What’s Happening in the Western District of Texas? Patent Litigation Update

In prior alerts, we discussed local practices and emerging trends in the Western District of Texas—now the busiest court in the country for patent cases. For example, in October 2020, we looked at motions to transfer (the granting of which was quite uncommon in Judge Albright’s court at the time) and trial outcomes (on which there was not much to report as the first case was just being heard).

Six months later, we see some movement on both fronts.

WDTX Motions to Transfer

Judge Albright’s reluctance to transfer cases out of the Western District of Texas has not gone unnoticed by the Federal Circuit. Writs of mandamus are considered extraordinary and rare. But since November 2020, the Federal Circuit has granted four petitions for mandamus regarding motions to transfer out of the Western District of Texas. Moreover, in considering the petitions for mandamus, the Federal Circuit has become increasingly critical of Judge Albright’s handling of inter-district transfer motions.

A common complaint in defendants’ petitions is that fully submitted motions to transfer languish for months as cases proceeded on the merits. Indeed, in a recent decision on a petition for mandamus, the Federal Circuit stated the “the district court’s handling of the transfer motion up until this point in the case has amounted to egregious delay and blatant regard for precedent.”i In that case, the Federal Circuit ordered a stay in all other proceedings pending resolution of the motion to transfer. In another case a month later, the Federal Circuit granted mandamus, once again ordering the case stayed until a transfer motion was decided,ii further noting that the district court cannot delay resolution of a transfer motion and then rely on familiarity with a case gained during that delay as a factor against transfer. Judge Albright subsequently denied the motion to transfer, but the movant petitioned for mandamus a second time, on the merits of its transfer motion, and that petition was also granted, with the Federal Circuit concluding that “the district court clearly abused its discretion in denying transfer under § 1404(a).”iii

In response to the Federal Circuit’s criticism about some delays in deciding transfer motions, Judge Albright issued a standing order regarding motions for inter-district transfer.iv This order directs the moving party to provide a status report indicating the motion is fully submitted and ready for resolution no later than six weeks prior to the claim construction hearing. The order also indicates the motion to transfer will be resolved prior to the scheduled date of the claim construction hearing, or the claim construction hearing will be postponed. The Federal Circuit has since cited Judge Albright’s order with approval in a recent denial of a petition for mandamus.v

While Judge Albright may still be inclined to exercise his discretion to maintain a case in the Western District of Texas, his new standing order should ensure the motions are heard earlier in the proceedings.

WDTX Trials

Judge Albright presided over his first jury trial in a patent case in October 2020. That case resulted in a defense verdict. Since then, there have been three more jury trials in Waco—an eye-popping verdict for a plaintiff, exceeding $2 billion, followed by two more defense verdicts.

Given the fact-specific nature of patent cases and the limitless variables that make up a jury verdict, four cases do not provide enough data to establish a trend, but the early returns will certainly provide some comfort to defendants who choose to take their case to a jury.

The WDTX is continuing to draw large numbers of new patent cases and there is no indication of that trend slowing. Judge Albright, a relatively new district court judge, but experienced magistrate judge and patent trial lawyer, continues to embrace the role of his court as a patent litigation destination and adapt his rules and practices to address concerns from the Federal Circuit. Although the sample size is small, juries in Waco seem balanced and have yet to demonstrate a clear leaning toward plaintiffs or defendants. In general, the Western District of Texas continues to develop as a level playing field with well-defined rules of the game.

i In re: SK Hynix Inc., 2021-113, February 1, 2021.

ii In re Tracfone Wireless, Inc., 2021-118, March 8, 2021.

iii In re Tracfone Wireless, Inc., 2021-136, April 20, 2021.

iv Standing Order Regarding Motion for Inter-District Transfer, March 23, 2021.

v In re Apple, Inc., 2021-135, April 9, 2021.

Key Contacts

Paul D. Ackerman, Partner

Gregory L. Porter, Partner

Tonya M. Gray, Partner

View full article HERE on the Hunton Andrews Kurth website.