Following a year of mandamus pushback over Western District of Texas Judge Alan D. Albright’s handling of transfer motions, the Federal Circuit has ended 2021 with a rare affirmance, albeit principally with respect to the threshold issue of whether venue lies in a particular district in the first place (rather than with the respect to the weight given to various factors in a convenience analysis). That decision issued at the end of December, following a November in which Judge Albright reversed his own earlier ruling in a separate case that had denied a convenience transfer—but that reversal contains some language suggesting that Judge Albright will continue to scrutinize motions to transfer for convenience heavily. These latest venue developments come as Judge Albright ended 2021 with the most patent litigation before him of any district judge, according to RPX’s upcoming report on 2021 and Q4 litigation trends—a status that has attracted scrutiny from Congress.

In In re: Medtronic, a nonprecedential decision handed down on December 27, the Federal Circuit refused mandamus to two Medtronic defendants that sought transfer out of West Texas—first, based on improper venue there and, in the alternative, for convenience. The opinion denying mandamus turned, in each circumstance, on whether venue properly lies in West Texas and/or in the proposed transferee district, the Northern District of California. Among other things, per the Federal Circuit, a San Antonio, Texas facility listed as the “Medtronic Location” on the company’s website (defeating the argument that Medtronic has no regular and established place of business in West Texas) and an express Medtronic statement that it “does not believe that it is subject to venue in the Northern District of California under the law as correctly applied” (undermining any argument that suit could have been brought there) precluded mandamus relief as to either issue.

As RPX has extensively reported throughout the past year, Judge Albright and the Federal Circuit have been engaged in a months-long back-and-forth concerning proper convenience transfer analyses. In light of one of those clashes, Judge Albright reversed an earlier ruling denying a convenience transfer (simultaneously mooting a mandamus petition filed in that litigation over that denial) in a case brought there by Open Text against Alfresco Software. Albright conceded that in that earlier ruling in the case, he had erred in requiring the movant to prove that witnesses were unwilling under the “compulsory process” factor within the required convenience analysis. Transfer to the Central District of Texas resulted. 

Note, however, that while Judge Albright also treated some of the numerous prior art-related witnesses named by the defendant as unwilling, he declined to consider the entire set of such witnesses as unwilling, citing their irrelevance to the case. The court chided the company for what appeared to be transfer-analysis manipulation:

This Court is wary of the tactics Alfresco employs here. It concocts 37 prior art witnesses, many of whom are inventors of the same patent, that all live in California or Washington. Although it may be true that the only prior art witnesses in this case live on the West Coast, such an approach is prone to exploitation. A party who seeks to manipulate venue could simply throw the kitchen sink of potential prior art witnesses, and a district court would be handcuffed in scrutinizing whether they would actually be called at trial. These tactics should be discouraged, especially when the party has failed to show how the prior art is relevant.

Judge Albright’s treatment of such witnesses, particularly in light of this language, suggests that defendants in his courtroom will continue to face an uphill battle when seeking a transfer for convenience elsewhere.

As noted in RPX’s upcoming Q4 report, the data show that Judge Albright saw far more patent litigation than any other district judge in 2021, with 19% of all litigation falling in his courtroom. This is no accident, as Judge Albright has openly sought to attract patent cases to his district since taking the bench—including via outreach to IP industry trade groups and in various media appearances.

Top Judges by Defendants Added to Overall Patent Litigation in 2021

Judge Albright’s overt efforts to seek out patent litigation to his district, as well as handling of convenience transfers, have led to questions from some members of the Senate—including some, like Senators Thom Tillis (R-NC) and Patrick Leahy, who complained about both practices in a letter to Chief Justice John Roberts.

Stay tuned for the full report for more on the latest developments impacting venue, as well as a variety of other trends shaping patent litigation and the patent marketplace.