I am honored to be selected for the IAM Strategy 300 for the sixth straight year.
I greatly appreciate IAM, as well as my clients, colleagues, and friends for their trust ! I especially thank to my US and China teams for helping me create a one-of-a-kind patent litigation practice.
When I left my very good in-house position at Qualcomm a little over five years ago with no clients, things could have gone horribly wrong. There have been hiccups, of course, but I during this period, I have been honored to work with the top patent litigators in the world. What started as a limited IP practice focused only in China has become a worldwide patent litigation and licensing practice focusing on the US, China, and Germany.
With the growth of litigation funding for US patent litigation and fair judges like those in the Western and Eastern Districts of Texas, the US part of my practice has continued to flourish. The magic, though, is combining US, Chinese, and German patent law into a worldwide enforcement campaign. Successful patent enforcement is no longer limited to one or even two countries. Rather, it is a vital part of business planning, and can require access to unfamiliar jurisdictions. As the world gets smaller and smaller, I have been honored to help clients successfully litigate in the US, Mainland China, Taiwan, Germany, France, Brazil, Vietnam, Singapore, and Italy.
I love what I do, and although that is generally enough, I appreciate the occasional accolade from great folks like IAM to substantiate that I am making a difference. I owe all of my partners, associates, assistants, friends, and clients for supporting me over the years, and especially during this horrid 2020. Here's to a better year next year, and to great patents and technology!
The "Albright Doctrine"
First, to be clear, the naming of the "Albright Doctrine" is mine, and hopefully no one (especially Judge Albright or the WDTX) takes offense. What I am calling the Albright Doctrine is simply the idea that a federal court can get to trial more quickly than the PTAB can both institute and and adjudicate an inter partes review. Judge Albright has been outspoken about this issue, saying specifically that "[i]t's my job to give people the opportunity to have their cases tried in a federal court ... and I probably can get a patent trial resolved more quickly than the PTAB can."
Patent cases in Waco have been moving MUCH more quickly than in courts in Delaware and California. For example, most claim construction hearings in Waco have taken place between 8 and 12 months from case filing according to data obtained from Lex Machina. Even more important than a quickly moving docket, though, is that Judge Albright has does not generally stay litigation due to an IPR request or institution. When asked recently by IAM why this is, here is how the Judge replied:
In allowing patent owners their day in court in a timely manner, Judge Albright has single-handedly changed the tenor of patent litigation and provided a fair and reasonable jurisdiction for patent disputes. Now, the PTAB is jumping on board!
As indicated below, the PTAB has basically stated that if the invalidity challenges are the same in the IPR request and parallel patent litigation, then if a court has a reasonable chance of adjudicating the issue first, the Board will use its discretion and not even institute a review. In essence, the PTAB is saying, "yes, we believe that courts can move more quickly than we can, and if the issues are the same, then any IPR would be moot and should not be instituted."
This is what I call the Albright Doctrine: that a district court can moot an IPR by moving quickly to trial so that a jury can adjudicate validity rather than the PTAB. I am a fan, because I agree with Judge Albright that juries are wise and will make the correct decisions through the longstanding U.S. trial system if allowed to do so. I am sure that infringers and those that do not respect patents would disagree.
Board Rejects Institution of IPR of FinTiv Patent
Last Wednesday, May 13, the PTAB denied institution of an IPR of Fintiv Inc.'s Patent No. 8,843,125. Apple had requested institution while Fintiv asserted that the PTAB should deny institution because Apple had raised the same invalidity challenges in the district court proceeding, which should be resolved before the PTAB reached its final decision.
The PTAB in its previous March 20 order regarding the same matter identified six factors for determining whether to institute the IPR under 35 U.S.C. § 314(a):
After reviewing the parties' briefs as to whether the Board should use its discretion to deny Apple's petition based on the board's precedential NHK Spring decision, the PTAB declined to institute review.
In NHK, the PTAB refused to institute an IPR when a trial was set to take place before the Board was expected to issue a final written decision, after analyzing factors six non-exclusive factors:
Six Factors Made Precedential
The Panel in its March 20 order made the six factors precedential, building on its NHK Spring decision and requiring future panels to analyze these factors when determining whether to exercise discretion to refuse review of a challenged patent on the ground that an upcoming district court trial will address the patent's validity.
Specifically, in its May 13 decision denying institution, the Board found that five of the six factors weighed in favor of denying Apple Inc.'s IPR bid, including the upcoming trial date of March 8, 2021 (postponed from November 16, 2020 due to COVID-19 pandemic) in the parallel litigation in the Western District of Texas (case no. 1:19-cv-01238-ADA).
Other factors that supported denial of institution of IPR included:
This PTAB decision makes the most sense of any I have seen in some time. I hope other courts around the country will adopt Judge Albright's policy of not staying cases and moving cases quickly to trial. Only time will tell, but right now, the PTAB just gave Judge Albright a vote of confidence.
Richard Lloyd at IAM has published part 2 of his interview with Judge Albright of the Western District of Texas Waco Division. For part 1, see my earlier post. Interestingly, Judge Albright makes a point to point out that his court should not be considered plaintiff-friendly, but rather, "scrupulously fair":
So, every single time I have ever given a talk to anybody, I have tried to stress that what I am hoping the people are going to get from my court is someone who had 20 years of experience handling patent cases and handled a fair number of patent trials to verdict - but also handled them on both sides of the docket. I want every party that comes out of my court to feel like I was scrupulously fair:
I have been saying this since Judge Albright (re)took the bench. Patent owners are rejoicing at the ability to file in Waco not because they get an unfair advantage, but rather because -- unlike many district courts and the PTAB -- the rules are not 100% against them. Perhaps the most important aspect of Judge Albright's court is that he generally does not stay litigation pending IPRs at the PTAB. As he says in part 2 of the interview:
"I think that people have a constitutional right to assert their patent. I mean, patents are in the Constitution, the right to a jury trial is in the Constitution. I am not taking away anyone's right to go to the PTAB, but I think people ought to have a jury trial.  I don't have any problem with the idea of the PTAB handling validity issues, but I will say this: I think juries are very wise and I think we can count on them to make the right decisions if they are provided with the right evidence. So, I have great faith in the juries on every issue."
It's sad that because defendants do not have their normal huge advantage, they are eager to imply that Waco is "plaintiff-friendly." Like Judge Albright, I think the better term is "fair."
Richard Lloyd at IAM just published his excellent interview with Judge Albright of the Western District of Texas Waco Division. I fully recommend everyone give it a read.
Yesterday, March 24, WDTX. District Court Judge Albright issued a Standing Order regarding Waco non-bankruptcy civil cases. You can click on the image to the right to download the PDF, but the main points are as follows:
1. All civil case hearings in Waco will continue as scheduled, but will be done telephonically.
2. For non-Markman hearings, if a party wants to use PowerPoint slides, the party must email the slides to the Court at least 24 hours before the hearing (if not, then the party waives its right to use slides during the hearing).
3. For Markman hearings, if a party wants to use PowerPoint slides, the party must email the slides to the Court within 6 hours of receiving preliminary constructions from the Court.
I am very happy that Judge Albright and the Western District of Texas are moving things forward even in the face of the COVID-19 pandemic. We should all applaud the Court for its courage and creativity in this dark time!
Stay safe everyone!
Richard Lloyd of IAM recently published a great article regarding the emergence of Waco as a top patent litigation forum (see https://www.iam-media.com/litigation/plaintiffs-are-flocking-ips-hottest-new-district-recent-changes-suggest-defendants). However, while we do not yet have a huge number of cases (I am hoping to change that substantively as well as with analysis here on the blog), I believe Waco is, without a doubt, the best place to file a patent litigation in the US.
Richard quotes my friend, Michael Smith, oracle of all things EDTEX, as pointing out several potential drawbacks of Waco. First, as anyone practicing in WDTX knows, discovery is limited until after claim construction. While this can be a drawback in certain circumstances, limiting (but not eliminating) discovery pre-Markman is smart, and helps limit costs for small business and NPE plaintiffs while they wait to get their claim construction. As someone that regularly represents “the little guy,” spending millions of dollars in time and money on reviewing discovery that, for the most part, will not affect the trial is wasteful. I learned how to work and try a case from my mentor, Sam Baxter, who taught me (especially in contingent-fee cases) to focus on the things that matter at trial. Large defendants will try to get small inventors and NPEs (and their counsel) to focus on other things, but if it is not needed for trial, then it is a waste of resources. Without hordes of lawyers that literally get paid to be inefficient, the little guys need to keeps their eye on the ball. And as anyone that has tried more than a few patent cases knows, only a few documents obtained in discovery are even remotely useful. Sam told me that we should be able to try the case the day we file it, and I have found that advice remarkably wise and productive. Limiting discovery to those things that are actually needed pre-Markman helps do that.
Plus, Judge Albright is a smart, common-sense judge, just as he was a smart, common-sense patent litigator before taking the bench. If something is truly necessary for your case, you will likely get it. Common-sense discovery rules are a good thing.
Second, Michael points out that parties are, absent prejudice, allowed to amend their infringement and invalidity contentions until several weeks after the Markman hearing. While less than ideal in some cases, because no one likes unpredictability, I don’t see this as a major problem, so long as the judge allows the jury to hear about the amendment and timing. Again, this is all about the jury, and unlike most courts these days, Waco allows the patentee to get their case to a jury in a timely manner.
While we’re talking about timing, perhaps the greatest advantage of filing in Waco is that patent owners will not have their cases stayed pending IPR. This is golden. In most courts around the country, the litigation is stayed for 12 to 24 months while the defendants throw darts as the patents via the PTAB. In addition to being remarkably unfair, it increases the cost and time of litigation for the plaintiff. This is particularly painful for small companies and individuals, who have to come up with between a $200K to $1M before they even get to step into court. This can be fatal for many folks. Let’s face it, few inventors have $500K lying around to wait until the USPTO agrees that the patent that they already granted is actually valid.
Lastly, the article points out that many hearings are taking place in Austin. Also, Judge Albright has made at least one inter-divisional transfer of a case from Waco to Austin. This is because the Judge’s son is completing high school in Austin this year. Judge Albright is often making the oh-so-beautiful drive up and down I-35 and there is no reason not to have hearings in Austin. In fact, as mentioned on this blog, Judge Albright encourages the parties to submit briefing via audio file so that he can listen to the while he drives back and forth. The Austin-centric portion of Judge Albright’s hearing schedule will likely diminish as Judge settles into his new home in Waco. In any case, again, I don’t see this as a problem, even if trials were to be held in Austin. Yes, many of the defendants are sued in Waco because they have a significant presence in Austin. However, I don’t see a jury being unfair to a patentee because Apple or any other large company has an office in Austin. Don’t get me wrong, I like the jury pool in Waco. But Austin is just not that bad, even if you have to have your case there.
Ultimately, patent owners that file in Waco know which judge they will get, because there is only one: Judge Albright. He is a capable, fair, and practical judge, which is why defendants don’t like Waco. It’s not that Waco is unfair, it is that Waco is fair to both sides. Big infringers don’t like this. But I (Erick) do. And so do patent owners starved for a forum to give them a fair opportunity to present their case to a jury.
Recently, David had the chance to interview the Honorable Alan D. Albright. In this Q&A with Judge Albright, the Waco Patent Blog hopes to provide practitioners in Judge Albright's court with some useful guidance and practice pointers.
WPB: Judge, many have taken note of your invitation to submit audio recordings for briefs. Are there any pointers that you would like to share with parties and their counsel?
Judge: First of all, there is no requirement to submit an audio file. I do find that it is helpful to have an audio version of a brief, but, with or without it, by the time for any action on my part I will have read every written brief that the parties submit. I certainly will not penalize any party for not providing an audio file. If a party does submit a file, it needs to be as an MP3 or Dropbox file. Also, I would prefer that the reader not speak out case citations, but rather simply say something like “see case”. Again, I will have read all of the written documents and the cited authorities.
WPB: Do you have any other “nuts and bolts”, brief-related suggestions for parties before your court?
Judge: Because I tend to write all of my own orders and opinions, and it is often useful to excerpt certain passages from the parties’ filings, I would appreciate receiving Word versions of motions and briefs. Counsel can email those to my law clerk.
WPB: When the inevitable discovery and other procedural disputes arise, how would you prefer that the attorneys approach the issue in your court?
Judge: I was in litigation practice for many years. I understand that counsel needs to protect their client’s interests, and that disputes will arise. I do not penalize attorneys or their clients for disagreeing. At the same time, I want to resolve disputes as quickly, fairly and efficiently as possible. So, I encourage counsel for all parties to simply call my chambers when a reasonable dispute arises. At that time, or as soon as I am available, I will resolve a reasonable dispute – have no problem doing that. At the same time, I do not want to get a call about petty disputes, the resolution of which would be apparent to any reasonable attorney.
WPB: While you obviously have any number of other kinds of cases, your patent docket seems to have received the most attention, nationally. Do you have any practice pointers with respect to the pivotal Markman hearings in your patent cases?
Judge: There are several features of my Markman hearings that parties would likely want to know. Unless the case is a multiple patent one, parties can expect one-half day for the Markman hearing. I have not yet found a case that required any more than that, though I do not at this time have an arbitrary argument time limit, either for parties or for any given claim term. With respect to argument, I will want to hear argument from both sides as to each disputed claim term, before moving to the next term. If a party is urging “plain and ordinary meaning”, I will want to first hear from the party that urges other than “plain and ordinary meaning”. While this may seem self-evident, I would like for at least one party to bring physical copies of the patent or patents at issue. I recently held a Markman hearing in which I was forced, because of a technical issue, to read the patent on my smart phone. I would also appreciate the parties bringing a simple list of the claim terms that are at issue. I’ve had cases in which the briefing actually left it unclear about what terms the parties were actually in disagreement. Finally, I want the parties to know that my goal is to reach the right claim construction, not to conform to any artificial structure for argument or time limits. I do not want to hear parties repeatedly arguing and re-arguing the same points over-and-over, especially once it is clear that we have exhausted all credible arguments and I have reached my conclusions, but I am happy to hear whatever counsel believe that I should hear until we reach that point.
WPB: Your standing order provides for tutorials. Do you have any pointers or preferences that you would like to share about tutorials?
Judge: As with audio files, tutorials are not required, but they can be very helpful in some cases. They are most helpful to me when they are structured in a way that explains, as simply as possible, what problem an embodiment of the claimed invention solves, and how it does it. I am not looking, for example, for just another way for a party to somehow support a claim construction position. Also, note that tutorials will not be on the record.
WPB: Your standing order for patent cases provide a clear structure and sequence for patent cases in your court. Do you have anything to add with respect to your prescribed procedures and schedules for parties to consider as they begin a patent case.
Judge: Yes, actually. As I have said in about every forum in which I have had the chance, my goal is to provide a venue in which every party knows that they have had their day in court, have had every opportunity to present their case, have been treated fairly, and have had every opportunity to do all of this in the most efficient and cost-effective way possible. Consistent with that, I not only do not mind, but encourage counsel to suggest alternative proceedings, sequences and schedules that depart from my default arrangements, if they believe that it makes sense for their case. If I agree, I will adjust accordingly.
WPB: Thank you for your time today, Judge. I think that this information will further help parties and their counsel appreciate the opportunity that both bringing and defending a patent case in your court represents for their clients.
We will be listing new patent cases filed in Waco on a weekly basis. We are a little behind, so here are the cases that have been filed from the beginning of June through today, June 21. Click the image for a downloadable PDF.
Look for our Q&A with Judge Albright next week as well as statistics regarding how quickly cases are moving. Viva la Waco!
We are about to have some really exciting content, including a Q&A with Judge Albright on some of the topics about which our readers are asking! At least part one of the Q&A will be posted no later than early next week.
For now, I wanted to post some more interesting stats about the patent cases that have been filed in Waco.
Here are the patent plaintiffs in heatmap and pie chart form:
...and here are the defendants:
Here are the law firms representing patent clients in the Waco Division:
And the attorneys:
Cases by subject patent IPC:
Cases by subject patent CPC:
...and cases by subject patent US Class:
That's all for now. Check here often for updates, and don't forget next week's Q&A with the judge! Feel free to subscribe by email.
Thanks for coming by! We wanted to give everyone a snapshot of how many cases are currently in front of Judge Albright, and we will continue to track this. The statistics we use are from Lex Machina. For now, let's get straight to the statistics!
As you can see, Waco is the land of patents and products liability. This makes sense given Judge Albright's technical acumen:
Those are the total cases. Here are the open cases before Judge Albright:
Here are the cases filed by year (keep in mind that Judge Albright received his judicial commission on September 10, 2018, and was sworn in by Chief Judge Orlando Luis Garcia on September 18, 2018):
Of the cases brought before Judge Albright, 148 (44%) remain pending, while 190 (56)% have been terminated:
Although we are still early in Judge Albright's tenure, of the 190 of the cases in his court have been terminated, the median time to termination is 72 days. By the one-year point, 87.4% of the cases in his court have been terminated. This bodes well for parties seeking swift and efficient access to the courts.
Compared to other Western District of Texas courts, Judge Albright's court is already the "king of patents." Also, compared to other WDTX judges, Judge Albright's court handles a lot of products liability cases:
His court is handling an comparatively large (compared to other WDTX judges) number of trade secret, trademark, and copyright cases as well:
Finally, in what we plan to be a weekly report on new patent cases filed in Waco, here are the patent cases filed in Judge Albright's court since May 24:
That's it for now. Please contact us if you have any questions, comments, or have ideas for what you would like us to cover in future posts! Thanks for reading!