by Dennis Crouch
In re Extreme Technologies, LLC (Fed. Cir. 2019)
In a short opinion, the Federal Circuit has denied Extreme Tech’s petition for writ of mandamus directing transfer of its case before S.D.Tex Judge Hughes to S.D.Tex Judge Bennett. (Note, this case is about District Court Judge Lynn Hughes, not Federal Circuit Judge Todd Hughes).
Extreme first sued Stabil Drill for patent infringement in S.D. Tex. accusing Stabil’s eccentric reamer of infringing three of Extreme’s patents. Within a week, Extreme filed a notice of dismissal and refiled the same complaint in W.D. Louisiana. The S.D. Tex. had been assigned to Judge Hughes who terminated the case. Judge Hughes order included the statement that “If refiled in or removed to this district, the case will be assigned to Judge Lynn N. Hughes.”
I’ll note here that the Fed. Rules of Civil Procedure provide for dismissal by a plaintiff “without a court order” if filed prior to the defendant’s answer (or summary judgment motion). Rule 41(a)(1)(A)(i). Thus, under the rules the plaintiff’s notice of dismissal ended the case and there was no need for Judge Hughes to file the termination papers ex post.
Now in Louisiana: Stabil filed a motion for venue transfer and the Louisiana agreed to send the case back to Texas. Although venue was “proper” in Louisiana, the court concluded that Extreme Tech was engaged in “Judge Shopping” and that factor weighed in favor of shifting venue.
When the case arrived back in S.D.Tex., it was randomly assigned to Judge Bennett who, noting the prior statement in the case file, transferred the case back over to Judge Hughes. Judge Hughes accepted the case and refused to send it back to Judge Bennett.
Extreme Tech then filed a petition for writ of mandamus to keep the case before Judge Bennett. The basic argument is that Judge Hughes post-dismissal order to return the case to him was improper. 
One obvious quirk is that the petition was filed with the 5th Circuit Court of Appeals and not the Federal Circuit. The 5th Circuit has some good law for the patentee — having previously told Judge Hughes that “he cannot enter an order after a Rule 41(a)(1)(A)(i) dismissal.” (quoting from patentee’s brief). In Bechuck v. Home Depot U.S.A., Inc., 814 F.3d 287, 291 (5th Cir. 2016), Judge Hughes had similarly issued a post-dismissal order that “If Bechuck sues Advantage (ASM) for the same cause of action, he must do so before this court.” The 5th Circuit ruled that statement ineffective — rather the plaintiff’s dismissal under “Rule 41(a)(1)(A)(i) necessarily allows him to choose his forum anew.”
By Statute, the Federal Circuit has jurisdiction over patent cases appealed from district courts. 28 U.S.C § 1295. However, the statute specifically is directed toward an “appeal from a final decision.” The statute does not indicate the proper course of appeal of mandamus actions. However, the Federal Circuit has also ruled that extraordinary writs associated with district court patent cases are also “plainly” within the court’s jurisdiction. In re Princo Corp., 478 F.3d 1345, 1351 (Fed. Cir. 2007); In re Regents of the Univ. of Cal., 964 F.2d 1128, 1130 (Fed. Cir. 1992). Although the Federal Circuit has grabbed-power, the 5th Circuit has not clearly relinquished power — in that I’m not aware of a 5th Circuit decision affirming Princo. (I have not done an exhaustive search).
Back to the case: The 5th Circuit apparently (without opinion) sent the whole file to the Federal Circuit who has now ruled on the case — denying mandamus:
Judge Bennett did not violate any clear and indisputable authority in transferring this case to Judge Hughes. To the extent that Extreme believed Judge Hughes exceeded his authority in issuing his initial order, it could have timely appealed from that decision but elected not to do so. Under the circumstances, granting this extraordinary relief would not be appropriate.
Extreme Tech Fed Cir Decision.
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In briefing, the patentee explained its problem with Judge Hughes:
Judge Hughes has been found many times by the Fifth Circuit to have abused his discretion. This particular finding was for exactly the same conduct as in the case at bar. Judge Hughes is, plainly, unconcerned about the Fifth Circuit’s interpretation of the law as it applies to him personally. That is a significant problem. Judge Hughes deprives civil plaintiffs of a fair forum, forcing them to waste money on appeals that should be unnecessary, settle on unfavorable terms, or simply quit. Stabil Drill knows this. That is why it is trying so hard to get the case before Judge Hughes. . . .
Judge Hughes has a History Record of Ignoring the Rules and the Law
Extreme’s counsel has significant experience with Judge Hughes’s approach in handling patent infringement cases. . . . There are over two dozen United States District Court Judges in the Southern District, twelve of which are located in the Houston Division. Somehow, sixty percent of the patent infringement cases filed by Extreme’s counsel have been “randomly” assigned to Judge Hughes. Every lawsuit filed in the Houston Division has a one in twelve chance of being assigned to Judge Hughes, or 8.3%. The odds of being assigned to Judge Hughes for six out of ten cases must be incredibly small. Judge Hughes seems to be requesting patent case assignments. The reason is known only to him. He certainly does not think much of patent plaintiffs, as demonstrated by his
record.In handling patent cases, Judge Hughes routinely denies plaintiffs Constitutional due process under the 14th Amendment and the right to a civil jury trial under the 7th Amendment, refuses to follow the Federal Rules (by denying basic discovery under Rules 26, 30-31, 33-34, and 36, Fed. R. Civ. P.), and rejects the Southern District’s Local Patent Rules.
Although Judge Hughes has a copy of the U.S. Constitution on his office desk, he does not believe in the Seventh Amendment. He believes, as he once told the undersigned during a hearing, that patent plaintiffs are wrongly “throwing sand in the gears of competition.” None of the six patent cases filed by the undersigned that ended up in Judge Hughes’s court were granted a jury trial. Some cases were dismissed, and others settled after years of Judge Hughes’s one sided rulings on behalf of accused patent infringers. Sadly, this experience is not unique. Attached as Exhibit A is a list of all the patent infringement cases, according to our research, before Judge Hughes during his career on the federal bench. There are a total of 104 cases. Not a single case made it to trial. . . .
ExtremeTech Brief Opposing Transfer
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The defendant’s ads include a statement regarding its “patented spiral cutting design.” Does that advertising work the “patent” belongs to your competitor? [I’m joking here, the product is just “accused” of infringement.]
“When you strike at a king, you must kill him.” Ralph Waldo Harrison
Also, it is true that Judge Hughes’ post Rule 41 order is technically ineffective. However, it is only ineffective in that it did not formally bind Judge Bennett to move the case back to Hughes. In other words, if Judge Bennett denied Defendant’s motion for an intra-district transfer to Hughes, the Fifth Circuit/Federal Circuit likely would not force Judge Bennett to follow the ineffective order. It may transfer it for other reasons, however. Here, when you look at the docket for this case, the case was transferred by “[a]greement between the judges” after Defendant filed its motion to transfer back to Hughes.
In any event, what Judge Bennett (and the S.D. Tex.) did is good practice even if it is not a formal rule. Otherwise, plaintiffs would file and dismiss cases until they get the judge that they want.
Plaintiffs routinely file and dismiss cases to get the judge they want. The ACLU’s common practice, when challenging a state statute on constitutional grounds, was to file 10+ cases in a single federal district court representing different named plaintiffs, and then quickly Rule 41 dismiss all of the cases except the one that happened to be assigned to the judge they wanted. If that preferred judge was sympathetic to the plaintiff’s cause, he or she would likely not reassign the case back to the judge to whom the first-filed case was assigned (which would be proper anti-judge-shopping practice). Some districts ended up being forced to enact new rules blunting this practice by no longer randomly assigning those cases to judges immediately upon filing.
Normally I’d say it’s a really bad practice for a party to publicly criticize the judge to whom a case is assigned, call that judge impartial, unfair, etc., even if it happens to be true. There is no greater insult to Judge Hughes (or any judge) than to question his impartiality. It’s far worse than questioning his competence, intelligence, or overall fitness for judicial service, because impartiality is the one thing a judge is supposed to have over anything else.
I have never appeared before Judge Hughes but if it happens to be true that the plaintiff is going to be screwed over by Judge Hughes here, the plaintiff may have nothing to lose by just calling him out in a conspicuous and public way to raise the visibility of the case and force the judge to go out of his way to appear fair. I think in this case, though, the plaintiff employed that tactic in such a ham-fisted, conspiracy theory way, that it won’t be taken seriously by anyone. Buckle up, plaintiff, you’re in for a rough ride.
This was really dumb lawyering. I have appeared before Judge Hughes, and he’s certainly his own breed, but he is not a bad judge. Regardless, a bad judge would be the last judge that you’d want to publicly call a bad judge. A good judge might still be fair after that, but a bad judge? Ooof. I hope this lawyer is advising him client to hire a new one.
That’s all notwithstanding the fact that from the writeup, this statement appears to be untrue: ‘The 5th Circuit has some good law for the patentee — having previously told Judge Hughes that “he cannot enter an order after a Rule 41(a)(1)(A)(i) dismissal.’
Finding such an order ineffective is not the same as saying he cannot enter such an order.
Plus there’s the obvious distinction between that “If Bechuck sues Advantage (ASM) for the same cause of action, he must do so before this court,” and “If refiled in or removed to this district, the case will be assigned to Judge Lynn N. Hughes.” The court has wide discretion as to how cases are allocated, which is different from telling a party where it must file.
In addition, the lack of randomness in Judge Hughes getting patent cases is not unique.
The internal operating procedures of any particular court are within the discretion of that Chief Judge and the court. Many district have judges that seek patent cases. There are also many judges who would rather not have patent cases. Even before the patent pilot program, this was clearly going on in several large districts where you would see a pattern of the same few judges getting all of the patent cases. There really is nothing to see here on that point.
It’s almost as if judges are human beings with different skills and specialties.
Plaintiff clearly knew venue was proper elsewhere–Defendant resided in S.D. La. where they filed the second suit. If they were worried about Judge Hughes, Plaintiff should have filed the case there in the first place. Plaintiff made its own bed here and now must suffer the consequences of dealing with a district judge who is clearly going to hold their feet to the fire–especially after this latest stunt.
Plaintiff’s counsel may be respected, but they should have known better.
Man quite a record on not letting cases get to trial, or is that standard for most patent cases not going to trial?
The federalist society had a panel about this lately. One of the panelists cited a statistic (whose truth I cannot personally confirm) that only ~0.6% of complaints filed actually result in a trial. Obviously, that would mean that ~99.4% do not result in a trial.
For better or worse, some judges believe that settlements are the preferred outcome of a dispute, and that trial represents a “failure,” so to speak. I know nothing about this judge in particular, but if she prefers that disputes not go to trial, she would hardly be unique in that regard.
Hughes is a he and he’s notorious for being anti-plaintiff, especially for patent cases. The brief also points to the judicial review site The Robing Room. Here’s his: link to therobingroom.com
Some judges?
Of course a failure to reach a negotiated settlement is just that: a failure. Litigation is a last resort for normal, balanced human beings, and that includes a lot of attorneys too.
The notion of “last resort” and “failure” misstates the mechanism of an orderly LEGAL Avenue and vilifies that which should not be vilified.
The court system (and use thereof) is NOT a condemnation, but rather reflects the orderliness and supremacy of law over lawlessness.
“The notion of “last resort” and “failure” misstates the mechanism of an orderly LEGAL Avenue and vilifies that which should not be vilified.
The court system (and use thereof) is NOT a condemnation, but rather reflects the orderliness and supremacy of law over lawlessness.”
None of that stops it from being a failure tho bro.
Everything about that stops it front being a failure, Bro.
You truly are a “know nothing” MM.
MM
I completely agree with you. Mr. Hughes is keeping in the spirit of the law, just like he did when he decided that lactation is unrelated to sex.
“For better or worse, some judges believe that settlements are the preferred outcome of a dispute, and that trial represents a “failure,” so to speak. I know nothing about this judge in particular, but if she prefers that disputes not go to trial, she would hardly be unique in that regard.”
Well they’re not wrong about that being a failure of sorts. The courts exist to prevent failures in humans interacting getting out of hand as one of their main functions.
But very interesting to see that the federalist society is on the job, I guess MM will step in and bad mouth them shortly. I will watch the vid.
“Preference” and “prevention” are two very different things.
Judges to a certain extent manage their dockets, but such management does not (and should not) override how participants want proceedings to go. If participants want the path of a trial, it is an officious heavy hand that would say “No, you MUST not have a trial.”
Good talk. At 16 mins the lady tells about a judge that thinks that holding a jury trial in a patent case is “crazy”. In all but the most simple, I somewhat agree. The jury wouldn’t know its arse from the invention in many more complicated cases. Even with hand holding. Other judge says it is “insane”. Patent attorneys trying to strike anyone that does know anything about the tech or is smart lol.
All the rest of the jury related stuff being discussed there is just plain nigh depressing. It’s basically like the jury trial has been eliminated from our system o gub outside of criminal matters, and even then it’s been halfway taken away because of the power of the prosecutors etc.
What’s even more sad is the overall effect of that on the whole overall gubmit.
Dennis left out the best parts.
Read the brief to find out Judge Hughes’s opinions on women, Indians, and fried chicken
From his bio on the court’s website:
“University of Virginia School of Law, Master of Laws. University of Texas Law School, Doctor of Jurisprudence.
University of Alabama, Bachelor of Arts. Houston public schools.”
Just a 78-year-old good ol’ boy, appointed to his seat by Ronald Reagan in 1985.
Question for Bildo, who often struggles with the basics: according to “the rules”, what is the proper “means” for “dealing with” a Federal judge who simply refuses to obey “the rules”?
Many super serious David Boundy can weigh in here, too.
Hint: really easy answer.
“Maybe”, not “many”.
&$!?@!
Alright Malcolm, let’s see your really answer.
Then let’s see the point of your ad hominem.
…Really (easy) answer…
You are admitting that you do not know?
LOL
Q: “You are admitting…?”
A: No. I am interested in what YOU think is the “really easy answer,” and then seeing how you think that such somehow ties in to your ad hominem here.
Dennis, your last paragraph about the ad is pretty much incomprehensible (spell check errors?).
The linked brief opposing transfer is worth a read. I almost never see candid negative comments about judges from counsel who appear in front of them, and when I do the criticism is typically restrained and understated. This one–not even a little bit. Normally if I saw a brief like this I’d wonder whether the lawyers would be afraid of making things worse for themselves the next time they appear in front of Judge Hughes, but this brief suggests that they don’t think there’s much room for things to get worse. I wonder whether Extreme is going to press forward with the case now.
Thanks to Dennis for highlighting this. I’ve never seen anything quite like it.
Be nice. Be nice until it’s time to not be nice.
Are not these clearly accusations of regular and serious judicial miss-conduct that would normally engender an attorney disciplinary proceedings in most states?
Was he or she in a lawfirm with any partners paying attention?
The second question is answered in the signature block of the linked brief.
This is all bizarre–both the conduct of the judge and that the brief holds nothing back. Here’s some more tidbits:
“Judge Hughes was recently reprimanded for sexist comments which the Fifth Circuit determined to be “demeaning, inappropriate, and beneath the dignity of a federal judge.” U.S. v. Swenson, 894 F.3d 677, 681 at FN 3(5th Cir. 2018) (“It was lot simpler when you guys wore dark suits, white shirts and navy ties…. We didn’t let girls do it in the old days.”) On remand, the Fifth Circuit took the unusual but necessary step of ordering this case reassigned to any district judge other than Judge Lynn N. Hughes. Id. at 686.”
“In Kafi v. Bakers Footwear Group, Inc., 4:10-CV-02913 (S.D. Texas – Houston 2010), Judge Hughes made racially offensive remarks suggesting that plaintiff’s counsel, of Asian heritage, should move to North Korea to practice law. Transcript of Status Conference of October 15, 2010, Page 13 (“THE COURT: Do you do a lot of labor law? MR. NGUYEN: Yes, Judge. THE COURT: Okay. Why don’t you guys move to North Korea? Because this is the entire body of North Korean labor law. MR. TRAN: Are you serious? THE COURT: I’m serious.”)”
wowwowowwowow, how his this guy still even around? Is he elected?
It’s called life tenure.
Greg, it depends on whether you include summary judgment final decisions [usually for non-infringement], and suits terminated by adverse IPRs, since both avoid patent trials. I recall reading somewhere around 95% of patent suits terminated before trial for all reasons, mostly by settlements.
But from other inputs here this is apparently a “unique” judge, to put it mildly, and this attorney has either decided on such a unique public challenge at his own professional risk, and/or is quite unique himself. Unless Texas Federal Courts are even more unique than I thought there should be some serious consequences.
Federal Judges are all presidential appointments with Senate consent. The way the Senate now operates, the Senate minority has little say in the matter.
Welcome to Texas.
Not sure who you think should be subject to state disciplinary proceedings.
As to the attorneys, the brief for the most part recites *facts* of misconduct, not allegations, misconduct repeatedly and conclusively determined by the 5th Cir. An accurately presented truth is a defense to a charge of defamation, so I see no rational basis for any disciplinary proceeding. Any disrepute has been brought on by the Judge’s own actions.
As to the judge, neither the Chief Judge of the District nor the 5th Cir. appear to have any interest in proactive correction of his decades-long conduct as set forth in the brief. I’m not aware of any case or law under which *state* discipline or disbarment would affect his ability to remain on the *federal* bench — impeachment, historically used more often for judges than Presidents, is the only remedy. Not going to happen to a Reagan judge in this political climate.
One might well ask why the CJ or 5ths haven’t convinced the judge to take senior status– maybe they’re hoping he’ll go away on his own.
Cass,
I do not think that THAT was what Malcolm had in mind with his “really easy answer.”
Wasn’t a speculation about anything Malcom posted, but a question to Paul at 2.2 regarding “disciplinary proceedings.” I was seeking clarification as to who he thought might be at risk for such — the attorneys, or an evidently antebellum judge.
Understood Cass – I was the one tying in Malcolm’s tripe. He likes to engage in his mindless ad hominem, and I thought that your excellent post provided a stark contrast to his banal post.
I note that the undersigned counsel, John Raley–named partner of Raley & Bowick–is one of the most respected patent lawyers in Houston. This is really an astonishing brief. Judge Hughes is famously awful, but very surprising to see it from the counsel appearing before him.
Is forum shopping illegal, or just discouraged?
Noting the emphasis on Civil Procedure (and not just on the immediate thread), “playing the game” by the rules is something that is simply allowed.
Was the game playing here BY those rules? Is a better (more appropriate) response to CHANGE the rules rather than allow a judge to do something (again) that he had been chastised for previously?
Since the Sup. Ct. overruled the Fed. Cir. neutering of the specific patent suit venue statute there is far less opportunity for patent suit “forum shopping”. In particular, far less patent suits are now filed in E.D.TX.
Paul, thanks, but that does not address my point.
If anything, this merely provides that the “rules for playing the forum shopping game” were slightly amended, AND the game goes on with those slightly amended rules.
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