘doing business’ in Texas.”              sales of individual copies after the publication date do not
Id. at 484. Based on her limited contacts, she “could not                trigger a new limitations period. Nationwide argued that
have reasonably anticipated being haled into federal court in            the availability of the article on the newspaper’s website
Texas to defend her enforcement of the Arizona statute.” Id.             constituted continuous publication, thus defeating the
The court rejected Stroman’s attempt to invoke the “effects              limitations defense. It relied on a single Tennessee case,
test,” holding that the Commissioner was not “expressly                  which held that a restricted-access database available
aiming” her actions at Texas. Stroman chose to do business               only to subscribing hospitals was not subject to the
in Arizona; the Commissioner was merely enforcing Arizona                single publication rule because an individual request for
law. Id. at 486.                                                         information did not result in an “aggregate publication”
     The court also held that the exercise of jurisdiction               and therefore did not create the risk of “a vast multiplicity
would be unreasonable. First, if the Commissioner were                   of lawsuits resulting from a mass publication.” 512 F.3d
forced to defend the performance of her official duties in               at 143 (quoting Swaf ford v. Memphis Individual Practice
Texas, she could be forced to do so in any state, creating a             Ass’n, No. 02A01-9612-CV-00311, 1998 WL 281935, at *8
risk of “a multiplicity of inconsistent verdicts on a significant        (Tenn. Ct. App. June 2, 1998)). Noting that “every case to
constitutional issue.” Id. Second, principles of federalism              consider the issue has applied the single publication rule
counseled against the extension of personal jurisdiction over            to publicly available Internet articles,” id. at 144, the Fifth
nonresident state officials because subjecting the validity of           Circuit made an Erie guess that the Texas Supreme Court
state laws to challenge in the courts of another state “would            would do the same.
greatly diminish the independence of the states.” Id. at 488.                 The Fifth Circuit did not decide the question whether



                                                                    18
the initial Internet posting constituted a republication. The
record established that the article was available by April 4,          Habeas	 Corpus. Hardemon v. Quarterman, No. 06-20764,
2004, several months before the date of filing and over                2008 WL 241135 (5th Cir. Jan. 30, 2008).
a year before the date of service. Because Nationwide’s
unexplained delay of over ten months was unreasonable
as a matter of Texas law, republication before the date of                  In Hardemon v. Quarterman, the Fifth Circuit held that the
filing would not have made the suit timely.                            bar on successive § 2254 habeas petitions does not require
                                                                       a petitioner to challenge multiple judgments from the same
                                                                       court in a single petition.
Voluntary	Dismissal. Hyde v. Hof fman-LaRoche, Inc., 511                    Hardemon was convicted of three counts of sexual
F.3d 506 (5th Cir. 2007).                                              assault of a child, which had been charged in three separate
                                                                       indictments but consolidated for trial. He filed separate
                                                                       petitions for state and federal post-conviction relief on each
     In Hyde v. Hof fman-LaRoche, Inc., the Fifth Circuit              count. Shortly after his federal petition challenging the first
reversed an unconditional grant of the plaintiff’s motion for          conviction was denied, he filed a second § 2254 petition
voluntary dismissal on the ground that dismissal would have            challenging his conviction on the second conviction, which
deprived the defendant of a legal defense.                             the district court dismissed sua sponte as a successive petition
     The plaintiff filed a lawsuit in Texas state court against        barred by 28 U.S.C. § 2244.
the manufacturer and distributor of the prescription drug                   On appeal, Hardemon argued that his petition was not
Accutane, alleging injuries from his use of the drug in                successive because it challenged a different judgment than his
the early 1980s. The defendants removed the case and                   previous petition. Respondent conceded that the Hardemon
moved for summary judgment based on Texas’s fifteen-                   was convicted in separate judgments, but it argued that his
year statute of repose for products liability actions. See Tex.        petition was successive nonetheless because he could have
Civ. PraC. & rem. Code § 16.012(b). Before responding to               challenged both convictions in a single petition and because
the summary judgment motion, the plaintiff had moved to                he was aware of the basis of his challenge to both convictions
dismiss his claims without prejudice under Rule 41(a)(2).              at the time he filed his first petition.
In his response to the motion for summary judgment, he                      The Fifth Circuit reversed. As did the district court, it
conceded that he had not taken Accutane for nearly twenty              relied on former Rule 2(d) of the Rules Governing Section 2254
years, but he argued that the statute of repose did not bar            Cases in the United States District Courts,1 which provides:
his claim.
     At some point, he filed a similar lawsuit against the                       A petition shall be limited to the assertion
defendants in a New Jersey state court. The defendants                           of a claim for relief against the judgment or
argued that dismissal would deprive them of a valid defense                      judgments of a single state court . . . . If a
because they could not invoke the Texas statute of repose                        petitioner desires to attack the validity of
in the New Jersey lawsuit. They cited a recent New Jersey                        the judgments of two or more state courts
Supreme Court case, which refused to apply a Georgia statute                     under which he is in custody . . . he shall do
of repose in a wrongful-death action governed by Georgia                         so by separate petitions.
substantive law. The district court nevertheless granted
Plaintiff’s motion for voluntary dismissal without prejudice,              The Advisory Committee Notes explain that Rule 2(d)
imposing no conditions.                                                “permits, but does not require, an attack in a single petition
     The Fifth Circuit reversed and remanded. It explained             on judgments based upon separate indictments or on separate
that although voluntary dismissal is reviewed for abuse                counts even though sentences were imposed on separate
of discretion, reversal may be proper if dismissal would               days by the same court.” Id. at *2. The court found the
cause substantial prejudice beyond the threat of successive            timing of Hardemon’s convictions to be immaterial because
litigation. The court found that the district court’s order            they resulted in separate judgments. Id. at *3 n.3. Following
would substantially prejudice the defendants by depriving              the Second Circuit, the court held that “to be considered
them of the defense provided by the Texas statute of repose.           ‘successive,’ a prisoner’s second petition must, in a broad
It held that the defense would be available in the district            sense, represent a second attack by federal habeas petition
court, even if New Jersey law governed the substantive                 on the same conviction.” Id. at *3 (quoting Vasquez v. Parrott,
claims, because Texas law required personal injury claims              318 F.3d 387, 390 (2d Cir. 2003)). Although Hardemon
based on out-of-state conduct to satisfy Texas statutes of             could have challenged both convictions in a single petition,
limitation and repose. See 511 F.3d at 513 (citing Tex. Civ.           he was not required to do so; therefore, his petition was not
PraC. & rem. Code § 71.03(a)(2)). Because the defense                  “successive.”
appeared to be unavailable to Defendants in the New
Jersey lawsuit, the court found that unconditional dismissal           1
                                                                          Because the Anti-Terrorism and Effective Death Penalty Act (“AEDPA”)
without prejudice would effectively strip the defendants of            did not define “second or successive,” the court relied on pre-AEDPA
                                                                       principles to determine the status of Hardemon’s petition. Respondent
a defense.                                                             conceded that former Rule 2(d) applied. See id *2.



                                                                  19
                                  L IVING THE R ULES: T HE H ONORABLE J UDGE S IM L AKE
                                  United States District Court Judge for the Southern District of Texas, Houston Division
                                  by Gretchen Sween



        “So act that your principle of action might safely be made a universal law of nature.”
                                                                      — Immanuel Kant, Groundwork of the Metaphysics of Morals (1785)




I
    F ONE WERE TO COMPARE JUDGE LAKE to a                                          4:00 PM    Pours another half-cup of coffee and, after a
    philosopher, the obvious choice would be the 18th                                         particularly good day, partakes of a modest
    century Prussian, Immanuel Kant. Kant, best known                                         afternoon indulgence: a Snickers bar, a small slice
for formulating the concept of the “categorical imperative,”1                                 of one of secretary Bea Adams’ heavenly cakes,
lived such an orderly life that the folks in his hometown of                                  or an almond cookie smuggled back from the
Königsberg reportedly set their clocks by his daily walks.                                    Chinese restaurant; continues working
Judge Lake, like Kant, is a man of astonishingly reliable habits
of the sort that Federal Rule of Evidence 406 was designed to                      5:00 PM    Adjourns for the day
encompass. A typical non-trial work day looks like this:
                                                                                        On those days when Judge Lake has no courtroom
7:00 AM      Reports to chambers, makes the first of several                       proceedings, he has been known to roam the halls restlessly
             pots of coffee, promptly gets to work on opinions                     in search of more work, e.g., inquiring of his clerks as to the
             and preparing for upcoming hearings and                               state of drafts to review or rechecking filing deadlines to see if
             conferences                                                           a reply brief is overdue such that he may proceed with ruling
                                                                                   on a pending motion. If his crack secretary of the past couple
10:00 AM     Takes a break to work out in the marshals’ gym in                     of decades happens to be away from her desk for a moment
             the courthouse basement                                               during one of his restless moods and the telephone rings,
                                                                                   he will answer: “Judge Lake’s Chambers. May I help you?”
11:15 AM     Returns to work                                                       In desperate situations, he will even involve himself in the
                                                                                   status of various maintenance projects within the building.
12:30 PM     Retrieves a book and a sack lunch brought from                             For rare cases (fewer than 10 in the more than 20 years
             home and reads at desk while eating—except on                         he has been on the bench) he reserves a special slot on Friday
             Fridays when he meets his law clerks and interns                      afternoon for what he calls his “Bad-Boy Docket” (and what
             for lunch at a Chinese restaurant on the east side                    his career law clerk, Jane Cahill, terms with due sarcasm the
             of downtown Houston (location has held steady                         “Happy Hour Docket” ). Assignment to the Bad-Boy Docket
             for nearly a decade)                                                  is a dubious honor reserved for counsel who demonstrate a
                                                                                   chronic inability to resolve discovery disputes in a civilized
1:00 PM      Commences final preparations for the afternoon’s                      manner, who routinely submit disingenuous certificates of
             hearings—usually scheduling criminal hearings                         conference, and who file, without seeking leave, motions on
             for Thursday afternoons and civil conferences                         every conceivable issue—which the loser invariably follows up
             and hearing for Friday afternoon                                      with motions for reconsideration. As Judge Lake explains,
                                                                                   “This is for repeat offenders who have stopped behaving like
2:00 PM      Conducts scheduling conferences and other Rule                        lawyers.”
             16 pretrial conferences in civil cases or criminal                         The “Bad-Boy Docket” is an example of “progressive
             rearraignments, sentencing, and hearings                              punishment,” a tool Judge Lake learned about during his
                                                                                   tenure at Texas A & M and then employed while prosecuting
3:00 PM      Conducts scheduling conferences and other Rule                        cases for the U.S. Army. It is a technique, perhaps honed
             16 pretrial conferences in civil cases                                while fathering two sons, whereby he ups the ante until the
                                                                                   recalcitrant actors finally realize the error of their ways. He
                                                                                   hates having to resort to it, however. “Lawyers are officers of
1
  Kant’s “categorical imperatives” are principles that he deemed inherently        the court who have an obligation to make a good faith effort
correct and that he believed all rational beings must obey as a matter of          to resolve discovery disputes and minor procedural disputes
moral necessity, regardless of our will or desires.



                                                                              20
“     Thirty years ago, trial lawyers actually tried cases...
      Now I am told that ‘litigators’
      can become partners without
      ever having tried a lawsuit
      on their own.
                                     ”
among themselves. You know, during the Gulf Oil pension                 related to a case—and some depositions may last for several
class action, the most complicated civil case I’ve tried in my          days. And we now see thousands or even millions of pages of
20 years on the bench, I was asked to adjudicate only one               documents being demanded, copied, and reviewed.”
discovery dispute. And that dispute involved a legal issue—                  Litigators certainly need to take a hard look at what they
about whether certain documents were privileged—which the               are doing to make discovery “an end in itself”—an end that
lawyers couldn’t resolve on their own. The case culminated              does not usually serve the clients’ best interests. Moreover, to
in a bench trial that lasted over a month. The stakes were              avoid the onus of being assigned to the “Bad-Boy Docket”—or
significant. But because Lee Godfrey for the plaintiff class            simply to make one’s federal court practice more successful—
and Bob Malinak for the defendants were such excellent                  lawyers would be well-advised to avoid some of Judge Lake’s
lawyers, they recognized that they could reach at least as              pet peeves, such as:
good a resolution of most disputes without my involvement,                   • appearing at status conferences and hearings
which served everyone’s interests best.”                                        without being familiar with the facts or law
     Judge Lake is among the ever-growing contingent of                         relevant to the case;2
judges openly expressing concern that discovery has become                   • filing 12(b)(6) motions that rely on facts outside
“an end in itself, not merely a means of gathering relevant                     of the complaint;
information for trial.”                                                      • filing dispositive motions overloaded with “make-
     The reasons for this unfortunate trend?                                    weight” arguments that obscure any legitimate
     “One possible reason is that one party is using the                        argument that may lie buried within the motion;
expense or delay of oppressive discovery as a tactical tool                  • failing to submit proposed orders, particularly
to force a favorable settlement or dismissal of the lawsuit.                    where requests for relief arise from discovery or
Additionally, I think there may be larger, systemic reasons                     procedural motions;
for this change. I have no empirical information to support                  • filing papers that refer to attachments that were
these conclusions, but I suspect that a number of factors                       not in fact attached;
are contributing to the overuse and abuse of discovery. For                  • failing to familiarize oneself with the Court’s
instance, 30 years ago, trial lawyers actually tried cases—and                  standard scheduling order, docket control order,
thus knew what discovery was really going to be relevant and                    and local rules of procedure; and
useful. Back then, the people who made partner in a firm’s                   • not including a meaningful certificate of
litigation section had generally tried 30 to 50 cases, if not                   conference that demonstrates the motion was
more; now I am told that ‘litigators’ can become partners                       discussed with opposing counsel before it was
without ever having tried a lawsuit on their own. A second                      filed, yet agreement on the relief requested could
reason for the change may be tied to technology and law firm                    not be reached.
organization. For instance, in the old days, if you wanted to                In short, Judge Lake is a big believer in competence,
review an opposing party’s documents, a lawyer went to the              decorum, and playing by the rules. With him at the helm, there
office, read the documents, and noted which ones needed to              will be strict adherence to the local and federal rules, little
be copied. Now, it is common for each side to hire a copying            tolerance for inadequate preparation, and no waiting around
firm who goes to the other side’s offices and duplicates                for proceedings to commence. In fact, he has a propensity
numerous boxes of documents perhaps without any initial                 to start court proceedings a few minutes early. This is not
relevance cut. Of course, in fairness, many cases are now               only because Judge Lake runs a tight ship. Although cerebral,
much more complicated than the routine case of 25 years                 introspective, taciturn, and disinclined “to chit-chat,” he
ago. But I suspect that the fear of attorney malpractice actions
                                                                        2
may cause both over-broad discovery requests and over-                     Judge Lake prepares for each conference and hearing and usually has
broad claims of privilege and confidentiality. So, now we have          formed some preliminary ideas about the case and may have questions.
                                                                        Old-fashioned fellow that he is, he expects that the lawyers should also be
depositions of every person with any potential knowledge                familiar with their case and able to answer those questions.



                                                                   21
genuinely enjoys the public business associated with his                  were willing to give an extra year to avoid being handed a
vocation, if not the penumbra of publicity that occasionally              rifle and sent directly to Vietnam. “The ostensible reason for
arises from his work.                                                     the four-year commitment was because an attorney needed
     What does he enjoy most about sitting on the bench?                  at least two years’ training before he could be expected to try
     “Talking common sense to lawyers about ways to                       cases.” Undaunted, Judge Lake called the government’s bluff.
help the parties resolve their disputes fairly,” he answers               He withdrew from the JAG program and notified the regular
without hesitation. He recalls a recent example when he was               Army that he was ready to go on active duty and fulfill his
instrumental in nudging parties toward a reasonable, extra-               two-year term in Military Intelligence instead. While waiting
judicial resolution: an employment dispute that had been                  to be called up, Judge Lake worked at Fulbright & Jaworski
filed by a hospital employee who simply did not understand                in Houston for almost a year.
why he had been fired. “All the man really wanted was an                        As part of his active military service, Judge Lake was
adequate explanation and about $5,000. So before I allowed                sent first to armor officers school in Fort Knox and then to
the parties to engage in expensive, time-consuming discovery,             Fort Bliss in El Paso to study Vietnamese. Because studying
I referred the parties to Magistrate Judge Nancy Johnson                  a complex, tonal language all day was not enough, he also
who, after two settlement conferences, achieved a very fair               took a night job in the law office of a state senator, a solo
settlement.” Indeed, Judge Lake frequently questions lawyers              practitioner who “took whatever came in the door.” This
at the initial pretrial conference to determine what the case             experience, which the Judge describes as one of the most
is really about and how much discovery is needed to reach a               satisfying of his life, was a lively mix of uncontested divorces,
resolution, either through settlement or trial.                           defending charges of liquor code violations, writing letters
     Although Judge Lake prefers jury trials, especially                  to the boss’s constituents, investigating copyright law, and
in tort and employment discrimination case where the                      making frequent court appearances. The job description
jury’s collective ability to judge witnesses’ credibility is so           even included picking up the senator’s laundry on occasion.
important, he also enjoys bench trials, in which he always                This invigorating, learn-as-you-go approach to lawyering was
takes an active part—even jumping in to examine witnesses                 a far cry from the professional life he had already sampled at
himself when necessary. “I conduct bench trials more like                 Fulbright & Jaworski, where one of his initial assignments
a seminar,” he admits. In these seminars, he is both student              culminated in a 91-page memo on the proper method for
and professor. But he never forgets that district judges, of              allocating “demand costs” in a natural gas rate hearing.
necessity, rely on attorneys to provide them with the relevant                  After the language training and intelligence officers’
facts and with arguments as to how the law is to be applied.              school, Judge Lake shipped out to Vietnam in March of 1971.
“The real challenge for a district judge is to reach a fair result        When he arrived, the Army suddenly decided to make him
after you have identified the relevant law.”                              a prosecutor. Quite literally, he learned how to be a trial
     Had the circumstances of his childhood been different,               lawyer in a war zone, studying the Uniform Code of Military
perhaps Judge Lake would have been a scholar, an ascetic, a               Procedure and its Rules of Evidence and prosecuting cases
preacher, or an efficiency engineer. Instead, he chose a career           within his infantry brigade. “A very common offense was
in the law.                                                               ‘field refusal’—which is how I learned the importance of
     Why?                                                                 knowing each element of an offense. You had to be sure to
     “My father was a salesman. A very practical man. I                   prove that the soldier who refused to obey the order knew that
received the message that, in terms of college, there was really          the person who gave the order was an officer or an NCO. In
only one option: attending Texas A & M”—which he did. In                  my first case, I forgot to prove this element, and the military
1966, he became a “distinguished military graduate.” After                judge dismissed what should have been an air-tight case. It
graduating, he deferred his active duty military obligation               only took one case to learn that lesson.”
while he attended law school. Considering the times, this                       During his tour of duty, Judge Lake and his best friend
was a wise plan—even if it meant that a loyal Aggie had to                and roommate ended up setting up a make-shift “law office”
grace the halls of UT to accomplish that goal.                            near DaNang: his roommate was the defense attorney, Judge
     Although the Vietnam War was still raging when he                    Lake the prosecutor. Judge Lake’s side of the practice involved
graduated from law school, Judge Lake was eager to complete               advising commanders and prosecuting the meritorious cases
his military service so that he could start earning a paycheck            they brought to him. Meanwhile, his law “partner” vigorously
since his “bank account and law school were scheduled to                  defended clients against his prosecutor-roommate and also
end at about the same time.” At A & M he had received an                  pursued some military claims on behalf of disgruntled soldiers.
Army reserve commission in Military Intelligence, but also a              The two young attorneys shared a single law clerk—who had
promise of a regular Army commission in the Judge Advocate                exaggerated about his typing skills in order to obtain this
Guards Corps if he graduated from law school and passed                   sinecure post. “We admired the fact that he was smart enough
the bar. He was rather taken aback, however, when, near the               to hire a Vietnamese girl to help him out—someone who could
end of law school, the Army tried to change the terms of the              actually type and speak both languages.” He ruminates wistfully,
original agreement—announcing that his pledge to perform                  “Together, we could dispose of a case in just 40 days.”
three years of active duty as part of the JAG program was now                   After completing his service, he returned to private
a four-year obligation because so many qualified applicants               practice in Houston. As opposed to the contemporary trend,



                                                                     22
Judge Lake worked for a single law firm, Fulbright & Jaworski,        by a core commitment to zealous, subjective advocacy. He is
throughout his 15+ year stint as a litigator. Moreover, the           also quick to note, however, that “To be a good judge requires
offer from Fulbright resulted from the lone firm interview            good lawyers.”
that he had pursued during law school. He displayed similar                Ultimately, how does he judge good lawyers?
efficiency and steadfastness when it came to picking a spouse.             “I imagine most judges use the same criteria. First, we
During the brief interval between law school and active duty,         appreciate candor. It is not a district judge’s job to make the
he met his one-and-only wife, Carol. For their first date, Judge      law, but to apply it. Therefore, we appreciate lawyers who
Lake took her to a Texas Law Review reunion in hopes of               identify controlling legal precedent accurately. If conflicting
impressing his friends; a subsequent date entailed listening          authorities exist, we expect lawyers to cite them and
to an A & M football game on the radio. They married during           distinguish them. The Court may doubt your credibility if
a quick break between his various                                                             it finds contrary authority in your
officer training programs. Clearly, for                                                       opponent’s response or in undertaking
Carol too it must have been love at first
sight. . . .
                                                 “       There are
                                                         very few ways
                                                                                              its own research. And keep in mind
                                                                                              that judges probably get a dozen or
     When asked about his early                                                               so motions every week. Therefore,
experiences as a litigator and how
                                                         to earn a living                     we welcome brevity. A 5-page motion
the practice of law has evolved, he                      where you can get up                 is going to be taken up before a 25-
explains, “During the first ten years, I                 every morning                        page motion. It’s just human nature.
was in court all of the time defending                                                        Therefore, keeping motions short,
worker’s comp cases, boundary                            knowing that                         clear, and direct speeds up the
disputes, personal injury suits. There
was not a lot of discovery in those cases,            your	job                                process and improves the odds that a
                                                                                              lawyer’s motions will be granted. We
you took the plaintiff’s deposition                      is to try to do                      also appreciate courtesy. Courteous
and maybe that of one other witness.
Later, I switched over to an energy
and commercial practice, which was
                                                             ”
                                                         the right thing.                     lawyers tend to get much better results
                                                                                              for their clients—not to mention the
                                                                                              fact that they tend to find the practice
a national, federal court practice. Mostly, I defended clients        of law more rewarding and enjoyable than those prone to be
against the federal government. It was during this time that I        discourteous. And, finally, we respect lawyers who take their
decided that I wanted to become a federal judge.”                     cases more seriously than they take themselves.”
     Was there someone who provided particular inspiration?                Judge Lake can be a serious, even somber, figure on the
     “I really respected Murray Schwartz, a federal judge in          bench. Thus, some people appearing before him may be slow
Delaware. I had three different cases before him; I lost all three—   to register his razor-sharp wit. But he is definitely aware of
but I admired his preparation, thoroughness, and demeanor.            the danger of taking himself too seriously and is wryly self-
When I was considering applying for a federal judgeship, I            deprecating at most every turn.Just ask him about the lessons
gave him a call and asked for some advice. He said, ‘Sim, it’s        learned during a time when, as a young associate, he stood
the greatest job in the world. You get paid for doing what’s          day after day at a bus stop on Memorial Drive in Houston
right.’ That really impressed me because there are very few           during a bus strike just hoping someone would take pity on
ways to earn a living where you can get up every morning              him and stop to offer a ride to the courthouse where he was
knowing that your job is to try to do the right thing.”               busy being trounced at trial. . . .
     How does he distinguish his experience inhabiting the two             Can he identify an experience where he felt particularly
distinct roles of advocate and arbiter?                               aware of what it means to be a federal judge?
     “I miss the friendships associated with practicing law—               “Our federal judicial system, which provides Article
the collegiality that arises from working as a team on a legal        III judges with life tenure, protects judges from political
matter. I also enjoyed trying cases, but not the increasingly         recriminations as a result of their decisions and thereby
burdensome discovery that was required and the lack of                fosters doing what’s right. When I think of a case that made
control that a trial lawyer has over his schedule or the sting of     me especially aware and proud of that system, what springs
losing, which always hurt more than the thrill of winning.”           to mind immediately is the Bible case we tried about five
     Yet, Judge Lake does not harbor any disdain for the              years ago.”
profession he pursued with great success for over 15 years.                “The Bible case” to which he refers was Staley v. Harris
He may just be more suited to the position he occupies today.         County, et al., a first-amendment action, brought by a
He is a bit of a Platonist—a deeply religious person who              Houston attorney and member of the local ACLU against the
believes in outlandish notions like absolute Truth and moral          county, urging the removal of a King James Bible display in a
Goodness. Further, Judge Lake recognizes that “doing what’s           monument that had been maintained near the front entrance
right” as an official arbiter of justice is fundamentally different   to the county civil courthouse for several decades.
from “doing what’s right” on behalf of an interested client                “I would describe myself as a religious person, a believer.
mired in a commercial dispute. In the latter instance, one’s          I read the Bible every day. I have studied for years and have
ethical mandate, though not wholly situational, is defined            also taught the Bible. It is a sustaining source of inspiration.”



                                                                 23
Indeed, he serves as a lay minister for his church. “Yet, I
also believe that the law must control a judge’s decisions.
That principle is not difficult to grasp when one’s personal
opinion and the law align, but when the two may conflict,                                          L ITIGATION C ALENDAR
a judge must of course follow the law. While some people
were not happy with my conclusion that the monument on                                             by Tracy Nuckols
the courthouse grounds violated the Establishment Clause
of the Constitution, I was comfortable with the decision.
I understand why the monument, a decidedly Christian                   APRIL
tribute, could offend. And I came to this understanding by
studying the governing Establishment Clause jurisprudence              Dallas	Minority	Attorney	Program
with care, and then letting the constitutional directives, as          Dallas April 11 Belo Mansion
interpreted by the Supreme Court, guide the opinion that               Sponsored by the Dallas Bar Association
was ultimately drafted. We must have gone through 20 drafts
on the road to that particular ruling,” he recalls.                    ABA	Young	Lawyer	Division	Spring	Conference
     The Fifth Circuit panel that later reviewed Judge Lake’s          Washington, D.C. April 16-19 Hyatt Regency on Capitol Hill
decision ultimately agreed in a two-to-one decision with his
application of the law in the Bible case. The county then              Anatomy	of	a	Civil	Trial
pursued, and was granted, a request for a rehearing of the             San Antonio April 17 The Bright Shawl
case en banc. Subsequently, the controversial courthouse               Sponsored by the Bexar County Bar Association
monument was removed as part of a comprehensive
remodeling project.                                                    Dallas	Bar	Association/
     The net result?                                                   Payne	Mitchell	Law	Group	Pro	Bono	Golf	Classic
     “The Fifth Circuit gave us a comprehensive survey on              Dallas April 21 Golf Club of Dallas
mootness law,” he notes with a smile. But the important take-
away from the Bible case for the Judge was the challenge of            Bench	Bar	2008
working through a conflict posed by two of his most cherished          San Antonio April 18-19 Radisson Hill Country Resort
convictions and experiencing the vitality of the rule of law in        Sponsored by the Austin Bar Association
the process.
     Not long after the Bible case, Judge Lake was called upon         Bench	Bar	XV
to devote considerable time from 2004 through 2006 to the              Boerne April 24-27 Taptio Spring Conference Center
Enron criminal action that the government had brought                  http://www.tarrantbar.org
against former officers Kenneth Lay, Jeff Skilling, and Richard
Causey. During the lengthy trial, the Judge’s no-nonsense              Securities	Customer	Arbitration
style impressed observers and participants of every stripe.            Austin April 25 Texas Law Center
Afterwards, his presence on the judicial lecture circuit was           Sponsored by the State Bar ADR Section
in high demand. Judge Lake has provided various attorney
organizations with tips culled directly from the behemoth              2008	Mid-Year	Conference
Enron case. And he even gave the commencement address at               Austin April 30-May 2 Driskill Hotel
his beloved alma mater last spring. But he has hardly rested           Sponsored by the Texas Trial Lawyers Association
on, or reveled in, his “15 minutes” in the national spotlight.
Instead, he quickly moved on to other important business,              MAY
such as helping to formulate “Rules of Practice for Patent
Cases in the Southern District of Texas,” which took effect            Law	Day	Luncheon
on January 1, 2008. In sum, even if he has to spend a certain          Dallas May 1 Belo Mansion
amount of time roaming the hallways in the Bob Casey
United States Courthouse to drum up enough work to keep                Law	Day	Awards	Dinner
him fully occupied, Judge Lake will happily spend another              Fort Worth May 1 Aston Depot
20 years getting up early each morning to “do what’s right”
for a living.                                                          JUNE

Special thanks to Judge Lake and his chambers for the time             Issues	Facing	Today’s	Trial	Lawyers
and supporting materials that made this article possible. Quite        Santa Fe June 19-20 Eldorado Hotel
characteristically, the underlying interview was accommodated          Sponsored by the Texas chapter of the American Board of
efficiently between the morning’s courthouse business and the          Trial Advocates (TEX-ABOTA)
holiday reunion luncheon that the Judge hosts for his past,            h t t p : / / w w w. a b o t a . o r g / c h a p t e r s / d e f a u l t .
present, and future law clerks and staff each year.                    asp?s tatechaptername=TEX-ABOTA



                                                                  24
                              T IPS FROM
                         T RIAL L AWYERS                                   Ervin A. Apffel, Jr.
                                                                           Shareholder	and	Founding	Partner
                                                                           McLeod,	Alexander,	Powel	&	Apffel,	P.C.	
                            by John McFarland                              Galveston,	Texas




E
         RVIN A. APFFEL, JR. has practiced law in Galveston                lawyer says in front of the jury. Mr. Apffel reports the follow-
         for fifty years, having earned his J.D. from St. Mary’s           ing conversation he had some years back with a court report-
         University School of Law in 1957. In his early career,            er regarding Mr. Apffel’s habit of wearing his old suits (what
he served as a felony prosecutor in the District Attorney’s of-            he called his “trial suits”) to trial instead of his newer ones.
fice in Galveston County and then as the first full-time City              Mr. Apffel replied, “well, because they are my lucky suits,”
Attorney for the City of Galveston. In December 1964, Mr.                  which, as any trial lawyer will tell you, is a good and valid
Apffel, Boo McLeod, Robert Alexander, and Ben Powel agreed                 reason. The court reporter told him, however, that he wished
to partner together in the firm now known as McLeod, Alex-                 Mr. Apffel could have been in the elevator the other day when
ander, Powel & Apffel, P.C.                                                that question came up with a juror, who replied “Oh, you
     Mr. Apffel has tried hundreds of lawsuits, primarily rep-             know lawyers. They’re always trying to be something they are
resenting defendants in personal injury litigation but cover-              not.” The lesson that Mr. Apffel draws from this is a familiar
ing the gamut of the practice in his fifty years of practice.              one: “you cannot be successful as a trial lawyer and be any-
Mr. Apffel has been selected by Trial Lawyers in the State of              thing other than yourself.” And he no longer wears his lucky
Texas to become a member of the American Board of Trial                    suits to trial.
Advocates. He has vast experience in the trial of insurance                      Mr. Apffel believes that cases are often won or lost in
defense, real estate litigation, asbestos litigation, employ-              opening statements. “Or earlier,” he notes. “I instruct my cli-
ment law, medical malpractice, product liability and insur-                ent that we are ‘in trial’ when we get out of the car at the
ance-coverage litigation for both insureds and insurers. Mr.               courthouse. . . We want to walk into the courthouse with the
Apffel is also a certified mediator. He has been married to                white hat on, and we want to walk out of the courthouse with
Chris Apffel for fifty-three years and has six children and                the white hat on.” An effective opening statement, “where you
thirteen grandchildren upon the date of publication.                       tell the jury what you plan to prove and how you will prove it”
     On Mr. Apffel’s desk sits a letter holder with a three-               can be the key to getting the jury to view the evidence from
word motto in big, bronze letters: “Do It Now.” “Don’t put                 your side’s perspective as the evidence comes in, instead of
off ‘til tomorrow what you can do today,” he advises. “When                after the closing arguments and reading of the charge.
tomorrow’s problem comes up, then you’ll have two.” This is                      He agrees that voir dire is probably the hardest thing
important advice with regard to anything in the practice of                that a trial lawyer has to do. “You used to be able to tell the
law, but particularly as to returning phone calls. “I’ve never             panel what your case was about and then ask them how they
understood counsel who don’t return phone calls.” He does                  felt about it. Now, you really can’t do that, so you have to get
believe that ‘the Bar has gotten friendlier” over the past sev-            them talking. That’s the most important thing in voir dire,
eral years, and that communication with opposing counsel                   and that’s the hardest thing to do.”
has been less confrontational. “You can get along and ac-                        The final tip that Mr. Apffel has for any lawyer is to look
complish the same result,” Mr. Apffel observes. Butting heads              up every now and then and try to see the bigger picture in
unnecessarily with opposing counsel costs more money, too,                 your cases. “I was local counsel in a case where a pile of
he notes, but is not more effective.                                       gypsum had been dumped on a piece of property. The gyp-
     If he could give one tip to a young trial lawyer, he’d give           sum was emitting radon and the property owner wanted
it in one word: Preparation. And preparation is the key to                 the dumping party to move it off of the property.” The case
what he views as the most critical thing for a trial lawyer:               was straightforward enough but Mr. Apffel wanted to know
Credibility. “It’s the only thing, at the end of the day,” he says.        “when are you going to prove what the effects of radon are?”
“Never tell a jury anything you cannot prove. You will hear                Even though it was not a dispositive issue in the case, it was
about it from opposing counsel if you do.” In his view, “jurors            what any juror would want to know, and it was the “why”
are constantly watching the lawyer, and no one likes lawyers.              behind the request to move the pile of gypsum off of the
The jurors are suspect of what’s going on. The jury has to                 property. “You have to give the jury a reason why the gypsum
become comfortable with you, and have confidence in what                   pile should be moved.”
you are saying and doing.” And the key to that is preparation.
“Nothing builds credibility like reciting the facts of what you                Sincere thanks to Ervin A. Apffel, Jr., for providing his
are going to prove, a complete command without referring to                views to the State Bar of Texas.
your notes.”
     A lawyer’s credibility is judged by more than what the



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