Guest post by Paul R. Gugliuzza & Joshua L. Sohn
One of the oddest things about the Federal Circuit is that, in the court’s view, it’s powerless to decide many issues of federal law that arise in the appeals presented to it.
Sure, on matters of patent law, what the Federal Circuit says binds district courts, the Patent Office, and future panels of the Federal Circuit itself. Ditto for nonpatent matters the Federal Circuit considers “unique” to patent disputes.
But, on pretty much every other issue in a Federal Circuit patent appeal—whether it be transfer of venue, the permissible scope of discovery, co-pending antitrust or copyright claims, or anything else—the Federal Circuit asserts no “law-saying” power. Instead, the Federal Circuit—and district courts in cases that will be appealed to the Federal Circuit—apply the precedent of the regional circuit from which the case arose.
Recent Federal Circuit venue disputes spotlight the need for a better approach to questions of nonpatent law in patent cases.
As readers of this blog surely know, the Federal Circuit decides venue questions all the time, usually through petitions for writs of mandamus by defendants seeking to escape the Eastern or Western Districts of Texas. As a nonpatent issue, however, a court deciding a transfer-of-venue fight in a patent case must apply regional circuit law.
Yet, at the regional circuits, transfer disputes are vanishingly rare: the Federal Circuit in a single year decides as many transfer cases as the regional circuits decide in a decade. Moreover, the regional circuit cases that do exist usually involve fact patterns wildly dissimilar from patent litigation, making that precedent unhelpful in the patent context.
The paucity of relevant binding precedent has led both district judges and Federal Circuit judges to essentially guess about what “what the law is.” Judge Albright, for instance, has complained about having to choose between what he characterized as “traditional Fifth Circuit transfer law” or “the Federal Circuit’s”—erroneous, in his view—“interpretations of Fifth Circuit transfer law.”
And, in one of the Federal Circuit’s most high-profile venue mandamus grants, In re Apple, Judge Moore castigated the majority on the ground that “[n]either [the Federal Circuit] nor the Fifth Circuit has held that an accused infringer’s general presence in a district is irrelevant” to the transfer analysis. Well, of course the Fifth Circuit has never held that! With the Federal Circuit’s exclusive jurisdiction over patent cases, how could it?
Transfer isn’t the only area where we see the Federal Circuit’s choice-of-law rule leaving judges and litigants in the dark. In a forthcoming article, we provide examples from areas as varied as copyright, antitrust, and attorney-client privilege.
And we propose a simple solution: much like federal courts certify unsettled questions of state law to state supreme courts, the Federal Circuit should certify unsettled questions of nonpatent law to the regional circuits.
At this point, you hopefully have lots of questions: Wouldn’t we need Congress to pass a statute to make this happen? What about Article III’s case-or-controversy requirement? Wouldn’t certifying questions just add more cost and delay? And wouldn’t it be easier to simply change the choice-of-law rule?
To see how we respond, download the article!
—–
Paul R. Gugliuzza is Professor of Law at Temple University Beasley School of Law.
Joshua L. Sohn is a Trial Attorney at the U.S. Department of Justice and former law clerk to Judge Jerome Farris, U.S. Court of Appeals for the Ninth Circuit. J.D., Harvard Law School; A.B., Stanford University.
The views expressed in this piece are those of the authors and should not be taken to represent those of the U.S. Department of Justice.
How often do does regional circuit law make a difference? I think almost never.
I see a lot of Federal Circuit opinions that look something like the following:
* Appellant appeals from district court grant of summary judgment.
* We apply regional circuit law to non-patent issues.
* In circuit X, summary judgment is appropriate if “the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” [quote decision from circuit X quoting FRCP 56(a)].
* Proceed to decide the appeal using the same summary judgment standard that would apply in any circuit.
There are a few regional-circuit variations on narrow evidentiary issues. The Third Circuit has something called the “Pennypack factors” for deciding whether belatedly-disclosed evidence should be excluded from trial. But for the most part, the cases seem to be mostly judges applying the same broad standards to different facts and arguments.
I’m skeptical of Judge Albright’s suggestions, for example, of conflict between Federal Circuit and Fifth Circuit precedent on transfer motions. The Federal Circuit–at least nominally applying Fifth Circuit law–has considered a lot more arguments for transfer, because there are two known courthouses in Texas that patent defendants try to get out of almost whenever possible. Maybe he thinks some of the Federal Circuit cases are wrong or that Fifth Circuit judges would give him a longer leash, but I don’t see the legal conflict.
The idea that the CAFC should certify some of these questions to the CA5 (or other relevant circuits as applicable) seems a fine idea to me. Of course, certifying questions only work if the other court is willing to take the case, so this approach will not always work out. Where it can be applied, however, it seems better than just having the CAFC guess at what the CA5 (or other circuit) would say.
>if the other court is willing to take the case
We should make it mandatory. Even beyond the “guessing game” issues identified in the original article, there is a problem wrt a break of heircharcy i.e., there is no practical way to *enforce* the rule that the Fed. Circuit should follow 5th circuit law.
“Transfer disputes are vanishingly rare” rare because in other circuits it is unimaginable that trying a case could ever be appealed — much less held to be — abuse of discretion. The Federal Circuit is too busy trying to manufacture law to protect incumbents and stick it to inventors, to harmonize their jurisprudence with hundreds of years of law if the other 12 circuits. They are going out of their way to find a means to to the desired end — unenforceability of a patent right. It isn’t that hard to just apply the law; we would all be better off if they did.
much less held to be — abuse of discretion
The Federal Circuit’s application of the “abuse of discretion” standard is an absolute joke. The “abuse of discretion” standard is intended to be so high so as to prevent these writs of mandamus from ever being filed.
The Federal Circuit is too busy trying to manufacture law to protect incumbents and stick it to inventors
Nothing more need be said.
The “abuse of discretion” standard is intended to be so high so as to prevent these writs of mandamus from ever being filed.
I can appreciate the intuitive logic of this line of reasoning. No doubt this is the same intuition that motivated the outcome before the 3-judge panel in In re Volkswagen of Am., 223 Fed. Appx. 305 (5th Cir. 2007).
Nevertheless, the CA5 took en banc review of that panel’s decision in order to repudiate it. When the pronouncements of a court en banc contradict those of a 3-judge panel of the same court, the en banc opinion is the law and the panel’s opinion is not. Patiently reiterating the logic of the repudiated opinion—no matter how sound and persuasive that logic may be—does not transmute bad law into good law.
You are confusing the difference between the CA5’s pronouncement on what should be reviewed with the standard of review and how it should be applied
It is the difference between saying that X, Y, and Z facts are pertinent to a determination of obviousness and then saying that findings of fact (underlying that obviousness determination) are reviewed for substantial evidence (i.e., very deferential).
If I’m strategizing on taking a case to an appeal (as appellant), I’m trying to avoid any characterization of the issue as a factual one. Under substantial evidence, as long as the Board/Court has something to support their finding that is “more than a scintilla,” the finding will not get set aside. Again, it is very deferential standard or review.
However, what is even more deferential is abuse of discretion. It is just one step up from no review whatsoever (e.g., a decision to institute an IPR). However, time and time again, we see the Federal Circuit essentially performing de novo review on the facts. In re Volkswagen was about the kind of facts that get looked at — not how findings as to those facts are reviewed.
In re Volkswagen was about the kind of facts that get looked at
No, not correct. The question of what facts get considered was settled by the CA5 in Humble Oil & Refining Co. v. Bell Marine Service, Inc., 321 F.2d 53 (5th Cir. 1963). Read the en banc opinion and you will see that they were not addressing what factors are to be considered, but rather whether a court could abuse its discretion by refusing to transfer.
The Volkswagen panel said that refusal to transfer could not be an abuse of discretion. The en banc court said that it could be an abuse of discretion. Nothing about this turned on the district court considering the wrong facts.
The en banc court said that it could be an abuse of discretion. Nothing about this turned on the district court considering the wrong facts.
Nothing about en banc decision of Volkswagen changes how abuse of discretion is determined.
The panel decision for Volkswagen (223 Fed. Appx. 305 (5th Cir. 2007)) did NOT say that “refusal to transfer could not be an abuse of discretion” as you aver. I suggest you actually read that case. Rather, they distinguished that case over another case — asserting that a 400 mile travel distances is not the same as “the roughly 150 miles involved here.”
Nothing about this turned on the district court considering the wrong facts.
Yes it did. This is a quote from the en banc decision: “the district court erred in applying this factor because it does weigh in favor of transfer” followed by “the district court erred in applying this factor because it also weighs in favor of transfer.” Similar language is found two more times in the decision.
From the en banc opinion:
Whoops, sorry. I neglected to close my blockquote. The final paragraph is mine, not part of the quoted opinion.
“Whoops, sorry. I neglected to…”
That’s because you are too DAMM busy inserting your ‘hidden’ hyperlink signals….
Now, one on the poet Flannery is interesting, but it reeks of your ego (I bet that you ‘identify’ as being akin to the poet, flattering yourself, as opposed to being one that she would ridicule).
You are just not ‘all that.’
You are not even close to being a smidgeon of that.
Yeah the inflation coming down is why J powell should stop robbing people at interest-rate point.
Are you presuming that policy has something to do with reality?
That’s mighty generous of you.
There is just no way to square this with the idea that “[t]he ‘abuse of discretion’ standard is intended to be so high so as to prevent these writs of mandamus from ever being filed.” That was the logic of the opinion that the en banc overturned.
LOL. You got totally faked out. Again, read the original panel decision that you cited. This so-called “logic of the opinion” is NOT IN THE OPINION.
The original panel cited another Volkswagen case (371 F.3d 201 (5th Cir. 2004)) that naturally preceded both cases in which a writ of mandamus was granted. Consequently, “whether mandamus is an appropriate means to test a district court’s ruling on a venue transfer motion” was not a contested issue. Rather, it was already accepted.
This so-called “logic of the opinion” is NOT IN THE OPINION.
From the unpublished panel opinion: “Mandamus is an extraordinary writ. We will issue the writ only… when the trial court has so clearly and indisputably abused its discretion as to compel prompt intervention by the appellate court. Further, the district court has broad discretion in deciding whether to order a venue transfer,” (internal citations, quotes, & ellipses omitted).
The original panel cited another Volkswagen case (371 F.3d 201 (5th Cir. 2004)) that naturally preceded both cases in which a writ of mandamus was granted. Consequently, “whether mandamus is an appropriate means to test a district court’s ruling on a venue transfer motion” was not a contested issue. Rather, it was already accepted.
I wonder whether we are talking past each other here, because I can no longer tell what your point is. You started out by averring that “[t]he ‘abuse of discretion’ standard is intended to be so high so as to prevent these writs of mandamus from ever being filed.” Now you are telling me that it is well settled law that of course mandamus is available to review (and possibly compel) a transfer order. These do not seem to be congruent assertions. What am I missing?
You are, of course, under no obligation to indulge my sincere lack of comprehension of the point that you are trying to make. I am, however, sincerely trying to understand what you are saying, and I am lost.
Perhaps, to the extent that you think it worth your while, you might explain what you perceive to be the difference between the point that you are trying to make, and the dissent from the en banc opinion. It still seems for all the world to me that you are just reiterating the (perfectly sound) logic behind the argument that the CA5 rejected en banc.
Yet more hidden OMB-TDS….
Whatever are you (and the large majority of Sprint Left folxs) going to do when Trump passes away?
Exhale like Frodo after the ring was destroyed.
Sure — when this ‘ring’ is destroyed.
You started out by averring that “[t]he ‘abuse of discretion’ standard is intended to be so high so as to prevent these writs of mandamus from ever being filed.” Now you are telling me that it is well settled law that of course mandamus is available to review (and possibly compel) a transfer order. These do not seem to be congruent assertions. What am I missing?
The “so high as to prevent these writs of mandamus from ever being filed” is an assertion as to policy. Clearly, these writs of mandamus have been granted for a very long time. Consequently, while it is possible to file one, it is very unlikely it will be granted.
BTW, the same policy observation can be made about the “substantial evidence” standard of review for findings of fact. You wouldn’t ever catch me appealing an issue of fact before the Federal Circuit because it is almost always going to be a loser. That standard of review has an intended impact — which is to prevent those issues (subject to that standard of review) from ever reaching the court. In this particular instance, an appellate court doesn’t want to be rooting around all the testimony to determine whether the finding of fact was correct or not. They don’t have the benefit of hearing all of the witnesses and gauging their credibility, as a whole. So how do they prevent those issues from being appealed? They create a higher standard of review. Sure, some (likely-not-too-wise) attorneys will try to appeal a finding of fact (and perhaps some will win). However, in the vast majority of situations, that is a loser argument, which is why experienced attorneys don’t appeal findings of fact.
Turning back to the 1404 transfer motion, it is discretionary on the part of the judge (i.e., “a district court may transfer any civil action”). Notably, it is NOT REQUIRED. In this instance, the standard of review for discretionary decision is abuse of discretion. This is a snippet from a piece I found at Georgetown Law regarding the standards of review:
In each stage of litigation, the judge is faced with a number of decisions that require an exercise of discretion. In making these decisions, the judge must consider many different factors, and often it is not clear how heavily any of these factors should be weighed in the balancing process. Typically, the judge who presides during the trial is in the best position to evaluate the relevant factors. Thus, when reviewing discretionary decisions, the courts of appeals give great deference to the result reached by the trial judge under the abuse of discretion standard. It will be a rare case where the court of appeals will reverse a discretionary ruling and direct the court below to reach a different result.
This is the kind of discretion one would hope (if you were a very senior associate) your partner would give your work product (as a patent prosecutor). You know the ins and outs of the case better than anybody, and there are a boatload of decisions (in terms of claim amendments and arguments) that you need to make based upon the current prior art, the past prior art, the examiner, the intended scope of the claims that the reviewing partner just doesn’t know about absent a really deep dive. No partner wants to do that, and one would expect a senior associate to be able to competently make discretionary actions regarding how to prosecute the application. As such, absent a clear mistake on the law, the partner shouldn’t be addressing these discretionary decisions.
The same things applies to judges. They don’t want or need an appellate court nitpicking every single discretionary decision they make. To do so wastes the time of the appellate court. This undergirds the reasoning behind the abuse of discretion standard. If the judge gets the law wrong, then that is abuse of discretion, but outside of that it should be hands off.
As this article states, “transfer disputes are vanishingly rare.” I’m quite positive that a great many defendants would love to transfer a case elsewhere as (smart) plaintiffs, to the extent possible, are going to be filing in venues that are better for the plaintiff than the defendants. However, it is the standard of review that prevents writs of mandamus from being granted in the other circuits where motions to transfer are denied.
People have characterized the issue as “what is wrong with Judge Albright?” That’s the incorrect way of looking at it. Rather, the issue should be is “what is wrong with the Federal Circuit?” Judge Albright is doing what every other judge does — which is exercise his discretion. It is the Federal Circuit that is acting differently than other courts of appeals.
And, of course, the law is that every patent case has everything to do with the post office in Marshall, TX.
Transfer disputes are rare in other areas of the law because most non-Texas district courts actually consider the merits of transfer motions, regardless of how plaintiff-friendly the judges there might be.
Considering the merits follows the rules as set in the particular districts (as opposed to one’s created by the CAFC) — is that not the point of the article?
This is not a new tussle as to who exactly gets to set those rules.
Sure (with caveat that the rules are set in the regional circuits).
But Josh is just whining, and the banana republic of East Texas didn’t get its act together until the Federal Circuit started granting mandamus petitions. Gilstrap would sit on transfer motions for six months, hold a Markman Hearing, and use the six month delay as a justification for not transferring the case.
Yes, thank you – I did mean to indicate “circuit” in my comment.
But the view that Josh is merely whining misses the evident power struggle in that the CAFC — for patents — wants to enforce its view or what it proper or not instead of kicking this back to tue fifth circuit to finalize (notwithstanding Greg’d posts and their hidden signaling).
If a particular district within a circuit is “misbehaving,” would not this be more properly kicked to the immediate supervisor of that district?
Didn’t one of the Texas judges effectively throw shade on the CAFC for their nanny-like intrusion?
(Also, your comment about “delays” does not sound like the typical “whine” about the Texas system, as the typical whine is that the proceedings are too quick (along with a FAIR view for Patent holders, this prompts the settlements that drive foreign shopping by the Efficient Infringers).
I have no issues with the idea that the Federal Circuit should certify questions of regional circuit law to that circuit.
But there is currently no mechanism for the Federal Circuit to do so.
As for your parenthetical about delays, you aren’t reading what I’ve said. I’m saying that judges would stall ruling on transfer motions and use their own stalling as the basis for denying transfer motions, until the Federal Circuit stepped in and put a stop to it. They did it to Gilstrap and now they’re doing it to Albright, and they’re entirely correct to do so.
“and they’re entirely correct to do so.”
Are they though?
The point here being is that they are NOT the body to be doing so. That you agree with the Ends, simply cannot justify the Means.
Aside from the OMB-TDS signaling, this post from Greg is delish.
As to: “ The idea that the CAFC should certify some of these questions to the CA5 (or other relevant circuits as applicable) seems a fine idea to me.”
Check the time stamps.
The only post to which Greg’s reply could be to was mine, as SS’s did not show up for more than after an hour when Greg responded to me.
He has averred to not only “not reading” my posts, but to not even being able to SEE them.
Way to go Greg.
[I]n other circuits it is unimaginable that trying a case could ever be… abuse of discretion.
I know that we have covered this point a million times, but maybe the million and first will do the trick: the point you are making was the holding in CA5 panel decision on this subject. In re Volkswagen of Am., 223 Fed. Appx. 305 (5th Cir. 2007) dismissed the mandamus petition because they believed that the question of venue transfer was so thoroughly committed to the discretion of the trial judge that it could not be an abuse of discretion not to transfer. But the CA5 took en banc review of that panel’s decision and reversed. In re Volkswagen of Am., 545 F.3d 304, 308 (5th Cir. 2008) (en banc) held that it is possible for a court’s decision to hold on to a case to be an abuse of discretion.
If you think that the CAFC is being too quick to find an abused of discretion, your argument really is with the CA5, not the CAFC. The CAFC is merely applying the precedent that the CA5 has delivered en banc. It really is possible (at least according to the CA5, which is the only circuit whose precedent’s matter when the plaintiff files in Waco TX) for a district court to abuse its discretion when it decides to try a case itself. This is not some fanciful invention of the CAFC.
Thanks for setting me straight, I was not familiar with this case. It still seems unreasonable, but I’ll have to read the opinion closer to understand the rationale that turned “may transfer” into “shall transfer”.
Power struggle — discretion is unquestionably provided.
The question (sub silento) is whose discretion.
Dozens makes the point that seems to be forgotten anew each time transfer comes up here. The Fifth Circuit’s In re Volkswagen en banc case in 2008 opened the door to the Federal Circuit’s transfer mandamus docket. The AIPLA filed an amicus brief in the Fifth Circuit arguing that Eastern District of Texas was improperly hanging onto patent cases. IIRC, some plaintiffs lawyers responded with their own amicus brief. The CA5 decided in In re Volkswagen that mandamus was at least sometimes an appropriate way to challenge overreaching 1404(a) transfer denials by district courts, and thus the Federal Circuit’s mandamus-to-transfer-cases-out-of-two-districts-in-Texas docket was born.
There may be others, but Link_A is the only FedCir order I can recall that grants mandamus when reviewing a transfer order from a district court outside the Fifth Circuit. link to cafc.uscourts.gov
Well said Josh.
Comments are closed.