Since Judge Alan D. Albright took the bench in September 2018, the number of patent infringement cases filed in the Waco Division of the United States District Court for the Western District of Texas has risen dramatically. There are two likely reasons for this rise in patent filings: (1) Judge Albright used his experience as an IP attorney and former U.S. Magistrate Judge to develop a patent-savvy environment, with local rules that support a speedy patent-litigation process, and (2) TC Heartland 1 significantly limited the availability of some patent-litigant favored venues.
Judge Albright is no stranger to the federal courts. Prior to his nomination on January 24, 2018, Judge Albright practiced as a commercial trial lawyer for over 20 years, taking numerous patent infringement cases through trial in federal courts across the country. Prior to that, he served as a U.S. Magistrate Judge in the Western District of Texas from 1992 to 1999. After graduating from the University of Texas School of Law in 1984, he served as a clerk in the Western District of Texas with Judge James R. Nowlin for 2 years.
While the Eastern District of Texas is still a popular filing venue for patent litigants, the number of filings there has fallen since the TC Heartland decision. If the current trend continues, the number of filings in the Western District of Texas may soon surpass the Eastern District. Prior to Judge Albright’s nomination, only ten patent cases had been filed in the Waco division in its entire history. In 2016 and 2017, only five cases were filed in Waco. In 2018, after Judge Albright was confirmed, 26 patent cases were filed. And, so far this year, 47 patent cases have been filed in Waco, accounting for 85% of the patent filings in the Western District of Texas.
Before TC Heartland, parties could be sued in any district where they were subject to the Court’s personal jurisdiction. This meant that most companies of any significant size could be sued in any venue in the country. As a result, venues like the Eastern District of Texas became desirable places to file patent infringement suits through, inter alia, the adoption of specific local patent rules. However, after TC Heartland, the availability of these venues became more limited. The Supreme Court in TC Heartland held that 28 U.S.C. § 1400(b) was the exclusive venue provision for patent infringement cases. 2 The patent venue statute, 28 U.S.C. § 1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” 3 Waco’s location within the Western District of Texas is now a prime venue for patent suits. As shown below 4, the Western District is sprawling, and includes San Antonio, Austin, and El Paso, the 2nd, 4th, and 6th most populous cities in Texas, respectively.
Austin hosts hundreds of tech companies 5—sometimes nicknamed the “Silicon Hills” for the number of high-tech companies in the area—while San Antonio and El Paso are also home to many big businesses. As a result, numerous companies have “a regular and established place of business” in the Western District of Texas, easily satisfying the venue statute. Since venue is determined on a district-by-district basis, a party can be sued in any division within the district, making Waco an option for many potential lawsuits. And, Waco has only a single Article III judge. So, if a party files in Waco, Judge Albright is all but guaranteed to be assigned to the case.
Judge Albright has specifically commented on the viability of the venue for patent infringement cases, noting to a local Waco newspaper that, “[i]f someone is talking to their client about where to file their lawsuit, I want them to think that Waco is a good decision.” 6 After taking the bench, Judge Albright quickly started the process of drafting a standing order to lay out how patent cases would be handled in his courtroom. Using his own experiences from practice, and in conjunction with input from an advisory panel made up of patent counsel for both sides of the bar, Judge Albright drafted a standing order 7 for patent proceedings, along with a proposed scheduling order. The order sets forth a number of important provisions for patent cases in his court, including policies regarding claim construction, discovery disputes, and summary judgment practice. Some takeaways from Judge Albright’s order are that Markman hearings will be held early on and discovery will be very limited until after claim construction rulings. Further, a case should proceed relatively quickly to trial, with a trial likely occurring before a potential Inter Partes Review final written decision.
The Order sets forth the schedule of the case through jury selection and trial and outlines some key deadlines for cases. Some important dates between the Case Management Conference and the Markman hearing are:
- 10 days before Case Management Conference: Preliminary Infringement Contentions
- 7 weeks after Case Management Conference: Preliminary Invalidity Contentions
- 9 weeks after Case Management Conference: Claim construction exchanges begin
- 14 weeks after Case Management Conference: Claim construction briefing begins
- 23 weeks after (or earlier) Case Management Conference: Markman hearing
While not in the order, Judge Albright has indicated that he will try to issue claim constructions at the hearing, with a written order following within 3-4 weeks. And, while not a hard rule, he prefers that parties focus on the top ten terms during the Markman hearing. Conveniently for Austin attorneys, Judge Albright has stated that full-day Markman hearings can be held on Fridays in Austin.
Judge Albright has also outlined some key deadlines that occur after Markman and through trial:
- 1 week after Markman hearing: Fact discovery begins
- 8 weeks (2 months) after Markman hearing: Final Contentions
- 24 weeks (6 months) after Markman hearing: Fact discovery closes
- 25 weeks after Markman hearing: Opening Expert Reports
- 29 weeks after Markman hearing: Rebuttal Expert Reports
- 32 weeks (8 months) after Markman hearing: Expert discovery closes
- 34 weeks after Markman hearing: Dispositive motions/Daubert motions deadline
- 43 weeks (approximately 10 months) after Markman hearing: Final Pretrial Conference
- 44-47 weeks (approximately 11-12 months) after Markman hearing: Jury Selection/Trial
The order also sets forth discovery provisions. Most discovery will be stayed until after the Markman hearing, unless the requesting party articulates a need for it. He will not permit motions to compel discovery until after all parties have conferred and contacted his chambers in an attempt to resolve the issue. Further, his default discovery rules permit 30 Interrogatories, 45 Requests for Admission, 75 Requests for Production, 70 hours for fact depositions, and 7 hours per report for expert depositions.
Notably, two Baker Botts attorneys are members of Judge Albright’s attorney advisory panel. And, Baker Botts has had success before Judge Albright during a recent Markman hearing, in addition to other experience appearing in his Court. The firm also has close to 100 IP attorneys in its Austin, Dallas, and Houston offices. Given the firm’s familiarity with Judge Albright’s rules and procedures, experience in his court, and Texas roots, Baker Botts is well suited to serve a client's needs in Waco.
1 TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017).
2 137 S. Ct. at 1519.
3 Id. at 1516 (emphasis added).
4 Offices of the Western District of Texas, The United States Attorney's Office Western District of Texas (2018), https://www.justice.gov/usao-wdtx/offices-western-district-texas (last visited May 13, 2019).
5 Major technology companies with offices in the Austin area include Advanced Micro Devices, Apple Inc., ARM Holdings, Cisco, Dell, eBay, ESO, Facebook, Google, IBM, Indeed, Intel, Silicon Labs, Texas Instruments, Oracle Corporation, and VMWare. See Kelly O'Halloran, The Top 100 Digital Tech Employers in Austin (2016), https://www.builtinaustin.com/2016/10/01/Austin-top-100 (last visited May 13, 2019).
6 New federal judge, high court ruling could make Waco hotbed for patent lawsuits, Waco Tribune-Herald (2019), https://www.wacotrib.com/news/courts_and_trials/new-federal-judge-high-court-ruling-could-make-waco-hotbed/article_9cc6d86c-8dfc-5fb6-800e-917dbd0107e3.html (last visited May 13, 2019).
7 Standing Orders, U.S. District Court Western District of Texas, https://www.txwd.uscourts.gov/judges-information/standing-orders/ (last visited May 14, 2019).
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