Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- an article arguing “[a] review of the Federal Circuit’s motion panel assignment procedures makes clear that a party can time its filing to take advantage of the makeup of a current motion panel or wait for a future panel [that] has more judges considered favorable on the issue of venue mandamus”;
- an earlier article by the same authors arguing that “what is often portrayed as a rogue district court at odds with a supervising appellate court is in fact two things quite different–yet familiar to patent practitioners”; and
- a third article addressing the Federal Circuit’s denial of a petition for a writ of mandamus seeking to compel the U.S. Patent and Trademark Office to grant Director Review of decisions not to institute inter partes review and post grant review.
Michael C. Smith, Erick S. Robinson, and Karl Rupp recently co-authored an article published on Law.com presenting data they say show “that while 13 [Federal Circuit] judges were eligible to sit on the mandamus panels [reviewing Western District of Texas rulings denying motions to transfer venue in patent cases], only four have overwhelmingly granted the petitions” and “those four judges . . . sit on a disproportionate number of panels.” The authors also discuss “reasons why more petitions for mandamus review of venue decisions make their way to certain [Federal Circuit] judges, and especially those [petitions] filed by certain types of defendants.” Notably, they allege “[a] review of the Federal Circuit’s motion panel assignment procedures makes clear that a party can time its filing to take advantage of the makeup of a current motion panel or wait for a future panel [that] has more judges considered favorable on the issue of venue mandamus.”
These same authors, Michael C. Smith, Erick S. Robinson and Karl Rupp, previously co-authored another article published on Law.com arguing that a study of Federal Circuit opinions ruling on petitions for mandamus seeking to order the Western District of Texas to transfer patent cases “indicates that what is often portrayed as a rogue district court at odds with a supervising appellate court is in fact two things quite different–yet familiar to patent practitioners.” The authors, first, allege the Federal Circuit is “graft[ing] additional requirements onto the statutory standards of 28 U.S.C. § 1400 and § 1404 and the Fifth Circuit’s well-developed jurisprudence in this area, as well as . . . implicitly replac[ing] mandamus review with . . . a de novo standard.” The authors, second, argue “[p]atent mandamus rulings in 2020-21 based on denied motions to transfer by Judge Albright provide an unusuually good illustration” of the “tendency of Federal Circuit decisions to vary–often substantially–based on the makeup of panels.”
Eileen McDermott wrote an article for IPWatchdog concerning the Federal Circuit’s recent denial of a petition for a writ of mandamus “to compel the U.S. Patent and Trademark Office (USPTO) to grant Director Review of the Patent Trial and Appeal Board’s (PTAB’s) decisions not to institute inter partes review (IPR) and post grant review (PGR).” McDermott reports that the court found this case “‘fundamentally differs from Arthrex. Here, there is no structural impediment to the Director’s authority to review institution decisions either by statute or by regulation.'”