TEXAS: An Introduction to Texas

The Waco Intervention 

The most significant development in Texas patent law during 2022 was centered in the Waco Division of the U.S. District Court for the Western District, where all new patent cases became subject to random assignment on 25 July.

During 2021, there were 1,533 patent cases filed in Texas, representing roughly 38% of the 4,076 new patent cases filed nationwide. The Western District of Texas was the busiest in the nation, with 964 new cases. The Western District outpaced other heavyweight patent venues, including the District of Delaware (889), Eastern District of Texas (449), and Northern District of California (185).

The trend of Texas-centric patent filings in 2021, particularly in the Waco Division before Judge Alan Albright, fueled lobbying efforts by big tech companies that were and are determined to change the landscape. These efforts resulted in Senators Patrick Leahy of Vermont and Thom Tillis of North Carolina – who were leading a subcommittee on intellectual property for the U.S. Senate Committee on the Judiciary – sending a scathing letter to U.S. Supreme Court Chief Justice John Roberts about Judge Albright and “the extreme concentration of patent litigation” in his Waco court.

The senators requested that Justice Roberts “direct the Judicial Conference to conduct a study of actual and potential abuses that the present situation has enabled.” In his 2021 annual report on the federal judiciary, Justice Roberts then stated that the U.S. Judicial Conference would investigate “judicial assignment and venue for patent cases.”

Several months later, Western District Chief Judge Orlando Garcia entered an order stating that “all civil cases involving patents [ ], filed in the Waco division on or after July 25, 2022, shall be randomly assigned to the following [12 total] district judges of this Court.” Judge Alia Moses, who succeeded Judge Garcia as chief judge, entered an order in December to reaffirm the random assignment of patent cases filed in Waco.

To determine how the random assignment protocol affected new patent filings in Texas in 2022, it is important to compare the number of filings before and after Judge Garcia’s 25 July order. Before the order, roughly 40% of all new patent cases in 2022 were filed in Texas (876 out of 2,161). The most popular districts in the nation before the order were: Western District of Texas (537 new cases); Delaware (404); Eastern District of Texas (262); and Central District of California (101).

After Judge Garcia’s order, roughly 36% (599 out of 1,662) of all new patent cases through the end of 2022 were filed in Texas. The most popular districts nationwide after the order were the Western District of Texas (330 cases), Delaware (264), the Eastern District of Texas (210), and the Central District of California (122).

Perhaps more interesting is that Judge Albright was assigned roughly 55% (159 out of 288) of the cases filed in the Western District after the random assignment setup was implemented. While that number might seem high to some, there are several criteria one must consider.

For example, of the 159 Waco patent cases filed and assigned to Judge Albright after the order, a staggering 118 (74%) were accompanied by a “Notice of Related Case,” pursuant to Local Rules. Another 30 cases (19%) lacked the notice but were related to a co-pending case involving at least one common patent. Those cases also were assigned to Judge Albright.

In stark contrast, when considering only patent litigation filed in Waco without notice of a related case and without a co-pending case sharing at least one patent already before the judge, Judge Albright received approximately 6.3% of new Waco cases. This is just shy of the 8.3% he would be expected to receive with an even distribution of cases amongst the 12 judges listed in the 25 July order.

The other half of the equation puts the random assignment order in an even more precise context. On 24 July, all judges in the Western District other than Judge Albright had a collective total of 51 pending patent cases. By comparison, Judge Albright had 856 pending patent cases, and Chief Judge Rodney Gilstrap had 390 in the U.S. District Court for the Eastern District of Texas.

Following the order, the other Western District judges picked up 165 newly filed patent cases and ended the year with 159 pending patent cases. In other words, with one order, the patent docket of the rest of the Western District judges tripled. One example is Chief Judge Moses, who had precisely zero patent cases since taking the bench but ended the year with 12 pending patent cases. The other Western District judges’ year-end totals for patent cases were: Judge Lee Yeakel (49); Judge Robert Pitman (47); Judge Roberto Garcia (16); Judge Xavier Rodriguez (16); Judge Fred Biery (15); Judge David Counts (13); Judge Kathleen Cardone (11); Judge David Ezra (9); Jason Pulliam (6); and Judge Frank Montalvo (3). Judges Counts and Cardone also adopted special patent rules in their courts.

Of similar interest, many Texas patent cases were again subject to motions seeking to transfer to a more “convenient” litigation venue, often the Northern District of California. Last year, 234 Texas cases were subject to venue transfer motions, slightly down from 275 cases the previous year. And in 2021, the Federal Circuit handed down a record 29 venue transfer mandamus decisions, many of which ordered Texas federal courts to transfer cases out of state. However, that number was reduced to 18 mandamus decisions in 2022. This decrease can be attributed partly to the parties becoming more sophisticated in conducting venue discovery and briefing the motions, leading to more reliable outcomes and more cases remaining in the district where they were filed.

Against this smorgasbord of data, several conclusions emerge, including some that can only be characterized as preliminary given the fluidity of the situation. The main takeaway is that despite the new random assignment order, the Waco Division of the Western District of Texas remains a popular venue for patent litigation.

It is also apparent that Waco’s continued popularity is primarily driven by parties filing follow-on “related cases” assigned to Judge Albright non-randomly. Now, a party who files a new patent case in Waco that is not related to a pending case has a low chance (about 6.3%) of being assigned to Judge Albright. As a result, the patent dockets of other Western District judges have grown significantly, including some judges adopting their own patent rules. This year, venue transfer will remain a heavily litigated issue in Waco after cooling off slightly since last year’s high-water mark.