Client-Centered Intellectual Property Solutions

If patent owners can’t mess with the Western District of Texas, then what next?

On Behalf of | Aug 2, 2022 | Patent Litigation |

On July 25, 2022, Chief Judge Orlando Garcia of the Western District of Texas effectively stripped the Waco Division of its dominance in patent cases by randomizing the judge assignment of patent cases filed in that division. Consequently, patents owners can no longer be certain that they will draw Judge Alan Albright—the only district judge in the Waco Division—for their cases. While the Waco Division may continue to maintain its newfound relevance as a patent litigation venue, like they did immediately after the Supreme Court’s TC Heartland ruling, patent owners may begin to look elsewhere to file their cases.

2018 was an uncertain time for patent owners and litigators in Texas, and Judge Albright got it. Sworn in that fall as the sole district court judge in the Waco Division, and a former patent litigator himself, Judge Albright understood that the Supreme Court’s 2017 patent venue decision in TC Heartland created a void for patent owners. For decades prior, the Eastern District of Texas had been a haven for patent owners seeking to get to trial quickly in a venue friendly to their property interests, and before a judge receptive to their case. The Eastern Texas had local patent rules that drove disputes to quick resolutions, and the judges had considerable subject-matter expertise. With TC Heartland, the haven evaporated because many accused infringers lacked a “regular and established place of business” in the district required to satisfy the requirements of 28 U.S.C. §1400(b)—the patent venue statute.

Right away, Judge Albright started filling the void. He promulgated his own patent rules designed to bring cases to trial quickly. He expressed interest in hearing patent cases. As the sole judge in the Waco Division, he would necessarily hear every case filed in that division. Moreover, the Western District of Texas did not have the Eastern District of Texas’ TC Heartland roadblock. It is geographically gigantic. Within its borders lie several urban areas, including Austin—a favorite city for tech companies to set up regular and established places of business. Patent owners could receive the predictability and benefits of the Eastern Texas without the venue issues.

Judge Albright built it, and the litigators came. In the months between TC Heartland and his swearing in, the Western District received 3% of infringement suit filings. Today, 26% of open infringement suits are in the Western District. Over half of those are on Judge Albright’s docket.

Where are patent owners to go now? Judge Garcia’s order will change decision matrixes and may drive suits out of the Western District.

Most probably, emergent filing patterns occurring immediately after TC Heartland will resume. From June 2017–September 2018, the greatest infringement filing increases occurred in the District of Delaware and the Northern District of California as a percentage of national infringement filings, both nearly doubling. This trend was predictable, given the population of Delaware corporations and Northern California tech company headquarters. At the same time, the Eastern District of Texas still saw 13% of all filings, down from the 28% it received before TC Heartland. In a similar fashion, it is likely that new patent case filings in the Waco Division will drop.

Patent owners will be dissuaded from filing cases in the Waco Division because it is no longer guaranteed that their cases will be assigned to Judge Albright, and therefore be governed by his patent rules. Not only does Judge Garcia’s order create uncertainty as to who the judge will be, but several of the eleven other Western District judges who could be assigned a patent case filed in Waco have limited or no patent case experience. Additionally, patent owners will be deterred by the risk that the jury pools could be vastly different across the different divisions of the Western District. Indeed, filing a patent case in Waco could result in the case being transferred to El Paso, which is over 600 miles away. In light of this uncertainty, patent owners will be faced with the choice of filing their cases in well-established patent venues, such as the District of Delaware or the Northern District of California, continuing to file their cases in the Western District of Texas in hopes that they will be assigned to a judge who is receptive to handling patent cases. Or an entirely new preferred venue for patent cases could emerge. But one thing remains certain—patent owners will continue to look for venues that are most favorable for their cases.