I know “here we go” was literally the title of my last post, but let’s be honest—we didn’t really go anywhere last time. I guess in theory you, my readers, did in fact get to “go” through, like, three paragraphs of prefatory meandering (and also one really cool bulleted list), but did we collectively learn anything? Did we take a magical, life-changing journey through any actual substance and/or to Waco? Did I even use any rhetorically neat three-questions-in-a-row constructions?
I would argue no.
This time, we’re doing real stuff. Substantive stuff. Stuff that should leave the impression that I don’t get paid by the word.12
We’re starting (checks watch) . . . . . . . now.
Brian, What Happened Last Week in Waco and/or One-Third of All of Texas?
Thank you for asking! On Monday, July 25, 2022, the Chief Judge of the Western District of Texas, Orlando Garcia, issued an “Order Assigning the Business of the Court as it Relates to Patent Cases.” What the order said was that beginning immediately, “all civil cases involving patents . . . filed in the Waco Division on or after July 25, 2022, shall be randomly reassigned to” one of twelve district judges sitting in San Antonio, Del Rio, Austin, El Paso, Midland/Odess and Pecos, and Waco, respectively. That list of twelve district judges included Judge Alan Albright—who actually sits in the Waco Division, the only division affected by this new order—and eleven other district judges who do not.
In fact, two of the judges on the list sit in El Paso, which is 615 miles away from Waco; one sits in Del Rio, which is 337 miles away from Waco; and one splits his time between Pecos (413 miles from Waco) and Midland (320 miles from Waco). For those of you who’ve never left the Eastern Seaboard, 615 miles is just shy of the distance between New York City and Charlotte (632 miles) or between Washington, DC and Atlanta (634 miles). Let’s back-of-the-envelope average those Del Rio/Pecos/Midland distances to 343 miles—the length of a car trip from (beautiful) Chicago to (even more beautiful) Cleveland.
And how about the four judges in San Antonio? That’s 180 miles (and at least two Buc-ee’s) from Waco. (The two Austin judges on Chief Judge Garcia’s list are a relatively meager 102 miles from Waco, but that’s part of the reason people were filing patent suits in Waco in the first place—more on this later.)
So as of last Monday, if you file a patent lawsuit in Waco, Texas—which is a separate, Congressionally-designated division of the United States District Court for the Western District of Texas, which you as a plaintiff must actually choose to file in—you have a one-in-twelve chance of ending up in Waco (again, the place you actually filed), and a one-in-six chance (twice as likely!) of ending here, about equidistant between Waco and San Diego, California.
Moreover, the twelve federal district judges you will be playing assignment roulette with have widely varied backgrounds and—yes, this is a thing, as judges are actual people—interest in hearing patent cases. Patent cases are often technically complex, with (frequently intentionally) opaque documents, arguments, and expert testimony on both sides. Modern patent litigation is also legally prolix and specialized, entailing *cough* arguably redundant validity inquiries with different burdens of proof;3 procedurally complex interplay with co-pending administrative proceedings;4 and a bespoke reviewing court with its own (less than pellucid) precedent on every conceivable issue and a penchant for granting writs of mandamus. Some district judges understandably want nothing to do with patent cases. Others (also understandably) want only an amuse-bouche of them. On the other hand, some district judges spent twenty years practicing patent litigation before joining the federal bench and want to oversee patent trials (and everything preceding them) as their life’s work.
Specialization (to a point) of patent case assignments by interests and resources within federal districts and divisions—and across the nation’s federal system more generally—was until recently widespread and usually well accepted; a 10-year pilot program encompassing nearly 60 judges across 13 judicial districts (including the Central District of California, the busiest judicial district in the country; the Northern District of Illinois, encompassing Chicago; and the Southern District of New York, which includes Manhattan) sent patent suits within those districts to enumerated judges who opted in to hear such cases. That program wrapped up early last year; as a district judge in San Diego (Judge Cathy Ann Bencivengo, who specialized in IP ligitation prior to becoming a federal judge) said on the subject at a February 2021 conference, “I’m not going to have as many [patent cases] as I would like. It makes me sad. It’s going to make other people even sadder who are going to get them and can’t get rid of them.”
Chief Judge Garcia’s order will uniquely deprive Judge Albright—a former patent litigator who wants patent cases—of nearly all new patent cases, while at the same time requiring that busy district judges in El Paso and elsewhere with no obvious interest or background in patent litigation hear patent cases filed in a different division.
Assuming Chief Judge Garcia is not simply acting out of animus towards Judge Albright—and there is absolutely no reason, given Garcia’s background (he is a well-respected San Antonio jurist who has been on the federal bench for nearly thirty years, and is well into his seventh year as Chief Judge) and position (as the administrative head of one of the largest, busiest, and most geographically sprawling federal judicial districts in the United States, Chief Judge Garcia has a really hard job!) to suspect that this is the case—something really significant must have happened to spur this order.
And so it did: in 2021, nearly one-quarter of all patent cases in the entire United States were filed in the Waco Division of the Western District of Texas, a one-judge division covering less than one million people, and were by operation of then-existing rules assigned to Judge Albright. One judge was handling twenty-four percent of all new patent litigation in the entire country—and his caseload was growing.
Lots of people5—mostly frequent patent defendants, particularly Big Tech— complained. To be clear, they complained about all sorts of things, not just the caseload. They complained about how Judge Albright managed cases, including how (and especially, when) he evaluated transfer and § 101 motions; they complained about how Judge Albright treated the PTAB (the specialized patent court that oversees inter partes reviews); and in fact they complained about how the entire state of Texas manages federal judicial divisions, and the cases within them. (They also complained about other things, but as I noted earlier, this is my Substack and 👏 on 👏 this 👏 page 👏 we 👏 list 👏 exactly 👏 three 👏 things 👏 at 👏 a 👏 time.)
Some of these complaints were (and are), upon examination, quite reasonable; some were (and are) overblown or simply unfair. In this multi-part series, I’ll scrutinize most of them, and you, the reader, can evaluate for yourself how tasty or sour the grapes are. But in any event, complaints were made. And since they came from people6 with uhhhhhhhh particularly trenchant7 voices, Congress took notice. On November 2, 2021, a bipartisan group8 from the Senate Judiciary Committee—the body that controls confirmation of new judicial nominees, and is the principal arm of congressional oversight of the federal judiciary—wrote a letter to Chief Justice John Roberts expressing concern about Judge Albright’s docket, his practices, and his decisions. This letter included some fair concerns, but also many that were unfair (again, we’ll talk through this all right here on this Substack; feel free to disagree). And it was written in typically overblown Senatorial style, going so far as to allege “unseemly and inappropriate conduct” in connection with “[t]he extreme concentration of patent litigation in one district.” The letter, besides leveling accusations, asked Chief Justice Roberts to evaluate “an absence of adequate rules regulating judicial assignment and venue for patent cases within a district.”
Two months later, Roberts showed he read that letter. In his 2021 Year-End Report on the Federal Judiciary—a report only five pages long—the Chief Justice devoted nearly a full page to “an arcane but important matter of judicial administration: judicial assignment and venue for patent cases in federal trial court.” Noting that “Senators from both sides of the aisle[9] have expressed concern” about this issue, the Chief Justice explained that “[t]his issue of judicial administration provides another good example of a matter that self-governing bodies of judges from the front lines are in the best position to study and solve—and to work in partnership with Congress in the event change in the law is necessary.” In other words: “Please don’t legislate! We’ll fix this ourselves!”
And a few months later, the Garcia order did just that—although, again, whether it constitutes a “fix” from the viewpoint of fair-minded patent litigants, and indeed other W.D. Tex. district judges, is up for debate.
Okay, so were are we so far? We’ve discussed some background; we’ve talked about the sudden rise of Judge Albright’s massive, uniquely-managed patent docket;10 and we’ve talked about its even-more-sudden (apparent) downfall. We’ve introduced a few issues—§ 101; inter partes review; judicial background and interest—that (along with others like fee-shifting, which I’ll cover later in this series) make patent litigation battles uniquely vicious. We haven’t really discussed any of those issues in depth, nor Judge Albright’s takes on them, but we will.
But first (and then I’ll finally, mercifully, wrap this post) let’s discuss some brass tacks of patent venue—and the problem with Judge Albright’s treatment of transfer motions.
Modern Patent Venue and the TC Heartland Sea Change
When you, as a plaintiff, are filing a patent case (or any case), the first—and technically, last—question you have to answer is “where am I filing this?” Embedded in that larger question are two subquestions: (1) where can I file this and (2) where should I file this? Generally speaking, a concept called “venue” determines both of those subquestions.11
Historically, patent venue was pretty expansive. You could, for the most part, sue a defendant wherever that defendant (i) could be found (essentially, where there was personal jurisdiction over the defendant) and (ii) was allegedly infringing the patent(s)-in-suit, which for most worthwhile patent defendants,12 especially those that conduct business over the Internet, tended to be pretty much all over the United States. In short, the answer to “where can I file this” was, for many patent lawsuits: anywhere.
As a result, patent plaintiffs shopped around the country throughout the 1990s and early 2000s to figure out where they could get the most plaintiff-friendly13 shake in patent cases. And one answer kept coming up: the Eastern District of Texas. The Eastern District of Texas was fast-to-trial; had a relatively less-busy docket in comparison to giant urban courts like the Central District of California, the Northern District of Illinois, the Northern District of California, and the Southern District of New York; had judges and magistrates who developed a unique expertise in patent litiation, including tech-savviness and specialized legal knowhow; and had (and still has) well-developed and unique discovery and case management rules that make discovery more streamlined than in many other districts.
It also happened that some Eastern District of Texas juries—particularly those in Tyler and Marshall—handed down rather large verdicts in favor of patent plaintiffs, and in several high-profile jury trials found that very broad asserted patent claims were not invalid based on prior art that was prettttttty close to the patented invention. My last sentence is an over-generalization (indeed, it reflects less-than-totally-fair talking points pushed by frequent patent defendants throughout the early 2000s), and it’s an incomplete-at-best picture of Eastern District of Texas juries (to say nothing of the district and magistrate judges there, who happen to be some of the most fair, respectful, intelligent, and hardest-working federal judges I’ve litigated in front of over my career), but the public perception of the Eastern District of Texas is an important part of the overall patent venue story; I have to include it here. And it is indeed true that if you are a patent plaintiff with a good case and honest lawyers, the Eastern District of Texas was (and remains) an objectively great place to litigate.
So in any event, for pretty much the entire modern history of patent litigation, an infringement lawsuit could be filed pretty much anywhere, and by the late 2000s, “anywhere” meant “the Eastern District of Texas” something like one-third of the time, especially for lawsuits against Big Tech defendants. As one can imagine, this was less-than-popular with many of America’s most frequent patent defendants, especially since (as I’ll discuss in more detail in a later post) there grew to be an absolutely eye-popping difference in § 101 invalidation rates, stay-pending-IPR rates, and other key patent litigation metrics between the Eastern District of Texas, on one hand, and the Northern District of California on the other.14
“But BRIAN,” you might say, “what about the second question: ‘where a case should be filed’?”
That’s a good question. Thank you for asking that question. It was perfectly timed to move this narrative along. Almost as though it was planted.
Anyway—yes, venue isn’t just about where you can file a case (i.e., “proper” venue), but also about where you should file (or should have filed) a case (i.e., convenience). Even though venue may be technically proper in, say, Marshall, Texas, for a lawsuit against XYZ Co., it may be that it would be clearly more convenient to litigate that case in, say, San Jose, California. There’s a provision in the United States Code for this: 28 U.S.C. § 1404(a), which governs (and indeed mandates, under certain circumstances) transfers for convenience. Thus, even if you manage to file a lawsuit with proper venue, and survive a motion to dismiss on that basis, you may still face a motion to transfer under § 1404(a), which generally speaking is brought on the basis that it would be clearly more convenient to litigate the case in a different court, usually based on the location of relevant witnesses and documents (with some public interest factors like court congestion also pertinent).
The problem, however—at least from a California defendant’s perspective—is that a transfer motion is adjudicated by the judge who currently has the case, and the § 1404(a) “convenience” factors are incredibly discretionary. It can be very difficult to assign error to a district court that rules against you on a § 1404(a) motion—even though the Federal Circuit has for years been quite receptive to mandamus petitions based on transfer denials. Moreover, a district judge presiding over a transfer motion has no statutory “clock” requiring an up-or-down decision in any particular time frame; this allows, through natural triage (district judges are incredibly busy, no matter where they sit), the possibility that a complex, fact-heavy transfer motion might still be undecided months or years into a patent case, as it nears trial, and after several rounds of dispositive or quasi-dispositive15 motions and orders. In short, a litigant who thinks they’re in the wrong forum on convenience grounds could potentially have to litigate nearly all the way to trial before the district court even rules on the transfer motion they filed shortly after they appeared in the case.
And indeed, this situation in fact occurred a few high-profile times in the Eastern District of Texas, leading to a series of mandamus petitions to the Federal Circuit, and to much grumbling at the Chamber of Commerce (and other places where corporate interests scheme together)16 about how patent venue was broken and “something must be done!”
And eventually, after several abortive tries, something was done. Specifically, the Supreme Court flipped several decades of Federal Circuit precedent on patent venue and held, in TC Heartland LLC v. Kraft Foods Group Brands Inc., that the patent venue statute requires a defendant to have a “regular and established place of business” in a federal judicial district to get sued for patent infringement there.17 Although there was some ambiguity as to what a “regular and established place of business” meant, the new standard was pretty clear in most cases: if a defendant had a physical location or was incorporated in a particular judicial district, you could sue them for patent infringement there; if not, you had to sue them somewhere else.
The upshot of TC Heartland was that most defendants—especially Big Tech defendants—could not properly be sued for patent infringement in the Eastern District of Texas. In fact, many Big Tech defendants could potentially only be sued for patent infringement in Delaware (where most are incorporated) or California (where most are headquartered). The response to TC Heartland was immediate—something like 40% of all the patent lawsuits in the country were suddenly filed in the District of Delaware, which was already congested and quickly became overrun. By 2018, patent lawsuits were sticking out of every crack and crevice of the Wilmington federal courthouse, and Delaware district judges were increasingly rendering patent-hostile decisions, especially on § 101, to stem the tide. Nonetheless, no sane patent plaintiff was filing cases in the Northern District of California—where § 101 invalidations were still near-unanimous, and fee-shifting against patent plaintiffs was a regular occurrence.
As 2017 and 2018 passed by, there was no great option for a wide swath of would-be patent litigants—many of whom are independent inventors and/or small business owners who spent hundreds of thousands of dollars and several years developing and patenting technology that, for reasons other than ingenuity, they were unable to effectively monetize, and who now hope to recoup through licensing some of their investment before their patents expire.18
The two most natural options—the Northern District of California and the District of Delaware—had objectively terrifying metrics, especially on § 101. Other major tech hubs, such as Chicago, Austin, and New York City, were not particularly patent-friendly, and more to the point, they were busy urban dockets whose judges would not go out of their way to hold onto patent cases that, although perhaps properly filed in Chicago (or wherever), would arguably be better (i.e., more conveniently) litigated in California. In short, file in N.D. Cal. or D. Del.: stick, but probably lose your patent. File in N.D. Ill. or S.D.N.Y.: you have proper venue, but you’ll lose a transfer motion… and then probably lose your patent. Things weren’t great.
Then in late 2018, a lawyer who had litigated patents for twenty years was placed on the bench in the Western District of Texas—a judicial district that includes Austin and its suburbs, perhaps the second-largest collection of physical Big Tech campuses in the United States. That new judge, Alan Albright, wanted to hear patent cases. He put together special procedures to streamline and effectively adjudicate them. He hired law clerks with backgrounds and interest in patent law. And, by operation of law (not by any choice of Judge Albright’s), Alan Albright was the only district judge in the Waco division of the Western District of Texas—all patent cases filed in the Waco division would necessarily be assigned to Judge Albright.
The patentholding community—which had been waiting for years while their assets depreciated and expired, with no even semi-favorable place to seek to enforce them—immediately mobilized. Cases filed in Waco would go to perhaps the most sophisticated patent judge in the country; they would be filed in a district in which every major tech company had a regular and established place of business; and they would be adjudicated by a judge who wanted to hear patent cases.
Judge Albright’s docket exploded. Within three years on the bench, he was overseeing about a quarter of all the new patent cases filed in the United States (yes, I know I said this earlier, but see? we’ve now come full circle). And by 2021, patent litigants on both sides—and the Federal Circuit—had gotten to see a pretty large sample of how Judge Albright managed and ruled in patent cases.
On substantive issues, he was everything optimistic patent owners had hoped for: Judge Albright rarely granted § 101 motions, especially without discovery; he tended not to stay cases pending inter partes review; he brought cases to trial; and some of his trials ended in eye-popping verdicts (Morgan Chu, who is amazing in any venue and who once called my personal cellphone, secured a $2.2 billion verdict in Judge Albright’s courtroom in March 2021).
And much more controversially, Judge Albright tended to sit on transfer motions. Not just deny them (which he did frequently), nor grant them (which he also did, not that this received much coverage), but just… do nothing for months on end, as a case approached trial. This particular case management decision (again, when a district judge delays ruling on a motion, that district judge is definitively not “doing nothing” or “waiting”—they’re working on something else!) was repeatedly the subject of mandamus petitions to the Federal Circuit, many of which were granted. Ultimately, the situation got so bad that Judge Albright had to adopt a formal policy that he would provide an up-or-down ruling on transfer motions early in a case, and in particular before claim construction. I’m going to talk about other aspects of Judge Albright’s jurisprudence in future posts. But right now, I want to talk about his transfer decisions—and in particular, his choice to wait until late in a case to issue an up-or-down ruling on § 1404(a) transfer.
I’m not a fan. In fact, I can’t even begin to defend the practice—and it’s not because I don’t believe in Judge Albright’s substantive venue jurisprudence. I’ve read a bunch of Albright transfer decisions, and I think he does a very nice job—his decisions are insightful; they are detailed; and they are frequently unquestionably correct, and even more frequently not clearly incorrect.
However.
Sitting on transfer motions for months on end as a case passes through claim construction and gets close to trial is pretty indefensible as a matter of resource sequencing. It’s one thing to deny transfer motions on the merits; it’s quite another to simply not rule on them as a case speeds towards trial in what may very well be the wrong (well, from a § 1404(a) convenience, perspective, at least) forum. I am no fan of Big Tech companies litigating everything in their own backyard, nor of (statistically speaking) some of the Alice, stay-pending-IPR, and fee-shifting decisions that have emanated from the Northern District of California over the past decade, but when the relevant transfer factors, fairly weighed, make clear that it would be clearly more convenient to litigate in California rather than Texas, a California defendant deserves to litigate in California. And more to the point, California defendants19 deserve their day in Court—and an early one at that—on the § 1404(a) analysis. This is especially the case given that district courts in Texas—and especially Judge Albright—tend to clearly err in § 1404(a) analysis, based on Federal Circuit mandamus grant rates, at a relatively high rate, and venue matters in patent law.
All the above is not to say that Judge Albright is always wrong on § 1404(a) decisions; far from it. As far as I can tell, he has done a very good job for the most part analyzing tricky convenience decisions with often less-than-forthcoming litigants. For example, Apple, Samsung, Facebook (I will never call it Meta), and Google have literally tens of thousands of employees in the Western District of Texas. Yet every time on of those companies gets sued in Waco, they find a declarant who tells Judge Albright that not a single witness is anywhere in Texas; all those employees are just cannon fodder, or bots, or are working on entirely unrelated things, or whatever. And suddenly there are “documents” (ha! the next time a Big Tech company finds and produces hard copy documents will be the first, in my experience) and data that are stuck in California and can’t be transported across state lines for uhhhhhh reasons, and on and on. So I have a lot of sympathy for Judge Albright on his actual venue analyses, but all district judges, especially busy ones, get some things wrong (according to the whims of the Federal Circuit, which is by law The Decider here…), and to simply Not Decide Venue Motions in a rocket docket with giant interdistrict arbitrage on issues like § 101, IPR, fee-shifting, and overall appetite for patent trials is just not defensible.
And I say this as someone who would, as a patent litigant, fight like heck to stay in Judge Albright’s courtroom, not because I think he’s biased towards patentees on merits questions, but because he is (as far as I can tell) incredibly engaged in personally overseeing complex patent law questions in a way you just don’t often see elsewhere in the country. Again, Judge Albright wants to dive into patent cases. This is a feature—not a bug!—no matter what various bipartisan Senators and/or in-house counsel in Cupertino, Mountain View, and thereabouts may imply.
But to quote Spider-Man and/or me to my associates and colleagues in my own plaintiff-side practice, with great power comes great responsibility. If you want to do something distinctly impactful and overall against the grain on the plaintiff side of the v.—and this is the case for district judges with leery courts of appeals peering over their shoulder as much as it is for litigants—you have to do everything right. When you are building cases (or, for district courts, allowing big cases to go forward) against powerful defendants, your entire case will be judged and remembered by your worst or sloppiest strategic move: your worst argument in a motion, the one throwaway boilerplate paragraph misstating your injury in a Complaint, the one irrelevant test done by your expert that confounds your theory of the case, the one document you don’t prepare your client on before deposition. These missteps will come to define a case you spent hundreds, even thousands of hours building brick-by-otherwise-sturdy-brick.
So it is with Judge Albright’s jurisprudence, in my view. Ruling on venue motions last—many months into a case—for the first few years of his tenure, and making the Federal Circuit mandamus him over and over on it, really damaged the overall credibility of his otherwise quite defensible (and in many cases, very insightful) patent decisions. And it opened his courtroom up to attack by the powerful corporate interests who hated being there. And for now, they’ve won.
Anyway, soapbox put away. And I’ll abruptly end this post right here.
We have a lot more to cover. I hope you’ll stay with me for it.
Joke’s on you—I don’t get paid at all!
*after someone whispers in my ear* Ah yes, I guess the joke is actually on me.
Does a patent claim patentable subject matter under § 101 of the Patent Act? You, the district judge, will need to evaluate, as a matter of law, whether the patent claims something that is “well-understood, routine, and conventional.” Does that same patent claim non-obvious subject matter under § 103 of the Patent Act? You, the district judge—but maybe not you, the district judge, because maybe three administrative patent judges—will have to evaluate, as a matter of fact, whether the patent claims (for example) prior art elements combined “according to known methods to yield predictable results.” Both inquiries, by the way, will have already been ostensibly passed upon by the US Patent and Trademark Office, but the level of deference you, the district judge, should accord to the PTO’s prior determinations depends upon what inquiry you’re evaluating—and by the way, the Federal Circuit, your only source of guidance, has a delightful habit of creating internal circuit splits on virtually any complicated question repeatedly posed to it. Oh, also, you’ll have to decide when all these questions are actually ripe for your decision—because the defendants will definitely move at the Rule 12 stage to dismiss under § 101, but the parties will probably dispute whether claim construction (i.e., figuring out what various words and phrases in a patent’s claims actually mean, in a patent’s peculiar context) bears on the § 101 inquiry.
One or more of your patent defendants in any given district court case will, with near certainty, file a petition for inter partes review—an administrative challenge to the validity of the patents being litigated in your courtroom—about halfway through your case schedule. This means that on the verge of a jury trial in your courtroom (the inter partes review will, if instituted, take about a year to reach a final decision), three administrative judges in Virginia may declare that the patents about to go on trial in your courtroom are invalid (or maybe only partly invalid, but to be clear, the patent plaintiff will have an appeal of right to the Federal Circuit, and sometimes patent plaintiffs do win on appeal, several years later…). You, the district judge, will get to decide about halfway through the case whether to stay some or all of discovery—and delay trial indefinitely—because of this co-pending administrative challenge.
Yes, dear reader—corporations are people! I don’t make the rules.
👏 Corporations 👏 are 👏 people!
💸
There were two. Can I call the a doup? I refuse to look this up. In any event, if a doup falls in my Substack and no one reads it, does it even really matter?
Read: Tom Tills (R) and Pat Leahy (D), the senders of the November 2021 letter. So I think this could probably be more accurately phrased as “Senator from both sides of the aisle,” but again, I just work here.
As I go through this, I realize I haven’t really established the “sudden[ness]” of the Albright docket’s rise. Let’s talk about that in the next section. For now, it should be sufficient to state that Judge Albright was sworn in on September 18, 2018; it took just three years on the bench for him to attract 24% of all new patent cases filed in the United States, and less than four years on the bench for his docket to get shut down by (interestingly) the very same judge that swore Albright in four years earlier.
There is, in determining whether a case is properly filed in a particular court, an overlapping concept of jurisdiction—both subject matter and personal—but we’re not going to talk about that here, not because I don’t love writing about jurisdiction (see, e.g., seventeen thousand words in my firm’s Earl v. Boeing case…), but because today we’re talking about venue! V 👏 E 👏 N 👏 U 👏 E!
I use the term “worthwhile” here because, realistically, it doesn’t make economic or practical sense to sue very small/minor infringers for utility patent infringement, at least in federal district court. Relatedly, it also doesn’t make economic sense to sue even relatively large infringers from whom you will never recover damages, because litigation is, even for plaintiffs, very expensive and time-consuming. Note too, that every time you sue for patent infringement, you imperil your patent asset—and perhaps its whole family—by putting its validity at issue. Validity decisions are notoriously noisy and, on net, error-prone; good patents get invalidated all the time, given that a single asserted patent claim is frequently challenged multiple times in multiple concurrent forums, and all it takes is one invalidation on one ground to ruin a claim for most of its lifetime. So anyway, this is (one reason) why the same large companies tend to get sued again and again for patent infringement—it’s not a vendetta; it’s economics. But more on this (a lot more on this) later in this series.
I say this not as an aspersion—I am, indeed, a plaintiffs’ lawyer! But it would be inaccurate to say that when selecting a forum, a plaintiff does not try to figure out where their case will have the best shot of being heard fairly and fulsomely on the merits. Defendants always walk in the courtroom with a credibility edge. Every time. Everywhere. Simply getting an interested, engaged trial court is all a good plaintiff really wants, and it’s worth fighting for.
By 2017, approximately two years after the Supreme Court’s Alice decision regarding § 101 of the Patent Act (again, we’ll talk about this in eye-watering detail later), Northern District of California judges were granting § 101 motions—and thereby invalidating asserted patents—at an 80% rate, while Eastern District of Texas judges were granting such motions approximately 40% of the time. This doesn’t control for patent quality or other factors, and sample bias could easily be a factor (as could sample size), but the widespread perception among plaintiffs and defendants alike (believe me, I was practicing in this area at the time—it was a thing) was that venue was effectively dispositive of the § 101 inquiry in the early, super-uncertain wake of the Supreme Court’s Alice decision.
E.g., claim construction.
I’ve never been invited to such spaces, but I assume based on long experience with corporate defendants litigating in bizarrely similar ways that these people (yes, “people"—see n.6, supra) definitely talk to one another.
There’s an exception for foreign defendants, but I’m not going to explain it here. Just know that it exists (and that I won’t tell you about it).
We’ll talk at great length about the details of this—including whether this is normatively something we should encourage, and how—later on.
I use “California defendant” merely as an example. In theory, patent defendants in Texas could be trying to transfer to somewhere other than California. In practice, that never has or will happen, but I'm convinced the theory is sound.