District Judge Alan D. Albright has moved forward with his recently announced plan to resume jury trials in the Waco Division of the Western District of Texas despite the ongoing COVID-19 pandemic. On October 1, he presided over jury selection for what will be his first-ever patent jury trial, in litigation filed by inventor-controlled MV3 Partners LLC against Roku (6:18-cv-00308). While the decision to hold this trial is significant on its own, the leadup to jury selection in this case was not without its own intrigue. Shortly before the pretrial conference, Judge Albright ruled on a series of pending motions in limine, barring any characterization of the plaintiff as an NPE as well as any discussions of alleged forum shopping, among other topics, during voir dire and opening arguments. The ruling comes as the Federal Circuit, also last week, declined to rehear a recent decision that faulted Judge Albright for denying a convenience transfer in another campaign, amidst a broader debate over whether his treatment of such motions has unduly encouraged plaintiffs to pack the Waco Division with patent cases.

Judge Albright greenlit the resumption of both bench and jury trials as soon as October 1—the day the MV3 Partners jury was empaneled—in a September 23 divisional standing order, citing statistics showing that “Waco Division counties have just 2.44%” of the active cases in Texas. The order, which followed another one that originally set the trial resumption date on September 1, also notes the precautions that the Waco Division is prepared to take in order to “ensure trials can be conducted safely”: “The court is prepared to mandate appropriate distancing in the courtroom and around the courthouse, limit the number of individuals in the courtroom, provide face masks or face shields to jurors, supply hand sanitizer, and install plexiglass shields where beneficial and appropriate”. The September 23 order further identified four categories of people who are not permitted to enter the courthouse “absent a specific order from the Court”, including anyone diagnosed with COVID-19, anyone quarantining or living with such individuals, or anyone with certain known symptoms of the disease.

Judge Albright has since provided further details on the court’s precautions, stating in a recent discussion panel that the witness stand will be cleaned between each witness (who, according to his September 23 order, “may speak unmasked, while maintaining all social distancing protocols”) and that jurors, who are to remain masked, shall each be separated by two chairs. As many as “40 masked people will be able to watch from the audience and still have 10 feet between each other”, according to a summary of his remarks. Moreover, Judge Albright reportedly noted that while “concerned potential jurors” had been calling the Waco clerk’s office, none had apparently opted out of jury service once informed of the court’s precautions.

With the October 1 empanelment of a jury in the MV3 Partners case, the docket now indicates that trial is set to begin on Monday, October 5. The trial had originally been scheduled to begin in June, but after denying the defendant’s initial request for a continuance in light of the pandemic, Judge Albright subsequently pushed back the trial date four times. In granting the last of those continuances on August 10, Judge Albright expressed that he was “surprised[,] as he thought everyone was on board with moving forward in September”, but nonetheless acknowledged the company’s concerns in what would be the case’s last continuance before trial.

Judge Albright also resolved a series of lingering issues leading up to trial in a single September 29 order that mainly focused on the parties’ motions in limine—dispensing briefly with each ruling with little or no explanation. Perhaps the most notable of those addressed was MV3 Partners’ first motion in limine, which in part sought to “exclude reference to MV3’s business activities and structure, including the use of any derogatory, disparaging, and/or pejorative references to MV3 as a patent troll, patent assertion entity, and/or a non-practicing entity [NPE]”. In its opposition to this request, Roku argued in particular that it should not be prevented from referring to MV3 as an NPE, asserting that the term NPE is a “neutral term and not pejorative”—and that identifying the plaintiff as such is “accurate”. In support of that point, the company cited a variety of cases in which courts allowed references to a plaintiff’s NPE status. Additionally, Roku further argued that one of the decisions cited by MV3 Partners, a ruling in Rembrandt Wireless Technologies v. Samsung, actually supported the defendant’s position—as the court in that case explicitly declined to bar the “[d]efendants from arguing that Plaintiff is a patent assertion entity that does not manufacture or sell products in this field”. However, Judge Albright granted MV3’s motion to exclude such references.

Roku also pushed back against MV3’s request to “preclude reference to prior litigations involving MV3 witnesses”, including Jared “Jerry” E. Abbruzzese, Sr., the inventor of the asserted patent who formed MV3—arguing that this litigation provides “context to the business history of MV3 and its members”. In particular, Roku noted that Abbruzzese “has been the subject of several lawsuits, including serving as a central witness in a trial involving a New York state senator, involving allegations of corruption, fraud, and deceit”. Judge Albright also granted MV3’s motion in limine with respect to such litigation, as well as its request to exclude details of its “financial arrangements with counsel” and to exclude references to how potential damages would be distributed (including among the plaintiff’s witnesses).

Perhaps the portion of MV3’s first motion in limine of broadest relevance was its request to bar any mention of its “allegedly engaging in forum shopping or litigation abuse by selecting the Western District of Texas as the venue for this action”, along with related references to the popularity of the Western District and its suitability as a venue for this action. The defendant agreed in its opposition not to make any such references, and Judge Albright’s order granted that portion of MV3’s motion in limine.

While the parties here resolved that particular issue, litigants in other campaigns have pushed back against Judge Albright’s handling of certain venue issues—a topic of particular relevance for frequent defendants, given the Western District’s relatively newfound status as the most popular venue for utility patent litigation. More specifically, Judge Albright has been interpreting the factors for granting transfers for convenience in a manner that imposes a particularly “significant burden” on defendants seeking an exit from his district. In June 2020, Apple—objecting to one such decision in litigation filed by Fortress Investment Group LLC subsidiary Uniloc 2017 LLC, a ruling that at the time had not yet received an explanatory opinion—sought the Federal Circuit’s intervention through a petition for writ of mandamus, arguing that Judge Albright’s posture on the issue contributed to judge-shopping. On June 22, over 40 days after denying Apple’s motion at a hearing, Judge Albright issued an order outlining his reasoning, declining to “follow the crowd” by “blindly” adopting related factual findings and rulings from other judges.

For more details on that litigation, see “Judge Albright Declines to ‘Follow the Crowd’ on Convenience Transfers” (June 2020).

Although the Federal Circuit has not yet ruled on Apple’s mandamus petition, it has been critical of Judge Albright’s handling of a convenience transfer motion in litigation filed by another NPE, SynKloud Technologies, LLC. On July 28, the appeals court overturned Judge Albright’s denial of such a transfer motion filed by Adobe, holding in part that he had “failed to accord proper weight to the convenience of the transferee venue”; “that he had “failed to weigh the cost of attendance for willing witnesses factor”; and that he had erred by justifying the denial of transfer on his district’s “perceived ability to more quickly schedule a trial”. On September 30, the Federal Circuit denied SynKloud’s motion for a panel or en banc hearing of that decision.

For more details on the Federal Circuit’s opinion in that case, see “Federal Circuit Faults Judge Albright for Denying Convenience Transfer” (July 2020).

Finally, Judge Albright’s continued emphasis on his district’s quick time to trial has recently gained additional significance for defendants filing validity challenges before the Patent Trial and Appeal Board (PTAB). Earlier this year, the PTAB designated as precedential a series of rulings, establishing that the Board may deny institution for an inter partes review (IPR) based on the status of parallel district court litigation over the same patent—with the timing of a scheduled trial one of the factors that the Board may consider. On August 31, Alphabet (Google), Apple, Cisco, and Intel challenged those decisions—collectively known as the “NHK-Fintiv rule”—in a lawsuit jointly filed against Andrei Iancu (5:20-cv-06218) in his capacity as the Director of the USPTO. Their complaint alleges that the NHK-Fintiv rule violates the America Invents Act (AIA), is arbitrary and capricious, and is procedurally unsound, not having been “adopted through notice-and-comment rulemaking” under the Administrative Procedure Act (APA).

See “Coalition of Tech Plaintiffs Challenge Discretionary Denials Under the PTAB’s ‘NHK-Fintiv Rule’” (September 2020) for more information.