Will the western district of texas remain a busy patent venue despite transfers

Judge Alan Albright, a former patent litigator, was appointed on Sept. 10, 2018 to the U.S. District Court of the Western District of Texas. In 2016 and 2017, the two years before Judge Albright took the bench, the Waco Division received a total of only five patent cases. (Westlaw Litigation Analytics, Thompson Reuters, 2022). However, in 2019, Judge Albright’s first year on the bench, the Western District of Texas received 279 patent filings, a similar number to the Northern District of California which received 255 filings. (Unified Patents Annual Patent Dispute Report 2019). The next year, however, in 2020, the Western District had an astonishing 886 filings, while the Northern District remained at 298 filings. (Unified Patents Annual Patent Dispute Report 2020). In 2021, the WDTX received 987 patent filings. (Unified Patents Annual Patent Dispute Report 2021).

From the sheer volume of patent filings in the Western District of Texas, it is clear that plaintiffs believe the Western District of Texas to be a preferred plaintiff-friendly venue for patent litigation, much like the Eastern District of Texas was for patent cases for some time. However, the Western District is now a significantly busier patent venue than the Eastern District of Texas.

Judge Albright initially attempted to hold on to most of the cases filed in his District by refusing to transfer many of these patent cases out of the Western District despite witnesses, documents and headquarters being located elsewhere.

However, the tide began to turn after numerous defendants filed writ of mandamus appeals to the Federal Circuit. Starting in 2021, the Federal Circuit began reversing and directing the Western District to transfer these cases, finding Judge Albright abused his discretion in denying transfer. For example, in In re Pandora Media, LLC, No. 2021- 172, 2021 WL 4772805, at *6 (Fed. Cir. Oct. 13, 2021), the Federal Circuit reversed the Western District of Texas and directed the District Court to grant defendants’ transfer motion and held that “the litigation should be conducted where more witnesses could testify without leaving their homes or their regular places of business.” Similarly, in In re Apple Inc., No. 2021-181, 2021 WL 5291804, at *3 (Fed. Cir. Nov. 15, 2021), the Federal Circuit directed the Western District of Texas to transfer the case to the Northern District of Texas, finding its refusal to transfer to be “a clear abuse of discretion” and that the witness convenience factors weigh strongly in favor of a transfer when “[defendant] identified several potential party and non-party witnesses residing in the Northern District of California, and no potential witnesses appear to reside in the Western District of Texas….” In In re Juniper Networks, Inc., No. 2021-156, 2021 WL 4519889, at *3 (Fed. Cir. Oct. 4, 2021), the Federal Circuit also found the Western District’s refusal to transfer to constitute an abuse of discretion when plaintiff’s ties to Texas were nonexistent, it was an error to find this factor neutral. Finally, In re Uber Techs., Inc., 852 F. App’x 542, 543 (Fed. Cir. 2021) the Federal Circuit rejected the Western District Court’s “conclusion that the local interest factor was neutral despite the District Court itself recognizing that the underlying accused functionality was researched, designed, and developed in the transferee venue.”

After these 2021 Federal Circuit reversals, and direction to Judge Albright to transfer, the Western District of Texas began to grant motions to transfer. For example, in Caselas v. Jetpay Llc, No. 6:20-cv-01138-ADA, 2021 U.S. Dist. LEXIS 245206, at *6 (W.D. Tex. Sep. 3, 2021), Judge Albright granted transfer finding “A plaintiff’s choice of venue is not an independent factor in the venue transfer analysis, and courts must not give inordinate weight to a plaintiff’s choice of venue.” Similarly, in HD Silicon Sols. LLC v. Microchip Tech. Inc., No. W-20-CV-01092-ADA, 2021 WL 4953884, at *5 (W.D. Tex. Oct. 25, 2021), Judge Albright granted transfer to the Northern District of California, citing the Federal Circuit’s decision in In re Juniper Networks, Inc., 2021 WL 4343309, at *4 and noting that “the Federal Circuit now takes the position that this Court should not accord the convenience of party witnesses less weight.” Judge Albright in HD Silicon Sols. found that “[b]ecause the majority of party witnesses and potentially willing third-party witnesses reside in the NDCA, with no relevant witnesses in the WDTX, the Court finds that this factor weighs strongly in favor of transfer.” Id

Judge Albright also granted transfer in the following cases: Lynk Labs, Inc. v. Home Depot USA, Inc. et al, 6:21-cv-00097- ADA, Dkt. No. 55 at 14 (Dec. 8, 2021)(granting motion to transfer and finding that Plaintiff identified no witnesses that could be compelled to testify in the Western District of Texas).; FCX Solar, LLC v. FTC Solar, Inc., No. 6:21-CV-548-ADA, 2021 WL 4953912, at *9 (W.D. Tex. Oct. 25, 2021)(granting motion to transfer finding that first-filed rule did not supersede forum selection clause waiver of venue); Proven Networks, LLC., v. Netapp, Inc., No. W-20-CV- 00369-ADA, 2021 WL 4875404, at *6 (W.D. Tex. Oct. 19, 2021)(granting motion to transfer finding that availability of compulsory process to secure the attendance of witnesses strongly favored transfer to the Northern District of California); Triller, Inc. v. ByteDance, Ltd., No. 6-20-CV-00693-ADA, 2021 WL 3913589, at *8 (W.D. Tex. July 9, 2021)(granting motion to transfer where “the speed of WDTX alone cannot counterbalance the totality of NDCA’s multiple slight conveniences.”); 10Tales, Inc. v. TikTok Inc., No. 6:20-CV-00810- ADA, 2021 WL 2043978, at *5-6 (W.D. Tex. May 21, 2021)(granting transfer where Northern District of California was “clearly more convenient and not one factor in the Volkswagen test favored the Western District of Texas).

It remains to be seen whether plaintiffs will continue to file patent litigation in the Western District of Texas and whether Western District of Texas will remain the busy patent venue of 2020 and 2021. However, it is clear through a review of 2021 and 2022 cases that Judge Albright has received the Federal Circuit’s message loud and clear. Thus far in 2022, there have been 232 patent cases filed since the beginning of the year, which is down only slightly from the 258 patent filings for the same time period in 2021. (Unified Patents Patent Dispute Analytics 2022). If plaintiffs continue to file patent suits in the Western District of Texas, it will be important that the plaintiff carefully consider whether the Western District is the proper venue. In addition, Judge Albright will carefully consider the location of party witnesses and if no witnesses reside in West Texas, a plaintiff should strongly consider filing elsewhere.

Sarah S. Brooks is a partner at Venable LLP.