IPWatchdog.com is in the process of transitioning to a newer version of our website. Please be patient with us while we work out all the kinks.

Chief Justice Orders Review of Venue, Case Assignment for Patent Cases in Western District of Texas

“While Chief Justice Roberts did not mention venue or case assignment in the Western District of Texas by name, that is what he is concerned about, which is clear from his reference to Senators expressing concern— a concern that has been expressed specific to patent case assignment in the Western District of Texas.”

Chief Justice John Roberts

Chief Justice John G. Roberts Jr. swears in President Joe Biden. (DOD Photo by Navy Petty Officer 1st Class Carlos M. Vazquez II). Creative Commons 2.0 Generic.

On December 31, 2021, Chief Justice John Roberts, of the United States Supreme Court, issued the annual Year End Report on the Federal Judiciary for 2021. In this report the Chief Justice highlighted three specific areas where the Judicial Conference will be taking action to study issues during 2022. Not surprisingly, the first was the matter of ethics and financial disclosures uncovered by the investigative reporting of the Wall Street Journal. The second is “the continuing concern over inappropriate behavior in the judicial workplace.” Finally, the third item relates to patent litigation and the assignment of cases in the Western District of Texas.

With respect to patent litigation, Chief Justice Roberts wrote:

The third agenda topic I would like to highlight is an arcane but important matter of judicial administration: judicial assignment and venue for patent cases in federal trial court. Senators from both sides of the aisle have expressed concern that case assignment procedures allowing the party filing a case to select a division of a district court might, in effect, enable the plaintiff to select a particular judge to hear a case. Two important and sometimes competing values are at issue. First, the Judicial Conference has long supported the random assignment of cases and fostered the role of district judges as generalists capable of handling the full range of legal issues. But the Conference is also mindful that Congress has intentionally shaped the lower courts into districts and divisions codified by law so that litigants are served by federal judges tied to their communities. Reconciling these values is important to public confidence in the courts, and I have asked the Director of the Administrative Office, who serves as Secretary of the Judicial Conference, to put the issue before the Conference. The Committee on Court Administration and Case Management is reviewing this matter and will report back to the full Conference. This issue of judicial administration provides another good example of a matter that self-governing bodies of judges from the front lines are in the best position to study and solve—and to work in partnership with Congress in the event change in the law is necessary.

While Chief Justice Roberts did not mention venue or case assignment in the Western District of Texas by name, that is what he is concerned about, which is clear from his reference to Senators expressing concern— a concern that has been expressed specific to patent case assignment in the Western District of Texas. When a patent owner files a patent infringement lawsuit in the Western District of Texas the case will be assigned to Judge Alan Albright with virtual certainty.

What exactly is the solution? Re-write hundreds of years of civil procedure— as the Federal Circuit is trying to do with mandamus practice aimed at Judge Albright— and deny plaintiffs the right to choose the forum where they can obtain personal jurisdiction and where the parties have sufficient ties to the community? While the rhetoric about the Eastern District of Texas being some back-water location in the middle of nowhere with tumbleweeds blowing down the main street was never true, the Western District of Texas includes both Austin, Texas and San Antonio, Texas. So, to say that multinational high-tech corporations do not have sufficient ties for purposes of venue is illogical, irrational and clearly erroneous.

What else can be done? Force the Western District to randomly assign patent cases to judges who don’t want to handle them when you have an experience patent litigator available to handle the cases? That would seem on its face to be a severe misallocation of resources and almost malfeasance. It would be a severe and inexcusable misuse of resources for any entity, private or public, to have someone who is an expert on a topic and then sideline that person and have them work on areas outside their expertise while assigning that work to others who are not similarly accomplished. No successful business identifies employees that are good at X and then tells them they are doing too much X. What a successful business would do is have that employee do as much X as possible, and train others to do X just like they do.

And what exactly is wrong with plaintiffs filing in a court where a judge has experience handling the precise type of action they are filing? Filing where judges have significant expertise precisely happens every day in the District of Delaware without anyone raising an eyebrow? And those multinational corporations that are sued in Delaware could be sued in other courts. So, if the “arcane but important matter of judicial administration” needs to be reviewed it should be reviewed for all courts that have subject matter expertise.

Regardless of what happens, the one thing we can be sure of is that the ultimate outcome will be to the disadvantage of patent owners who are plaintiffs. There won’t be any concern with defendants trying to transfer cases to courts and judges they know to be sympathetic to infringers and virtually certain to invalidate the patents. The concern will only be with patent owners filing in a court where they actually stand a fair chance of being heard and making it to trial.

Share

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Join the Discussion

16 comments so far. Add my comment.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    January 3, 2022 11:58 am

    What exactly is the solution?… [D]eny plaintiffs the right to choose the forum…?

    We have long run our judicial system on the expectation that the plaintiff has the privilege of choosing the forum, not the judge. The palpable impropriety of the plaintiff choosing the judge is so straightforwardly obvious that I will not belabor the point in explaining it.

    The problem in the WD Tex is that it has come to pass that the distribution of judges throughout the district are such that the plaintiff can effectively choose a judge. This should not be the case, and the Chief Justice is right to suggest that a correction is necessary.

    Random assignment of judges to cases within a district is the most straightforward and administratively simple solution to this problem. That would preserve the plaintiff’s privilege of choosing the forum while ending the unseemly ability to choose the judge.

  • [Avatar for American Cowboy]
    American Cowboy
    January 3, 2022 12:03 pm

    Talk about activist Federal judges! CJ Roberts, look in the mirror.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    January 3, 2022 12:44 pm

    Filing where judges have significant expertise precisely happens every day in the District of Delaware without anyone raising an eyebrow?

    Right, because the D Del does not, in effect, make it possible for the plaintiff to select a judge. That is the objectionable aspect here. Talking about “experience” is talking past the point at issue.

  • [Avatar for Paul Cole]
    Paul Cole
    January 3, 2022 01:02 pm

    In the UK, IP barristers will almost invariably have obtained a scientific qualification before starting their legal training and both their clients and the courts benefit from that training. Judges in IP matters are selected from members of the IP bar, and first instance judges with these qualifications have now been appointed both to the Court of Appeal and to the UK Supreme Court. The resulting high level of comprehension and experience is self-evidently beneficial to litigants and to the public and is reflected in the decisions that are handed down.

    “And what exactly is wrong with plaintiffs filing in a court where a judge has experience handling the precise type of action they are filing?” UK experience over many decades shows conclusively that the answer is ABSOLUTELY NOTHING. Conversely, allocating cases to judges with degrees in arts subjects and little or no scientific knowledge risks misunderstandings and errors in the resulting decisions and cannot be in the public inerest.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    January 3, 2022 01:07 pm

    [A]llocating cases to judges with degrees in arts subjects and little or no scientific knowledge risks misunderstandings and errors in the resulting decisions and cannot be in the public inerest.

    For whatever little my agreement is worth, I definitely agree with this. There should be a designated U.S. district court (probably in D.C., although Detroit or K.C. would actually make more sense) specifically for patent cases. The judges for this court would—by statutory stipulation—be chosen only from those admitted to practice before the USPTO and a least one U.S. state bar, so that all the judges would have a science-oriented education and a form of legal training.

    Ideally, the Congress would hive the PTAB off of the USPTO and turn it into an Art. III court to institute this special district court. In that respect, it would be much like the way that Congress created the Art. III Court of Customs & Patent Appeals out of the prior administrative tribunal for customs appeals.

  • [Avatar for Anon]
    Anon
    January 3, 2022 01:25 pm

    Somehow, Mr. DeLassus wants to labor under the impression that purely random is somehow a saving grace, whine about others ‘missing the point,’ and yet, continue to miss the point that it is both ‘forum’ (as he would woodenly attest to) and capable judge (as Paul Cole attests to).

    Perhaps Mr. DeLassus would care to point out the “oh so unfair and deletorious” actions IN the selection of a judge (THIS judge) that ‘offends’ his senses so. Is there something actual and specific that THIS judge has done that is illegal or harmful to the Rule of Law? Why exactly is the notion of randomness so sacrosanct in view of a judge who is merely informed as to patent matters and whom will NOT have a standard that places the party with a patent at a disadvantage at the offset?

    Be specific sir – else, all we have from you is whining about something you merely do not like, and something that aligns with the Efficient Infringer cabal.

  • [Avatar for Curious]
    Curious
    January 3, 2022 03:02 pm

    The palpable impropriety of the plaintiff choosing the judge is so straightforwardly obvious that I will not belabor the point in explaining it.
    As long as the judge is neutral, it shouldn’t be a problem.

    I am far more concerned about a judge acting fairly and within the bounds of the law than I am about a plaintiff choosing a particular judge.

  • [Avatar for Curious]
    Curious
    January 3, 2022 03:07 pm

    Ideally, the Congress would hive the PTAB off of the USPTO and turn it into an Art. III court to institute this special district court.
    OMG. This is like the WORST IDEA EVER. The PTAB is chockfull of examiners who got their JD going to school part-time and attorneys who couldn’t cut it in private practice. Sure, there are some good ones among the bunch, but the PTAB is one of the last places I would look for talent for an Art. III Court.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    January 3, 2022 03:51 pm

    The PTAB is chockfull of examiners who got their JD going to school part-time and attorneys who couldn’t cut it in private practice.

    In 2021 there 516 appeals to the CAFC from the PTAB and 289 filed from the U.S. district courts. The reversal rate (which is the real metric of a district judges merit) was exactly the same for both categories (9%). The APJs are objectively no worse than the existing Art. III judiciary.

    https://cafc.uscourts.gov/wp-content/uploads/reports-stats/appeals/AppealsFY2021.pdf

    I am far more concerned about a judge acting fairly and within the bounds of the law than I am about a plaintiff choosing a particular judge.

    O.k., fair enough. I am also concerned that judges should act fairly and within the bounds of law. This is not mutually exclusive with the concerns noted in #1 above.

    It seems to me that if we thought that a given judge were not acting fairly or within the bounds of law, the appropriate corrective would be impeachment, not random case assignment. I do not believe that Judge Albright acts unfairly or outside the bounds of law, so no need to talk about such drastic measures here.

    Nevertheless, it is not consistent with the appearance of propriety (and appearances matter in the judiciary) for the plaintiff to pick the arbiter. Therefore, notwithstanding Judge Albright’s merits, it is altogether right and fitting for the judicial conference to consider steps that will make it impossible for plaintiffs to pick judges (including Judge Albright) to hear their cases.

  • [Avatar for Curious]
    Curious
    January 3, 2022 07:19 pm

    In 2021 there 516 appeals to the CAFC from the PTAB and 289 filed from the U.S. district courts. The reversal rate (which is the real metric of a district judges merit) was exactly the same for both categories (9%). The APJs are objectively no worse than the existing Art. III judiciary.
    I see you haven’t been paying much attention to what has been going on the last 15 years or so — or have much experience with the PTAB or the CAFC. Let’s start with the CAFC. They are only slightly less patent-friendly than the EFF, which says a lot since the EFF would be more than happy to ban patents. Consequently, the real reversal rate is unknown.

    Moreover, there is a difference in the standards of review for factual findings. Coming out of the PTAB, it is substantial evidence. Coming out of the District Court, it is clearly erroneous. More deference is given PTAB factual findings, which makes it less likely for the PTAB to be reversed when factual findings are made.

    Regardless, had you much experience with the PTAB, you would recognize that a great many are little more than glorified patent examiners with a law degree. I would hesitate to hire a great many as merely associates for my firm. Moreover, it would be really hard to scrub the anti-patent taint that is associated with working with the USPTO.

    Nevertheless, it is not consistent with the appearance of propriety (and appearances matter in the judiciary) for the plaintiff to pick the arbiter.
    The appearance of propriety is in the eye of the beholder, and those in the patent community are not a bunch of know-nothing rubes. Accused patent infringers want to go to NDCal because they assume they’ll get an anti-patent judge. Does it really matter who the judge is so long as the result (invalidation) is obtained?

  • [Avatar for Anon]
    Anon
    January 3, 2022 07:35 pm

    … and the appearance of propriety for Efficient Infringers in their Forum shopping for their own home court advantage…?

  • [Avatar for John White]
    John White
    January 4, 2022 07:44 am

    Timely access to a jury through Judge Albright is among the small rays of hope in the present patent system. To dim this hope, with no alternative, would hand the system over, even further, to those who promote its demise.

  • [Avatar for Anon]
    Anon
    January 4, 2022 09:57 am

    This odd notion of

    it is not consistent with the appearance of propriety (and appearances matter in the judiciary) for the plaintiff to pick the arbiter.

    just does not fly.

  • [Avatar for Pro Say]
    Pro Say
    January 4, 2022 01:39 pm

    “Talk about activist Federal judges! CJ Roberts, look in the mirror.”

    How true that, American Cowboy.

    How. True. That.

    Heal thy self, SCOTUS.

    Heal. Thy. Self.

  • [Avatar for mike]
    mike
    January 5, 2022 08:13 pm

    This is by far one of the best articles you’ve written Gene.

    – The rhetoric about the Eastern District of Texas being some back-water location in the middle of nowhere with tumbleweeds blowing down the main street was never true.
    – To say that multinational high-tech corporations do not have sufficient ties for purposes of venue is illogical, irrational and clearly erroneous.
    – It would be a severe and inexcusable misuse of resources for any entity, private or public, to have someone who is an expert on a topic and then sideline that person and have them work on areas outside their expertise while assigning that work to others who are not similarly accomplished.
    – What exactly is wrong with plaintiffs filing in a court where a judge has experience handling the precise type of action they are filing?
    – Filing where judges have significant expertise precisely happens every day in the District of Delaware without anyone raising an eyebrow.

    Rather than fear and try to create uncertainty by randomizing access to the efficiently run Albright court, the lower courts should be taught how to be efficient fora themselves. Then suits will naturally go to other districts.

    Also, everyone knows that the reason people desire to go to a specific court with a speedy trial date is to avoid lower standard of Preponderant Evidence petitioners enjoy at the PTAB against small inventors vs the court standard of Clear and Convincing Evidence. Judge Paul Michel says this is a design defect in the statutory scheme. https://www.ipwatchdog.com/2021/09/16/celebrating-the-america-invents-act-ten-years-on-many-ip-stakeholders-say-time-for-second-look/id=137631/

    If Congress would create the same evidentiary standard at the PTAB as in district court, the desire to go to a specific court having a speedy trial date in hopes to avoid the PTAB would degrade and alleviate this “venue problem”. It would also yield consistent results across the executive and judicial branches, providing predictability and trust in the patent grant, which is what the People want.

    So Congress should do that.

    And if Congress desires to reform venue, it should at least allow inventors to bring suit in districts where they did their research. Inventors on the face of patents are not trolls who forum shop. They are the Inventors who disclose their ideas. Enabling the true Inventors to defend their patents where they did their research would reduce their expenses, further incentivizing innovation, public disclosure of inventions, and the progress of the arts and sciences.
    Legislation on this very thing was in the works, but it was tabled because TC Heartland was being handed down. Congress needs to pick that back up and help inventors and their places of research here on venue.

  • [Avatar for Greg DeLassus]
    Greg DeLassus
    January 5, 2022 11:17 pm

    If Congress would create the same evidentiary standard at the PTAB as in district court, the desire to go to a specific court… to avoid the PTAB would degrade and alleviate this “venue problem”.

    I doubt that this is true, but Congress should definitely try the proposed retorm. The evidentiary standard rarely makes a difference to the outcome. The IPR scheme would be more Constitutionally sound if clear-&-convincing were the standard in both district court and the PTAB.

Add Comment

Your email address will not be published.