Judge Albright Enters New Standing Orders on Motions to Transfer for Conformity with CAFC Mandates

“It’s not unreasonable to suggest that Judge Albright’s recent standing orders to rein in venue discovery and ensure timely resolution of transfer motions prior to Markman hearings on claim construction could be partially in response to push back  from the Federal Circuit.”


Judge Alan Albright

On June 8, U.S. District Judge Alan D. Albright of the Western District of Texas signed an amended pair of standing orders regarding motions to transfer filed in patent infringement cases on his docket. The standing orders, which limit venue and jurisdictional discovery as well as require party status reports on motions to transfer, balances judicial efficiency with fairness to patent litigators in a court that has absolutely become one of, if not the, most important court in U.S. patent law today.

Amendments Mandate Status Reports on Transfer Motions, Limit Venue Discovery

An amended standing order regarding motions for inter-district transfers requires all parties filing such motions to provide Judge Albright’s court with a status report on the motion at least six weeks prior to the Markman hearing scheduled in the case. Status reports must contain information regarding whether the motion has been fully briefed and if it is capable of being resolved. Parties in patent litigation currently proceeding in Judge Albright’s court are ordered to provide status reports within five business days of entry of the amended standing order. The order indicates that Markman hearings will be postponed, if necessary, until the court has the opportunity to rule on a motion to transfer, but that fact discovery will still begin one day after the Markman hearing was originally scheduled to occur even if postponed.

A second amended standing order entered June 8 establishes presumptive limits to venue and jurisdiction discovery in patent cases. Each party to a patent case in Judge Albright’s court will be limited to five interrogatories, 10 requests for production and 10 hours of deposition testimony. The order also reduces the time to respond to such discovery requests to 20 days. Parties can confer with opposing counsel if limits need to be expanded in a particular case and any impasse will be addressed with the court via telephonic hearing. Under the standing order, venue or jurisdictional discovery must be completed within three months of the filing of a motion on venue or jurisdiction, plaintiffs must respond to such motions within two weeks of the close of discovery and defendants will have two weeks to file a reply to plaintiff’s response.

Doubtlessly, Judge Alan Albright is the fastest rising star among U.S. district judges who regularly handle patent cases. During 2020, 19.5% of all patent cases filed in U.S. district court landed on Judge Albright’s docket. The fact that the recent amended standing orders issued by Judge Albright are highly focused on motions to transfer reflect an issue that has been developing in cases being appealed out of Judge Albright’s court to the U.S. Court of Appeals for the Federal Circuit on questions surrounding motions to transfer. In early March of this year, the Federal Circuit issued a decision in In re Tracfone Wireless, Inc. which remanded a patent case to Judge Albright’s court and granted a petition for writ of mandamus ordering a ruling on the motion to transfer within 30 days with “a reasoned basis for ruling that is capable of appellate review.”

We addressed strikingly similar circumstances from the same district court last month in [In re SK hynix]. There, as here, the petitioners sought mandamus relief from this court after waiting nearly eight months for a ruling on a motion to transfer that was fully briefed. We agreed with the petitioner that ‘the district court’s handling of the transfer motion up until this point in the case has amounted to egregious delay and blatant disregard for precedent’… unlike in SK hynix, the court to date has taken no action to suggest it is proceeding towards quick resolution of the motion.

The Federal Circuit would also go on to say that “we remind the lower court that any familiarity that it has gained with the underlying litigation due to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision.” It’s not unreasonable to suggest that Judge Albright’s recent standing orders to rein in venue discovery and ensure timely resolution of transfer motions prior to Markman hearings on claim construction could be partially in response to push back such as this from the Federal Circuit.

WDTX On the Rise Due to TC Heartland-Compatible Factors, Judge Albright’s Patent Experience

According to David G. Henry, Partner and Registered Patent Attorney at Gray Reed and one of the initial members of Judge Albright’s working group that offers input to the court in developing procedural rules for patent cases, the new amended standing orders will provide structure for conformance with the directives on motions to transfer being issued by the Federal Circuit. It will also allow the court to dispense with the issue of motions to transfer prior to the all-important Markman process — a process that should occur in the court in which the case will proceed, in part because of the clarity claim construction provides as to issues of infringement, non-infringement and patent claim validity, based on which party’s definition of claim terms are adopted by the court. “Judge Albright’s goal is always to handle cases efficiently and to get to trial in as short a time as possible,” Henry said. “The last thing any judge wants is for either side to conduct discovery ad nauseum on a limited topic such as proper venue or forum non conveniens, so the new limits on interrogatories and other discovery in this realm are consistent with Judge’s philosophies. Most parties ought to be able to make their case on a motion to transfer venue within those bounds.”

The rapid rise of Judge Albright’s courtroom as a top battleground for patent litigants is somewhat reminiscent of the prominence of U.S. District Judge J. Rodney Gilstrap of the Eastern District of Texas, whose docket contained as much as 20% of all patent cases filed in the U.S. during the mid-2010s. That docket began to shrink as a result of the U.S. Supreme Court’s 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, which limited venue choices for plaintiffs bringing patent infringement actions in U.S. district court. According to Henry, this began a natural gravitation of case filings in the Western District of Texas. “Both Judge Albright and Judge Gilstrap are deeply learned in the field of patent law,” Henry said. “It just so happens that Judge Albright is in Western Texas, which has some very TC Heartland-compatible venue factors.” Henry noted that the Western District of Texas encompasses both Austin, which has significant presences from numerous high-tech companies, and San Antonio, the 7th-largest city in the United States, also with its own ample sampling of likely patent infringement defendants. “The new take on venue rules after TC Heartland, when combined with a very seasoned patent litigator in Judge Albright, makes it natural that cases would gravitate toward Texas’ Western District,” Henry said.

Although Judge Albright’s recent orders limit venue and jurisdiction discovery, Henry noted that Albright often considers tailoring procedural rules to the needs of an individual case. “Judge is adamant that he wants everyone to leave his courtroom feeling as though they’ve been treated fairly,” Henry said, adding that this philosophy is evident in how Judge Albright has opened up his working group to anyone licensed to practice law in the Western District of Texas who wants to participate in developing rules for patent cases: “Judge Albright has spent 20 years as a litigator, so he brings that knowledge and experience, but he draws on knowledge provided by the working group as well.”


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