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Guest Post by Megan M. La Belle

Forum shopping in patent cases is not a new phenomenon. To be sure, the primary reasons Congress established the U.S. Court of Appeals for the Federal Circuit in 1982 were to increase uniformity in patent doctrine and reduce forum shopping.1 Instead of eliminating forum shopping, however, the creation of the Federal Circuit merely shifted plaintiffs’ focus from appellate courts to district courts when looking for a friendly forum to pursue patent infringement suits.2

Over the past three decades, “hot spots” for patent litigation have emerged in different courts at different points in time. Beginning in the early 1990s, the U.S. District Court for the Eastern District of Virginia attracted a disproportionate number of patent cases due to its “rocket docket” system that generally moved cases to trial in under a year.3 Since then, the District of Delaware, the Northern District of California, and the Central District of California have consistently handled high levels of patent litigation.4 However, most conversations about patent hot spots and forum shopping focus on Texas—more specifically, the Eastern District of Texas beginning in 2006 and continuing for about a decade, and the Western District of Texas in more recent years.5

Many scholars, myself included, have written about patent litigation hot spots.6 Generally speaking, these patent litigation hot spots developed organically, at least at the start. The Eastern District of Virginia, for example, attracted a substantial number of patent cases because of its unique procedural rules that “fast tracked” cases to trial.7 The District of Delaware hears many patent cases each year because so many companies are incorporated in the state.8 Even the Eastern District of Texas initially became a hot spot for patent litigation because Dallas-based Texas Instruments was looking for a venue with a less congested docket than the Northern District of Texas in which to file patents cases.9 Yet, the evolution of the Western District of Texas as a patent litigation hot spot has been different.

As Jonas Anderson and Paul Gugliuzza detail in a recent article, the number of patent cases in the Western District of Texas has risen exponentially over the past few years.10 Many factors have contributed to the Western District’s rise, but Judge Alan Albright has played a central role by encouraging patent owners to sue in the Waco Division where he sits and hears all cases.11 Commentators have weighed the costs and benefits of concentrating patent cases before a single judge in this manner, but I will not weigh into that debate here for the sake of brevity.12 Instead, I will address why patent cases tend to concentrate in certain districts and what, if anything, should be done about it.

When the vast majority of patent cases in the country were being filed in the Eastern District of Texas, critics claimed the problem was the Federal Circuit’s interpretation of the venue statute.13 The Supreme Court ultimately agreed in TC Heartland LLC v. Kraft Foods Group Brands LLC,14 a decision that some of us argued was contrary to the plain language of the statute.15 While TC Heartland’s narrow interpretation of the patent venue statute did severely restrict the number of cases heard in the Eastern District of Texas, it did not stop the concentration of patent litigation.16 Instead, the patent litigation hot spot simply shifted 200 miles southwest from Marshall to Waco, Texas.17

Now that 25% of patent cases are concentrated before Judge Albright in the Western District of Texas,18 critics are once again calling for reform. Specifically, defendants whose transfer motions and/or motions to stay have been denied by Judge Albright are petitioning the Federal Circuit for immediate review via a writ of mandamus.19 The standard for obtaining relief through mandamus is very high and should only be granted in extraordinary circumstances.20 Yet, the Federal Circuit disproportionately grants mandamus petitions, particularly with respect to decisions arising out of the Eastern and Western Districts of Texas.21 And when reviewing decisions by Judge Albright, the Federal Circuit’s grant rate is a 56.5%—remarkably high given such relief is supposed to be reserved for extraordinary circumstances.22

The overuse of mandamus in this way is problematic for several reasons. First, in these cases where defendants are filing transfer motions, venue is indisputably proper in the Western District of Texas under the patent venue statute and the Court’s decision in TC Heartland.23 Thus, defendants are moving to transfer under 28 U.S.C. § 1404(a), which provides that “[f]or the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.”24 It is well-established, therefore, that decisions to transfer under 1404(a) are committed to the sound discretion of the trial judge and should be reversed only in rare circumstances.25 As Judge Moore explained in a recent dissent,

Our review on a petition for a writ of mandamus is supposed to be limited—we are to grant mandamus to overturn a transfer decision only when the district court has clearly abused its discretion, producing a patently erroneous result. Our reluctance to interfere is not merely a formality, but rather a longstanding recognition that a trial judge has a superior opportunity to familiarize himself or herself with the nature of the case and the probable testimony at trial, and ultimately is better able to dispose of these motions. Our mandamus jurisdiction is not an invitation to exercise de novo dominion, as the majority does here, over the district court’s individual fact findings and the balancing determination that Congress has committed to the sound discretion of the trial court. Nor is it an invitation for us to criticize the way our district court colleagues generally manage their dockets, or as the majority puts it, barrel ahead on the merits in any given case.26

In other words, just because the Federal Circuit judges might decide these 1404(a) transfer motions differently than Judge Albright, that different outcome does not mean he has abused his discretion or that his decisions are “patently erroneous.”27

Second, when the Federal Circuit uses mandamus to engage in “error correction” with respect to the Western District of Texas (i.e., to “rein in” Judge Albright), its decisions are not limited to that purpose.28 By way of example, the decision from which Judge Moore dissented, In re Apple Inc., was designated precedential by the Federal Circuit, meaning all lower courts—not just the Western District of Texas—are bound by it.29 Furthermore, even though most of the recent Federal Circuit opinions granting mandamus are designated non-precedential, that doesn’t mean the Federal Circuit is simply engaging in “error correction.” For better or worse, lower courts and litigants regularly rely on unpublished and non-precedential opinions, and thus even the Federal Circuit’s non-precedential opinions with respect to Judge Albright have the potential to distort the law relating to transfer more generally.30

So, if mandamus is not the way to prevent patent case concentration, what is? Both TC Heartland and the recent string of Federal Circuit mandamus decisions are attempts at a quick fix to the problem of patent cases accumulating in a particular district. But, as the emergence of the Western District as a patent hot spot after TC Heartland shows, quick fixes do not work. Instead, the focus should be on why plaintiffs are choosing certain districts for their patent cases in the first place. While there is not one easy answer to that question, differences in procedural rules play a key role in the development of patent litigation hot spots in certain districts.31 Thus, if the goal is to put an end to patent case concentration generally—not simply shift it from one court to another—then promoting procedural uniformity is the place to start.

The procedural rules in federal court are supposed to be uniform since the Federal Rules of Civil Procedure (FRCP) are trans-substantive, meaning they apply to all types of claims, and trans-territorial, meaning they apply regardless of location of the district court.32 Yet that is simply not true; in reality, the procedural rules and practices vary substantially from district to district because of local rules, standing orders, and local norms. One procedural oddity in both the Eastern and Western Districts of Texas is that plaintiffs can select the division in which their case will proceed.33 As several scholars have argued, this not only promotes forum shopping but judge shopping in divisions with a single judge or divisions where all cases of a particular type (e.g., all patent cases) are assigned to the same judge.34

The ability to judge shop is arguably the most significant advantage for the development of patent litigation hot spots, but other procedural differences also play an important role in the concentration of patent cases. For example, districts and/or individual judges take different approaches to disclosure of validity and infringement contentions, claim construction, discovery, summary judgment, time to trial, and stays pending the resolution of PTAB proceedings.35 In some districts—like the Eastern and Western Districts of Texas—these procedures tend to favor the plaintiff, while in other districts—like the Northern District of California—these procedures tend to favor the defendant.36 To reduce patent case concentration and discourage defendants from seeking transfer to friendlier districts—which, of course, is also forum shopping—reform aimed at procedural uniformity should be the goal.37 Such an effort should be led by Congress and/or the Judicial Conference of the United States, not the Federal Circuit.

The good news is that there has been some movement in this direction recently. In late September, Senators Leahy and Cornyn introduced “Restoring the America Invents Act,” a bill addressing procedures related to the PTAB, including requests to stay parallel district court litigation.38 If that bill becomes law, district courts will have less discretion in deciding whether to grant stays and stay decisions will be subject to immediate de novo review by the Federal Circuit.39 More recently, Senators Leahy and Tillis wrote to Chief Justice Roberts as the Presiding Officer of the Judicial Conference to express concerns about the ability to judge shop in certain districts and requesting that the Judicial Conference “conduct a study of actual and potential abuses that the present situation has enabled.”40 Apparently that letter was effective because Justice Roberts indicated in his year-end report that the Judicial Conference would take up the issue of judicial assignment and venue in patent cases.41

While these are steps in the right direction, they are not enough. First of all, these efforts are one-sided in that they only address concerns raised by defendants in patent litigation when proper reform should take into account the views of patent litigation plaintiffs as well. Second, and relatedly, piecemeal reform is not the way forward here. That was the approach in TC Heartland and it didn’t address the underlying problem of why patent litigation becomes concentrated in the first place.42 Instead, we need comprehensive procedural uniformity in patent cases (i.e., adoption of the Federal Rules of Patent Procedure) so that patent cases proceed through litigation similarly whether filed in California, Texas, Illinois, or Idaho—something I proposed in an article several years ago.43 Until then, the fall of one hot spot will simply lead to the rise of another and we will be having this discussion all over again.

Professor, Catholic University of America, Columbus School of Law.

[1] Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, 96 Stat. 25 (codified as amended in scattered sections of 28 U.S.C.).

[2] Daniel Klerman & Greg Reilly, Forum Selling, 89 S. Cal. L. Rev. 241, 302 (2016) (citing Jonas Anderson, Court Competition for Patent Cases, 163 U. Penn. L. Rev. 631, 684 (2015).

[3] See, e.g., Dabney J. Carr IV & Robert A. Angle, Patent Infringement Litigation in the “Rocket Docket” of the Eastern District of Virginia, July/Aug. 2019 Fed. Law. 60; George F. Pappas & Robert G. Sterne, Patent Litigation in the Eastern District of Virginia, 35 IDEA: The J. Law & Tech. 361 (1995).

[4] Klerman & Reilly, supra note 2, at 315.

[5] J. Jonas Anderson & Paul R. Gugliuzza, Federal Judge Seeks Patent Cases, 71 Duke L.J. 419, 438 (2021) (citing Julie Creswell, So Small a Town, So Many Patent Cases, N.Y. Times (Sept. 24, 2006), https://www.nytimes.com/2006/09/24/business/24ward.html; id. at 450 (citing Scott Graham, Viasat Demands $9M in Fees–and $2 in Punitives + How Far Can Judges Go in Touting Their Districts?, Law.com: Skilled in the Art (Sept. 3, 2019, 9:00 PM), https://www.law.com/2019/09/03/skilled-in-the-art-viasat-demands-9m-in-fees-and-2-in-punitives-how-far-can-judges-go-in-touting-their-districts.

[6] See, e.g., id.; Megan M. La Belle, Influencing Juries in Litigation “Hot Spots”,94 Ind. L.J. 901 (2019).

[7] See, e.g., Xuan-Thao Nguyen, Justice Scalia’s “Renegade Jurisdiction”: Lessons for Patent Law Reform, 83 Tul. L. Rev. 111, 114 (2008).

[8] See Anderson & Gugliuzza, supra note 5, at 444 (citing Ofer Eldar & Neel U. Sukhatme, Will Delaware Be Different? An Empirical Study of TC Heartland and the Shift to Defendant Choice of Venue, 104 Cornell L. Rev. 101, 122–24 (2018).

[9] La Belle, supra note 6, at 932.

[10] Anderson & Gugliuzza, supra note 5, at 438.

[11] Id. at 448–51.

[12] See, e.g., Klerman & Reilly, supra note 2.

[13] Id. at 247–48.

[14] 137 S. Ct. 1514 (2017).

[15] See, e.g.,Brief of Professors of Patent Law and Civil Procedure as Amici Curiae in Support of Respondent, TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) (No. 16-341) (Mar. 8, 2017), 2017 WL 1046235.

[16] See Anderson & Gugliuzza, supra note 5, at 444–45.

[17] Id. at 445.

[18] Ryan Davis, WDTX Now Has 25% of All US Patent Cases, Law360 (July 2, 2021), https://www.law360.com/articles/1400052/wdtx-now-has-25-of-all-us-patent-cases.

[19] See Klerman & Reilly, supra note 2, at 425–26 (collecting cases).

[20] See Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 380–81 (2004) (holding that petitioner must: (1) show that it has a clear and indisputable legal right; (2) show it does not have any other method of obtaining relief; and (3) convince the court that the “writ is appropriate under the circumstances”).

[21] Jonas Anderson, Paul Gugliuzza & Jason Rantanen, Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit—Part 3, PatentlyO (Oct. 21, 2021), https://patentlyo.com/patent/2021/10/extraordinary-ordinary-mandamus-federal-circuit.html.

[22] Id.

[23] See Klerman & Reilly, supra note 2, at 446.

[24] 28 U.S.C. § 1404(a)

[25] See In re Apple Inc., 979 F.3d 1332, 1347 (Fed. Cir. 2020) (Moore, J., dissenting).

[26] Id. (internal citations and quotations marks omitted).

[27] See id.

[28] Anderson, Gugliuzza & Rantanen, supra note 21.

[29] See In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020) (maj. op.).

[30] Fed. R. App. Proc. 32.1 (allowing citation to unpublished or nonprecedential opinions); see also Plumley v. Austin, 574 U.S. 1127, 1131 (discussing the problems with nonprecedential opinions) (Scalia, J., dissenting from denial of petition for writ of certiorari).

[31] See Klerman & Reilly, supra note 2, at 250–70.

[32] See Megan M. La Belle, The Local Rules of Patent Procedure, 47 Ariz. St. L.J. 63, 69–70 (2015) (explaining that before the FRCP were promulgated, district courts applied the same procedures as the states in which they sat, a practice known as “conformity”).

[33] Anderson & Gugliuzza, supra note 5, at 454 (“For plaintiffs, choosing the Waco Division could not be simpler. Merely select “Waco” from a drop-down menu of divisions on the Western District’s electronic case filing system and the case is automatically assigned to Judge Albright.”); Klerman & Reilly, supra note 2, at 255 (“A patentee filing in the Eastern District of Texas knew it had at least a 50% (and often far closer to 100%) chance of having a particular judge simply by clicking on a particular division from a drop-down menu when electronically filing its case.”).

[34] See Anderson & Gugliuzza, supra note 5, at 454; Klerman & Reilly, supra note 2, at 255.

[35] See generally Anderson & Gugliuzza, supra note 5; La Belle, supra note 33.

[36] Klerman & Reilly, supra note 2, at 250–70.

[37] See, e.g., La Belle, supra note 32.

[38] Restoring the America Invents Act, S. 2891, 117th Congress (2021).

[39] Dennis Crouch, Restoring the America Invents Act, PatentlyO (Sept. 29, 2021), https://patentlyo.com/patent/2021/09/restoring-america-invents.html.

[40] Letter from Sen. Patrick Leahy & Sen. Thom Tillis to The Honorable Chief Justice John Roberts (Nov. 2, 2021), https://fingfx.thomsonreuters.com/gfx/legaldocs/zdpxonybkvx/IP%20ALBRIGHT%20PATENTS%20letter.pdf.

[41] 2021 Year-End Report on the Federal Judiciary, at 5, https://www.supremecourt.gov/publicinfo/year-end/2021year-endreport.pdf.

[42] See Anderson & Gugliuzza, supra note 5, at 444–45.

[43] See La Belle, supra note 32.