By Paul R. Gugliuzza, Professor of Law, Temple University Beasley School of Law and Jonas Anderson, Associate Dean for Scholarship and Professor of Law, American University Washington College of Law

The biggest story in patent law over the past three years has been the emergence of the Waco Division of the Western District of Texas as the undisputed capital of U.S. patent litigation. The lone district judge sitting in Waco, Judge Alan Albright, has engaged in an extensive campaign to entice patentees to file suit in his courtroom. And those efforts have succeeded. In 2016 and 2017, the two years before Judge Albright took the bench in 2018, the Waco Division received a total of five patent cases. In 2019, 217 patent suits were filed in Waco. In 2020, that number increased to 761—more than the number of patent cases filed in any other district court in the country and over 20% of patent cases filed nationwide. Judge Albright is on track to receive well over 700 cases again in 2021.

Most patent suits in Waco are filed by NPEs and involve computers and communication technology. Judge Albright’s courtroom is particularly attractive to NPEs because he moves cases quickly through litigation and his procedural rulings tend to favor patentees—both of which increase patentees’ leverage during settlement negotiations. Quicker settlements for larger amounts allow NPEs to more rapidly move on to their next target.

Not surprisingly, many defendants sued in Waco try to escape. The primary mechanism they use is 28 U.S.C. § 1404(a), which permits a district judge to transfer a case to another district (or to another division within a district) “[f]or the convenience of parties and witnesses, in the interest of justice.” In his three years on the bench, Judge Albright has developed a reputation for being less likely to transfer cases than other district judges. But as we, along with Jason Rantanen, discussed in a series of recent posts, the Federal Circuit has begun to push back, repeatedly using the extraordinary writ of mandamus to overturn decisions by Judge Albright denying transfer under § 1404(a).

The Federal Circuit’s interventions raise an interesting question: Does Judge Albright care? In an order issued earlier this week, he granted a defendant’s motion to transfer a case from the Western District of Texas to the Northern District of California, but not before criticizing appellate precedent on transfer as inconsistent and “out of touch” with modern patent litigation. But what do the numbers look like? Has Judge Albright become more inclined to transfer in the wake of the Federal Circuit’s mandamus grants? Or is he stubbornly refusing to change his approach?

As part of our on-going research on patent litigation in the Western District of Texas, we have collected all of Judge Albright’s orders deciding § 1404(a) motions that are publicly available. Interesting trends emerge when comparing Judge Albright’s grant rates to the Federal Circuit’s interventions through mandamus.

Overall, Judge Albright has decided sixty contested motions to transfer cases away from the Western District of Texas under § 1404(a) (excluding orders granting transfer after the Federal Circuit granted mandamus and orders involving contractual forum selection clauses). He has granted sixteen of those motions, for a grant rate of 26.7%.

Figure 1: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a)

Looking at the numbers year-by-year, as in the figure above, it looks like Judge Albright’s transfer rates have changed over time, but not too much. Judge Albright decided only three § 1404(a) motions in 2019, his first full year on the bench, and denied all three. In 2020, he decided thirteen § 1404(a) motions, granting three and denying ten, for a grant rate of 23.1%. So far in 2021, he has decided forty-four § 1404(a) motions, granting thirteen and denying thirty-one, for a moderately higher grant rate of 29.5%.

What happens when we compare grant rates before and after key Federal Circuit decisions? The first mandamus petition the Federal Circuit granted overturning a transfer decision by Judge Albright was In re Adobe, which issued on July 28, 2020. But it was the second Federal Circuit decision—and first precedential decision—to grant mandamus and order Judge Albright to transfer a case that garnered the most attention. In that case, In re Apple, the Federal Circuit took the unusual step of holding oral argument. (Mandamus petitions are practically always decided on the briefs alone.) On November 9, 2020, the Federal Circuit granted Apple’s petition over a fiery dissent by Judge Moore, who accused the majority of setting precedent that will allow future mandamus petitions to be granted “based almost entirely on ad hominem attacks on esteemed jurists.”

Figure 2: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a), Before and After In re Adobe

As the figures above indicate, before Adobe, Judge Albright had decided fifteen motions to transfer under § 1404(a), granting two and denying thirteen, for a grant rate of 13.3%. Since Adobe, he has decided forty-five motions to transfer under § 1404(a), granting fourteen and denying thirty-one, for a grant rate of 31.1%. Taking the Adobe decision as the critical date (between Adobe and Apple, Judge Albright decided only one contested § 1404(a) motion, and he granted it), it appears Judge Albright is clearly more willing to grant transfer in the wake of Federal Circuit skepticism about his decisions.

One final way of slicing the data: of the fourteen Federal Circuit grants of mandamus overturning transfer denials by Judge Albright, ten have occurred in the past four months, since June 30, 2021. Before the recent avalanche of mandamus grants began, Judge Albright had decided thirty-six § 1404(a) motions, granting seven and denying twenty-nine, for a grant rate of 19.4%. Since June 30, he has decided twenty-four § 1404(a) motions, granting nine and denying fifteen, for a noticeably higher grant rate of 37.5%.

Figure 3: Judge Albright Decisions on Contested Motions to Transfer Away from the Western District of Texas Under § 1404(a), Before and After June 30, 2021

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While our dataset is not huge, it does seem that Judge Albright’s proclivity to grant § 1404(a) transfer motions is increasing. To be sure, any increase may not be caused by the Federal Circuit’s interventions. As the sheer number of patent cases on Judge Albright’s docket has increased over the past two years, many of those cases likely have more tenuous connections to the Western District than the cases filed early in Judge Albright’s tenure. Also, it’s possible that Judge Albright has become more willing to grant transfer to relieve caseload pressure on his docket and maintain the fast case schedule that is a reason his court is particularly attractive to patent plaintiffs. In addition, broader criticism of Judge Albright’s forum selling practices—separate and apart from the Federal Circuit’s interventions—could be having some effect on Judge Albright’s transfer decisions.

Moreover, even the 37.5% grant rate over the past few months is low compared to the grant rates in other districts with large dockets of patent cases, which hover around 50%. (We’re working on updating the transfer data for other districts and will share our results in the near future.) And, don’t forget, given the nature of patent litigation and the West Coast-based parties typically involved (Google, Apple, Microsoft, and Amazon are all among the most common defendants in cases before Judge Albright), we would expect to see significantly higher transfer rates in cases filed in Waco, Texas, as opposed to cases filed in, say, the Northern District of California.

So, how did it start? It was pretty hard to obtain transfer away from Judge Albright’s Waco courtroom. How’s it going? Still not easy, but not impossible. Time will tell whether the Federal Circuit’s interventions through mandamus will be sufficient to combat the unhealthy court competition that is causing patent cases to pile up in Waco. But, given the case-by-case nature of the writ, the nominally deferential standard of review, and the expense of pursuing an interlocutory appeal, count us as skeptical that mandamus is anything more than a band-aid for well-resourced defendants to challenge the most obviously incorrect transfer decisions by Judge Albright.

The Supreme Court has not granted a writ of certiorari in any patent cases this term, and has now denied certiorari in two dozen.  Still, there are a number of important cases pending that could be transformative if granted.

Two leading petitions before the court are:

• American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891 (eligibility); and
• PersonalWeb Technologies, LLC v. Patreon, Inc., No. 20-1394 (issue and claim preclusion).

In both of these cases, the Supreme Court has requested that the Solicitor General offer the views of the U.S. Gov’t on whether the court should grant certiorari.  Although I am not privy to the exact timeline, I believe that there is a good chance that the SG’s brief in American Axle will be submitted by the end of December 2021.  The PersonalWeb brief is unlikely to be submitted until later in the spring.  American Axle clearly has the largest potential impact if the Supreme Court were to either (1) change course on eligibility; or (2) double-down on an expansive doctrine.

Two petitions will be considered by the court in upcoming days:

• ENCO Systems, Inc. v. DaVincia, LLC, No. 21-457 (eligibility); and
• Ultratec, Inc. v. CaptionCall, LLC, No. 20-1700 (R.36 and retroactive IPR).

I believe that American Axle is a better vehicle for Section 101 issues rather than ENCO, and I expect that the Supreme Court not will give much consideration to the ENCO petition.  It will likely denied even before any action taken on American Axle. Ultratec is interesting to me personally because it relates to some of my prior academic work, and the Supreme Court called for responsive briefing in the case. That said, the Gov’t brief in opposition is extremely dismissive of Ultratec’s arguments.  This suggests that the Supreme Court will not hear the case.

The Supreme Court has requested responsive briefing in three additional cases:

• Warsaw Orthopedic, Inc. v. Sasso, No. 21-540 (on petition from the Indiana Supreme Court; arising under jurisdiction)
• Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 21-413 (indefiniteness); and
• Olaf Sööt Design, LLC v. Daktronics, Inc., No. 21-438 (using claim construction to overturn a jury verdict).

Responsive briefs are expected in the next couple of weeks for these cases.  Although a request for responsive briefing is indicative of some interest in the case, the threshold is quite low and so it is much too early to suggest that these cases are likely to be granted certiorari.  Infinity could be quite big if the Supreme Court took the case and again recalibrated the doctrine of indefiniteness.  In Nautilus, the Supreme Court found that the lower court was too easy on patentees; Infinity argues that the court is now being too hard on patentees.

The remaining four patent petitions are listed roughly in order of their likelihood of being granted certiorari (in my opinion). I expect that the Mylan and Apple petitions would be granted as a pair, if granted at all.

1. Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202 (NHK-Fintiv rule for denying petitions; appealability of IPR petition denial);
2. Apple Inc. v. Optis Cellular Technology, LLC, No. 21-118 (mandamus review of IPR petition denial);
3. Infineum USA L.P. v. Chevron Oronite Company LLC, No. 21-350 (mid-Arthrex issue, potential for GVR with instructions for PTO Director to place his imprint on the decision); and
4. Bongiorno v. Hirshfeld, No. 21-6050 (pro se; eligibility).

There is one final case that has some filings at the Supreme Court:

• Apple Inc., v. Qualcomm Inc., No 21A39 (Standing of portfolio licensee to challenge individual patents in court).

Apple has not yet filed its petition but did indicate its plan to do so in a request for extension of time.  Its initial petition is now due November 17, 2021.

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A few non-patent IP cases pending before the Supreme Court of some interest:

• Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20-915 (referral of copyright litigation issues to copyright office) (this is the only one granted certiorari, oral arguments set for November 8, 2021);
• Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 19-3010 (functional trade dress)
• Sulzer Mixpac AG v. A&N Trading Co. (functional trade dress);
• Impax Laboratories, Inc. v. Federal Trade Commission, No. 21-406 (reverse payment patent settlement).
• Belmora LLC, et al. v. Bayer Consumer Care AG, No. 21-195 (impact of foreign use on trademark rights in the US);
• Australian Leather Pty. Ltd., et al. v. Deckers Outdoor Corporation, No. 21-513 (impact of foreign use on trademark rights in the US);

by Dennis Crouch

President Biden has nominated leading patent litigator Kathi Vidal as the next USPTO director.  Vidal is currently at Winston & Strawn, leading the company’s Silicon Valley office. She was previously with Fish & Richardson. [Announcement]

Vidal has all the qualifications.  Bachelor’s and Master’s degrees in electrical engineering (starting college at age 16); JD from Penn (EIC of the law review); Federal Circuit clerkship (Judge Schall); registered patent attorney; and litigated patent cases in courts across the country, including the PTAB.  She represented Chamberlain whose garage door opener patents were obliterated by the eligibility revolution of Bilski–Mayo-and-Alice.  At the same time, Vidal has represented many accused infringers.

Great pick.  I have known Vidal for years, and am confident that she will be an amazing leader of the agency.

The Senate will need to confirm this appointment, but I do not foresee any holdup for this candidate.

This guest post was authored by Joel Smith, a 3L at the University of Missouri School of Law, with support from the team at the Mizzou Law Veterans Clinic.

Why is there a post about a veterans law case on a patent law blog? The U.S. Court of Appeals for the Federal Circuit (the “Federal Circuit”), of course! Like patent office cases, when decisions of the Veterans Administration (“VA”) are appealed to the federal court system, the cases are not heard in your everyday district courts, but instead in everyone’s favorite court with nationwide jurisdiction. Currently pending before the en banc Federal Circuit is Taylor v. McDonough, No. 2019-2211 (Fed. Cir.).

The case involves the plight of Bruce R. Taylor, a Vietnam era Army veteran seeking compensation for disabilities resulting from his service. Before serving two tours overseas, Mr. Taylor volunteered to serve his country in a unique fashion—as a test subject. In 1969, the Army sought soldiers on which it would test toxic chemicals such as nerve gas. The Army’s purpose was to learn how its soldiers would function when exposed to agents that combatants might experience in service. Soldiers were given doses of an array of toxic substances and subjected to training exercises to measure performance. As a result of Mr. Taylor’s participation, he suffers from disabilities that the VA found eliminate his ability to work. In accordance with statute, the VA awarded Mr. Taylor monthly compensation.

Since the VA awarded benefits, what is the problem?

In addition to monthly compensation, the VA is required to pay lump sum compensation covering the time before benefits were awarded. Despite Mr. Taylor having suffered from his disabilities since he left the Army in 1971, the VA is refusing to provide backpay for the time between his service and when he filed his benefits claim in 2007. The VA cites a statute that limits the effective date of claims–which determines the start date for back pay–to when the veteran filed for benefits. 38 U.S.C. § 5110(a)(1) provides that “the effective date of an award…shall not be earlier than the date of receipt of application[.]”

Mr. Taylor claims the government interfered with his statutory right to disability compensation. Prior to participating in the tests, Mr. Taylor was required to sign an oath of secrecy that, if broken, would subject him to criminal prosecution and a dishonorable discharge—a rating that would render him ineligible for benefits. To file an adequate claim for disability benefits, Mr. Taylor would have needed to disclose his test participation. The “catch-22” of being unable to file for benefits without becoming ineligible for benefits left Mr. Taylor with an inability to exercise his statutory right to request disability compensation.

In 2006, the Department of Defense finally declassified the names of the test participants and instructed the participants to file for benefits. Mr. Taylor did so in early 2007. The VA responded to the claim by awarding monthly disability benefits with an effective date of 2007. Mr. Taylor requested the VA to instead award an effective date of the day after his discharge due to the aforementioned government interference. After exhausting his administrative remedies without relief, Mr. Taylor petitioned a legislative court created for the sole purpose of reviewing decisions of the VA, the Court of Appeals for Veterans Claims (the “Veterans Court”).

Mr. Taylor asked the Veterans Court to apply the doctrine of equitable estoppel to prevent the VA from asserting § 5110 as a defense against his claim for an earlier effective date. Mr. Taylor indicates that but for the oath he would have filed for benefits in 1971. The Veterans Court denied his request because it interpreted its jurisdictional and scope of review statutes as excluding equitable estoppel as an available remedy. The present case is Mr. Taylor’s appeal to the Federal Circuit.

Initially, a three-judge panel held the Veterans Court does possess the power to apply equitable estoppel. The Federal Circuit then voted to rehear the case en banc and the panel decision was vacated. In response to the court’s request for new briefs, the NLSVCC and the Mizzou Law Veterans Clinic filed an amicus brief in support of Mr. Taylor.

The amicus brief argues that the scope of review statute for the Veterans Court, 38 U.S.C. § 7261, does not foreclose the use of equitable estoppel. The legislative history of the statute indicates that Congress initially desired judicial review of VA decisions to occur in Article III courts, with their full judicial power, and fashioned the legislative court that is the Veterans Court only out of concerns regarding the expertise of federal courts and the burden on the federal court system. The history indicates a strong overriding concern for fairness and no concern regarding limiting the use of equitable remedies in veterans cases. The brief also addresses that other legislative courts, such as the bankruptcy and tax courts, possess equitable powers and the Veterans Court’s powers should be evaluated in light of those general designs.

A primary legal hurdle for Mr. Taylor is a precedent in the Federal Circuit. In Burris v. Wilkie, 888 F.3d 1352 (Fed. Cir. 2018), the court determined that applying equitable estoppel was outside the jurisdiction of the Veterans Court. The amicus brief distinguishes Mr. Taylor’s case from Burris by relying on a Supreme Court precedent that held that procedural claims-processing rules do not limit jurisdiction. See Henderson ex rel. Henderson v. Shinseki, 562 U.S. 428 (2011). Characterizing the effective date statute as a procedural rule, the amicus argue that, unlike the substantive statutes relevant to Burris, deviating from the effective date statute would not expand the Veterans Courts jurisdiction because the effective date limit is procedural.

The amicus brief concludes:

In 1990, the Supreme Court left for another day, “whether an estoppel claim could ever succeed against the Government.” Off. of Pers. Mgmt. v. Richmond, 496 U.S. 414, 423 (1990). Three years ago, this Court stated that it had not yet determined “just how far the equitable powers of the Veterans Court, as an Article I tribunal, extend.” Burris v. Wilkie, 888 F.3d 1352, 1361 (Fed. Cir. 2018). In Burris, that question was left for another day.

That day has arrived. Veteran Taylor’s case presents the strongest possible facts upon which this Court should determine equitable estoppel against the Government may succeed, and the Veterans Court has the power to provide such relief.

Briefing is ongoing in the appeal.

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On Oct 29, 2021, the Veterans Clinic is hosting its 8th Annual Symposium.  The symposium is online and free.  Because of their link with the Federal Circuit, veterans cases offer an excellent place for patent attorneys to do pro bono work.  More information here: https://law.missouri.edu/faculty/symposia/2021-veterans-clinic-symposium

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the final post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.  The two previous posts can be found here and here.

Even if a plaintiff has filed its case in a federal court in which personal jurisdiction and venue exist, 28 U.S.C. § 1404(a) permits the judge to transfer the case to another district “[f]or the convenience of parties and witnesses, in the interest of justice.” Transfer motions under § 1404(a) are a common tactic in patent litigation, particularly for California-based tech companies sued in the Eastern and Western Districts of Texas. When defendants lose those motions—as they often do in Texas—they frequently seek immediate review in the Federal Circuit by petitioning for a writ of mandamus.

Despite the writ’s extraordinary nature, our study shows that it’s a remarkably ordinary form of relief in the Federal Circuit—at least in cases involving denials of transfer by the Eastern or Western District of Texas. The first time the Federal Circuit ever granted mandamus to overturn a transfer denial was in 2008, in a case called In re TS Tech, which arose from the Eastern District of Texas. Since that time, the Federal Circuit has decided 105 mandamus petitions seeking to overturn a denial of transfer under § 1404(a). It has granted 34 of them, for a grant rate of 32.4%. Pretty high for an extraordinary writ that’s supposed to issue only if the lower court’s decision was a “clear abuse of discretion” that “produced a patently erroneous result,” as the Federal Circuit wrote in a 2009 decision, In re Genentech. (Cleaned up.) The figure below shows the outcomes of decisions on mandamus petitions challenging § 1404(a) transfer denials decided by the Federal Circuit each year since 2008.

Figure 1: Mandamus decisions by the Federal Circuit involving challenges to 1404(a) decisions

Mandamus petitions arising from the Eastern and Western Districts of Texas account for the vast majority of petitions challenging transfer denial: 88 of the 105 in our dataset (83.8%). The grant rate for mandamus petitions challenging transfer denials by those two districts is 35.2%. And for the Western District of Texas alone, the grant rate is a whopping 52.0% (13 grants, 12 denials). For all districts besides the Eastern and Western Districts of Texas, the grant rate is a mere 17.6% (3 grants, 14 denials). The table below shows, by district court of origin, the number of mandamus petitions decided by the Federal Circuit seeking review of a decision denying transfer under § 1404(a), along with the corresponding Federal Circuit grant rates. As you can see, the sheer number of petitions (and grants) from the Eastern and Western Districts of Texas dwarfs all other districts.The recent explosion of patent cases in the Western District of Texas is fueled entirely by Judge Alan Albright who, as Jonas and I have written, has actively encouraged patentees to file infringement suits in his Waco courtroom and has adopted numerous procedural practices that are attractive to forum-shopping patentees—to say nothing of the fact that the Western District’s lack of random case assignment allows patentees to know, with absolute certainty, that Judge Albright will hear their case.

When we exclude the two Western District mandamus petitions that didn’t involve Judge Albright, the grant rate gets even higher. For mandamus petitions challenging transfer denials by Judge Albright, the Federal Circuit’s grant rate is 56.5% (13 grants, 10 denials). And that grant rate excludes one petition, In re DISH Network, which the Federal Circuit nominally denied but effectively granted by demanding that Judge Albright “reconsider” his transfer denial in light of the “appropriate legal standard and precedent,” which the Federal Circuit outlined in its opinion denying the writ.

*          *          *

The Federal Circuit is exceptional among the federal courts of appeals in using an extraordinary writ to engage in what is essentially interlocutory error correction. On first glance, we might view this as a flaw with the Federal Circuit: the specialized court is too zealously exercising its final authority over patent law and wasting party and judicial resources by policing discretionary district court rulings on an issue that’s entirely separate from the merits of the case. But Judge Albright’s aggressive efforts to attract patent cases to Waco—and his seeming disregard of appellate precedent on transfer of venue—have forced the Federal Circuit’s hand. Predictable judge assignments have encouraged what is essentially a race to the bottom among district judges who want to attract patent infringement plaintiffs. The mechanism for competition is procedural rules—and procedural rulings—that are extremely favorable to plaintiffs. And so the stakes over transfer of venue decisions are unusually high in patent cases. This suggests that the writ of mandamus—a procedural mechanism from the dustiest corner of civil procedure—will play a crucial role in determining the future of the U.S. patent system.

Hyatt v. Hirshfeld, 9 F.4th 1372, 1374 (Fed. Cir. 2021), opinion modified and superseded on reh’g, 2020-2321, 2021 WL 4737737 (Fed. Cir. Oct. 12, 2021) [New Opinion]

Earlier this month, the Federal Circuit released a revised opinion in the most recent edition of Hyatt v. Hirshfeld.  The opinion originally released in August 2021 denied the USPTO’s petition to recoup expert witness fees under the “all the expenses” provision of 35 U.S.C. 145.  The original opinion called out Hyatt for “efforts to submarine his patent applications and receive lengthy patent terms.”  Following that decision, Hyatt petitioned for rehearing, asking for removal of that language from the opinion.  The PTO did not file a brief in opposition and the court released a modified opinion with the language removed.  The redline below shows the change:

In the briefing, Hyatt explained that the statement was incorrect, unnecessary, unsupported, and prejudicial to his position on remand.  The petition is a very good example of how to seek targeted relief from a panel for a narrow, but potentially important issue. [HyattRehearingPetition]

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the second post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.

Yesterday’s post described the high number of petitions for a writ of mandamus that the Federal Circuit has granted relative to other federal appellate courts over the last few years.  In this post I’ll give further context and detail about the petitions for writs of mandamus at the Federal Circuit.

While Westlaw is a terrific resource, one of its big limitations for empirical research is that it doesn’t necessarily contain all dispositions.   We confirmed that almost all of the granted petitions from recent years are on Westlaw, but a portion of the other terminations are not.

In order to make sure that we had a complete set of all petitions for a writ of mandamus, we started by creating a set of all petitions docketed at the Federal Circuit.  Full details on how we did this will be in the paper, but essentially we began with a set of all dockets at the Federal Circuit from 2000 to the present from PACER, narrowed them to just those with a miscellaneous docket number, then reviewed that those dockets to determine which involved a petition for a writ of mandamus. This gave us a complete set of all petitions for a writ of mandamus filed at the Federal Circuit.  Using this set, we collected any dispositive orders from PACER that we didn’t already have.

Figure 1 shows the number of petitions for a writ of mandamus docketed at the Federal Circuit by year.  It breaks out petitions (1) arising from the Eastern District of Texas (red), (2) arising from the Western District of Texas (blue), and all other origins (which includes all other district courts plus origins such as the PTO, CAVC, etc.).

Figure 1: Petitions for a Writ of Mandamus filed at the Federal Circuit, 2008-September 30, 2021

How many petitions for a writ of mandamus arose from the Eastern District of Texas?  The answer is “a lot,” especially in 2010, 2014 and 2015.  More significant, however, is the enormous increase in petitions arising from the Western District of Texas over the past year.  For 2021, in particular, petitions arising from the Western District of Texas make up almost double the other origins combined.  Overall, the Federal Circuit has already received more petitions for a writ of mandamus this year than it has ever received in any year prior…and there are still three months to go.

Grant Rates of Petitions

The next thing we looked at were outcomes. For this, we switched to looking at the data on a per-document level rather than a per-docket level.  By “document,” we just mean the opinion or order deciding the appeal or petition. For petitions for writs of mandamus, the results are essentially the same when examined at the per-docket level because very few orders decided multiple petitions.

Overall, the Federal Circuit’s grant rate in merits determinations (those that granted, denied or granted in part a petition) was 15% over the period from 2008-2021—that is, the Federal Circuit granted the petition in whole or in part in 58 of the 384 total decisions on the merits.  For an “extraordinary” form of relief, we were surprised at how high this was.

To investigate grant rates further, we started by comparing the grant rates of petitions for a writ of mandamus when the petition originated from a district court to the grant rate for other origins.  Figure 2 shows the outcomes on a per-document basis for 2008 – September 2021.  The top pie charts show the outcomes of merits determinations, while the bottom bar graphs show the other types of dispositions of these petitions.  Most other dispositions consist of voluntary dismissals, but there are also dismissals for lack of appellate jurisdiction and other reasons.

Figure 2: Outcomes in Federal Circuit decisions on petitions for writs of mandamus, 2008-Sept. 30, 2021

There are clear differences in the grant rates for petitions for writs of mandamus between the district courts and other origins.  Whereas the Federal Circuit granted the petition in whole or part in 19% (51 out of 268) of its merits decisions when the petition arose from the district courts, it granted them only 6% (7 out 116) of the time for other origins.

To examine what was going on, we conducted preliminary issue coding to identify those decisions involving some issue relating to venue (all of which originated from a district court).  Figure 3 shows the outcomes for merits decisions when venue was and was not at issue in the decision.

Figure 3: Outcomes in Federal Circuit decisions on petitions for writs of mandamus arising from district courts, 2008-Sept. 30, 2021

The difference is stark: When venue was at issue, the Federal Circuit decision granted the petition in whole or in part 27% of the time.  When venue was not at issue, the grant rate was 7%.

Put another way, for petitions for a writ of mandamus involving an issue other than venue, the grant of a writ of mandamus is a rare event.  But when venue is at issue, the court has granted petitions at a much higher rate.  But is this historically the case or is it a recent event?  In our third post we’ll conclude with additional detail on what’s going on with mandamus on transfer of venue issues at the Federal Circuit.

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the first post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.

There has been a lot of talk recently about the Federal Circuit and mandamus. Our current research project aims to answer whether the Federal Circuit is an outlier among the circuit courts in its use of mandamus, and if so, what explains the court’s apparent infatuation with mandamus?

Mandamus Generally

Mandamus—literally, “we command”—is an extraordinary event. Federal appeals courts have authority to review “final decisions” of district courts (or of the PTAB, in the Federal Circuit’s case). Mandamus provides a way for litigants to take their appeal before an appeals court while their case continues at the district court below. This can be a great thing for litigants who feel that an issue has been wrongly decided and who don’t want to wait for a final decision to take their case before the appellate court. However, if mandamus is granted too frequently, it risks compromising judicial efficiency by placing the appellate court in the awkward position of arbiter of disputes rather than reviewer of final decisions.

The Supreme Court has said three requirements must be satisfied in order for an appellate court to grant mandamus. First, the party seeking mandamus must have “no other adequate means” to obtain relief. Second, the party must show that its right to mandamus is “clear and indisputable.” Third, the court must be satisfied that mandamus is “appropriate” under the circumstances.

Typically, the federal courts of appeals will reserve their use of mandamus for important issues that are likely to arise again in future cases. For instance, attorney-client privilege is a relatively frequently reviewed issue on mandamus, because it is an issue that district courts frequently encounter. In addition to importance, the issue under mandamus review ought to be one that is not reviewable after a final verdict, or at least one in which such post-verdict review would be inefficient. For instance, the choice of venue in litigation is one such issue that is reviewable post-verdict, but oftentimes would be inefficient for the appealette court to wait for a final verdict before deciding that the wrong court heard the case. Oftentimes the use of mandamus centers on new, undecided issues.

Ideally, mandamus gives lower courts appellate guidance so that mandamus review is not needed on the issue addressed in the future. Sparing use of mandamus allows appellate courts to preserve the extraordinary character of the practice. Ideally, appellate courts avoid excessive supervision of lower court proceedings while at the same time sending a forceful message when granting mandamus. Thus, granting a writ of mandamus is an “extraordinary remedy,” reserved for clear errors in which the moving party has no other adequate means to obtain relief.

Federal Circuit Mandamus

But, this extraordinary remedy is becoming quite common, at least in the Federal Circuit. In beginning our study of the Federal Circuit’s mandamus practices, we wanted to get a sense of how the court compares to other circuit courts in granting mandamus. Using Westlaw, we collected all the decisions on writ of mandamus and hand coded them for whether mandamus was granted and what the issue the grant concerned. We found that the Federal Circuit has granted mandamus over twice as often as any other circuit.

The Federal Circuit has clearly been more activist than any other court when it comes to granting mandamus. Over the past three years, the Federal Circuit has been granting mandamus, the extraordinary remedy, at a rate more than double that of the next most frequently granting circuit (the 5^th circuit and the 9^th circuit).

And the numbers are even more stark when we consider just one issue on which mandamus may be granted: venue. Patent cases often meet the jurisdictional requirements of personal jurisdiction, subject matter jurisdiction, and venue in a number of different district courts. While the plaintiff typically selects her preferred venue to litigate the case, defendants may bring a motion to transfer the case to another district court that also has venue. Alternatively, the defendant may argue that the court selected by the plaintiff lacks venue. Decisions on these motions are often challenged, if at all, on mandamus.

Looking at the grants of mandamus concerning motions to transfer presents a stark look at the difference between the Federal Circuit and every other circuit court. Below is a graph of grants of mandamus by circuit court that direct a district court to transfer venue in a case.

Clearly, venue is a confounding issue for the Federal Circuit, and no other circuit court. It is odd that the Federal Circuit has issued mandamus on one issue so frequently over the past three years while only one other circuit court has granted mandamus on this issue. And that circuit did so only once.

In the next post we will give come further context and detail about the petitions for writs of mandamus at the Federal Circuit. And specifically look at the issue of venue mandamus in greater detail.

by Dennis Crouch

Edible IP v. Google (GA 2021)

This interesting case is pending before the Supreme Court of Georgia over the question of keyword advertising under Georgia law.  The following comes from Edible’s brief:

Edible’s claim is simple. It owns valuable intangible property associated with the trade name “Edible Arrangements.” The law [of Georgia] protects its right to exclude others from trading on that name and its associated good will for profit. The Complaint alleges that when Google auctions off that name and the associated business goodwill, Google violates Edible’s rights to exclude others from its property and appropriates the value of Edible’s goodwill for itself. As a matter of fact, this is an illegal [theft-by-]taking, and Edible can introduce evidence within the framework of the Complaint to prove each cause of action.

The trial and appellate courts both sided with Google, holding that keyword advertising is akin to permissible sponsored product placement in grocery stores.  The Supreme Court is set to hear oral arguments in the case on November 10, 2021.

Google argues that any decision in Edible’s favor would be contrary to federal trademark law and be in violation of the free speech provision of the First Amendment of the U.S. Constitution.

Google may have cleaned-up its advertising in the lead-up to the Supreme Court arguments. My search on Oct 18, 2021 revealed no ads showing up for “Edible Arrangements” but one of the top hits is a rhetorical question from Google “Is Edible Arrangements overpriced?”

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Briefs:

• Edible Appellant Brief
• Edible Appellee Brief
• Edible Reply Brief
• Edible Amicus

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NOT a TM Case: A key aspect of the case is that Edible is not on suing trademark law.  Rather the cause of actions center on state statutes involving theft of personal property.  “Customer confusion is not an element of any of Edible’s claims.”  Edible’s Brief.   In its argument, Google argues for a bright line rule that Georgia courts cannot enforce rights to trade-names absent fraud, deception, or confusion.  According to Google, any broader rights would impinge upon the company’s freedom to sell competitive advert-space tied to Edible’s name as protected by the First Amendment.

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Edible International, LLC is the company that franchises the basket delivery.  The plaintiff here Edible IP, LLC is the company that owns the trademarks. Edible IP licenses the marks to Edible International.   It is not clear to me the exact relationship between these two companies, but they are obviously related.

Edible International opened an advertising account with Google, and clicked “I agree” to Google’s terms that included an agreement to arbitrate any resulting disputes.  The district court found this was binding on Edible IP, and that issue is also before the Georgia Supreme Court. Edible IP argues that it should not be bound by the actions of its Edible International relation.

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The International Franchise Association filed a brief in support of Edible: “Google’s advertising model is profiting directly from using the trade names and goodwill of established companies for profit. This use is antithetical to fair business practices and the law, and it should not be allowed.”

by Dennis Crouch

This decision suggests that the Federal Circuit is acceding to the Supreme Court’s approach giving broad discretion to the district courts in attorney fees cases rather than nit-picking individual elements of the totality-of-the-circumstances test.  But, we’ll see. 

Energy Heating, LLC v. Heat On-the-Fly, LLC (Fed. Cir. 2021)

In a prior appeal in this case, the the Federal Circuit affirmed the lower court’s holding that Heat On-The-Fly’s U.S. Patent No. 8,171,993 was unenforceable due to inequitable conduct.  By the critical date (1-year-before-filing), the patentee had done about $2 million in jobs using the invention, but did not disclose those sales/uses to the USPTO during prosecution.

On remand, the district court awarded attorney fees to the defendants — finding the large number of undisclosed sales sufficient to constitute “affirmative egregious conduct” and then pursued aggressive litigation despite knowing that the patent was invalid.

The patent act provides a district court with discretion to award “reasonable attorney fees to the prevailing party” in “exceptional cases.”  Once you have a prevailing party, the district court needs to determine whether the case is “exceptional.”  If so, the district court will then determine whether to award attorney fees, and the amount to award.  These determinations are within the district court’s equitable discretion based upon a broad “totality of the circumstances”  test.  On appeal, the district court’s factual and equitable determinations are given deference and only overturned based upon an abuse of discretion. Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014); Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014).

On appeal, the patentee challenged the “exceptional case” finding, but the appellate panel found no abuse of discretion.

Inequitable conduct is an equitable defense that is traditionally decided by a judge rather than a jury.  An oddity of the case is that the jury was actually asked whether the patentee had represented in bad faith that it held a valid patent as part of the defendant’s state law claim counterclaim of “deceit.”In the appeal, the patentee argued that it was improper for the district court to rely upon the jury’s bad faith determination. I don’t understand that argument and neither did the Federal Circuit.

The jury found bad faith, but actually sided with the patentee on the ultimate question of deceit under N.D. Law.  On appeal, the patentee argued that the no-deceit conclusion should be determinative of no inequitable conduct as well. Of course, the prior appeal determined inequitable conduct and the Federal Circuit did not allow the issue to be relitigated in this appeal. The Federal Circuit did rule though that “the jury’s finding of no state-law ‘deceit’ simply has no bearing on inequitable
conduct.”

Finally, the patentee noted the absence of an express finding of litigation misconduct absent continuing to litigate losing positions. On appeal, the Federal Circuit found no problem with finding the case exceptional even absent particular litigation misconduct issues.