Clause 8 Podcast: Professor Tim Hsieh Explains the Benefits of Judge Shopping

The 2017 TC Heartland LLC v. Kraft Foods Supreme Court decision led to a major shift in where patent litigation cases are filed in the United States. Before TC Heartland, a patent owner could bring a case in almost any district where an alleged infringer conducted business. Because of its predictable rules and streamlined procedures, the Eastern District of Texas became the most popular forum for such cases; nearly 40% of patent infringement actions were filed there in 2016.

When Professor Timothy Hsieh clerked in the Eastern District of Texas, he saw firsthand the benefits – for patent owners and defendants – of experienced judges handling patent cases. TC Heartland changed that by changing the rules regarding where companies can be sued for patent infringement. By 2017, only 15% of patent infringement cases were tried in the Eastern District of Texas. Instead, patent cases became concentrated in Delaware and California.

“If you’re not solving that forum shopping issue and you’re just changing the forum, then you might have a new problem that’s created […] wherever you shift the cases to,” Hsieh says.

But Hsieh’s key point is that forum shopping — or even judge shopping — is not a problem at all. In fact, it’s a good thing. “If anything, the defense are also getting a much fairer, much more balanced adjudication because you have someone who’s very knowledgeable about patent law,” Hsieh says.

Senator Patrick Leahy (D-VT) seemed to recognize these benefits of district court judges who have relevant patent expertise and experience when he included the Patent Pilot Program in the Leahy-Smith American Invents Act. The program allowed federal district court judges in select districts to volunteer to handle patent cases. The goal was for certain judges to have increased expertise – and as a result – do a better job.

However, after the program expired and Judge Alan Albright started attracting patent cases to his Waco court room in the Western District of Texas, Leahy had a change of heart. In an unprecedented letter to Supreme Court Chief Justice John Roberts, Leahy pressured Roberts to do what he could to stop Waco from being a go-to patent venue by suggesting there was something untoward about Albright’s interest in patent cases. The pressure campaign seems to have worked. In his end-of-year report, Roberts highlighted the issue and stressed “the role of district judges as generalists.”

Since Hsieh has become known as an expert on the subject of patent venues, I knew he was the perfect person to talk to about this recent controversy.

I also spoke with Professor Hsieh about whether how courts think about venue is outdated and his fascinating career trajectory of patent litigator turned patent examiner turned law school professor.

Key Points

• Persistence is key to becoming a law professor. “The path is really not easy and it was something that took me quite a while. And even though I had that aspiration or goal, it is something that you have to constantly persist at and really just never give up.”
• Patent prosecutors should conduct examiner interviews instead of writing legal briefs. “They had this saying — we were the patent office, not the rejection office. And really the goal is to try to allow as much as you can. But the thing is, you have to really justify it […] I always see all these pages and pages of legal arguments and case cites and Berkheimer. And that really is not that persuasive. Especially if you do it all the time, there’s a high chance an examiner might just get annoyed, and just have to slog through all those legal arguments when you could just pick up the phone and call them and just try to talk to them.”
• Consistency is key. In order for the rule of law to work well, the law has to be consistent and predictable. It’s the same for patent law, Hsieh says, especially in courts like Eastern District of Texas or District of Delaware, which handle a large volume of patent cases. “As a result…specific rulings coming from that court are more trustworthy than, say, another court that has not had that level of experience or the [same] number of cases.”
• Venue shopping or judge shopping isn’t as bad as it sounds. Some in the legal world, including Sen. Patrick Leahy, have argued against the idea of venue or judge shopping. But Hsieh says there’s actually nothing wrong with it, and that ultimately it’s a good thing for both plaintiffs and defendants. All involved in the case are getting a fairer shot because the judge is more experienced in patent law and can move through cases more efficiently.

“[Judge shopping] is ultimately a good thing in my view, because you are allowing the parties to choose the best possible arbitrator of their dispute. And because it might be faster, it might be slightly more attractive for plaintiffs. But that doesn’t mean it’s somehow unfairly skewed towards defendants. If anything, the defense are also getting a much fairer, much more balanced adjudication because you have someone who’s very knowledgeable about patent law.”

Highlights

[00:09] From patent examiner to law professor: the unlikely trajectory of a patent litigator turned patent examiner turned law professor at the Oklahoma City University School of Law.

[07:09] From clerk to patent examiner: Hsieh talks about his federal clerkship experience before becoming an examiner at the U.S. Patent and Trademark Offices (USPTO) to work as an examiner.

[12:10] Pit of despair: Hsieh talks about his experience as an examiner in the USPTO’s business method Technology Center.

[17:11] Advice for patent applicants: Hsieh offers some pointers from an examiner’s perspective for what applicants can do to succeed at the USPTO.

[20:57] TC Heartland: Hsieh talks about his the impact of TC Heartland v. Kraft Foods, including how it’s impacting district courts in Delaware and Northern California.

[31:54] Outdated concepts: Is federal venue jurisprudence outdated?

[36:37] Experts vs. generalists: In a 2021 paper, law scholar Paul Gugliozza stresses that the TC Heartland case may have ended the practice of forum shopping and replaced it with judge shopping. Is that a bad thing?

[41:14] An unprecedented writ: Writs of mandamus are only supposed to be used in the most extreme or rare circumstances. Hsieh explains why they are being used more than ever to order reversals of venue changes.

[46:07] An ongoing problem?: TC Heartland sought to address the high concentration of patents being filed in East Texas, but now a majority of cases are moving to two states: Delaware and California. Is this an improvement?

[55:03] Keep the spark alive: Academia is one of the most competitive career sectors. Hsieh gives advice to those who want to replicate his career path.