Litigating Patents in Texas: IPWatchdog LIVE Panel Notes Order Curbing Albright May Soon Be Revoked

“The panelists also recognized that the Chief Judge of the Western District is going to change in November 2022, which could lead to a unilateral change to the order, perhaps undoing it entirely or implementing a different way of distributing these patent cases.”

IPWatchdog LIVE

From left: Erick Robinson, Evelyn Chen, Matthew Vitale, Miranda Jones, David Henry

During Day two of IPWatchdog LIVE in Dallas, Texas, a panel of attorneys discussed a range of topics related to litigating patents in Texas, particularly the recent order from the Chief Judge for the Western District of Texas, which requires patent cases filed in the Waco Divison be randomly assigned to one of 12 district court judges. The order was widely understood to be an answer to Senator Tillis’ recent criticism of Judge Alan Albright.

The panel began with a discussion of a law review article written by Baylor law student, Matthew Vitale, which analyzed the witness lists of tried cases that were transferred from Texas to either the Northern or Central District of California and the Western District of Washington. The analysis concluded that only single digit percentages of witnesses listed in motions to transfer were ever called to testify. The panelists noted that this finding supports the notion that witness lists contained in motions to transfer are often merely a pretext to obtain a transfer.

Erick Robinson, Co-Chair of the IP group at Spencer Fane, remarked that there are two major benefits to filing in Texas. First, in Texas, as compared to California, patent holders are less likely to have their suit dismissed on Section 101 grounds at the outset. Additionally, he noted that the case is more likely to expeditiously find its way to a jury trial than in California or other notable forums like Delaware. Robinson opined that he would gladly try cases in other forums if he felt that it would lead to a speedy trial.

Providing a counter analysis, Evelyn Chen, Director at Ericsson, noted that companies often seek to be transferred out of Texas, and out of Waco in particular, due to a desire to be near the company headquarters where the decision makers for the company are located. Further, Chen noted, the costs associated with sending an entire litigation team across several states to try a case are often incredibly high. Additionally, companies are often more comfortable litigating in their home forum where they may be more familiar with the jury pool and the judges. Chen said that, depending on the circumstances of the party, a prolonged time to trial may be beneficial to preparing the case and facilitating settlement discussions.

The panel’s discussion progressed to the implications of the order from Chief Judge Garcia requiring patent cases filed in the Waco Division to be randomly distributed among 12 judges. The panelists were asked their views on the order, which varied. Chen opined that the order was a step by the Western District to address an issue that has risen to the level of national discourse before someone else higher up stepped in and did something for them. Chen noted that the Eastern District also went through changes to patent rules several years ago when it became a hot spot for patent litigation. But Jones and Robinson found the order to be unfair in the way that it singled out the Waco Division.

An interesting wrinkle associated with this order, said the panelists, is that even though patent cases filed in the Waco Division must now be randomly assigned to one of 12 judges located throughout the Western District, that does not necessarily mean that the cases may be tried in those other locations. Instead, the judges assigned cases filed in Waco may need to travel to Waco to try the case. “A Western District patent case filed in Waco is not going to be tried in El Paso. No, it’s still going to be tried in Waco,” said David Henry of Munck Wilson Mandala.

The speakers noted that many of the judges who may now be assigned these Waco patent cases may lack the resources and knowledge to efficiently hear them. One potential outcome from the order is that the other judges in the Western District may adopt Judge Albright’s rules for patent litigation. Judge Counts, located in the Midland/Odessa and Pecos Divisions of the Western District, adopted most of Judge Albright’s rules within a week of the order. The panelists also recognized that the Chief Judge of the Western District is going to change in November 2022, which could lead to a unilateral change to the order, perhaps undoing it entirely or implementing a different way of distributing these patent cases. Another possible change could be the adoption of district-wide patent rules, as is the case in the Eastern District, to promote consistency throughout the district.




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Join the Discussion

2 comments so far.

  • [Avatar for Matthew Vitale]
    Matthew Vitale
    September 13, 2022 11:18 am

    I’d be happy to provide the final draft of my article via email; publication is forthcoming in the next 3-4 weeks in Baylor Law Review

  • [Avatar for JS]
    September 13, 2022 10:33 am

    Can you provide a link to the law review article?

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