New Patent Cases Filed in Waco Will Be Randomly Assigned Among Western District of Texas Courts and Divisions
by Daniel L. Moffett, Andy Rosbrook & Hannah D. Price
July 28, 2022
District Court, Patent Litigation, Federal Circuit
In response to the recent concentration of patent cases filed in a single court in Waco, Texas, all new patent cases filed in the Western District of Texas’s Waco Division will be distributed among the district’s various courts and divisions.
On July 25, 2022, Chief U.S. District Judge Orlando Garcia issued an Order Assigning the Business of the Court as it Relates to Patent Cases, ordering that all patent cases filed in the Western District’s Waco Division be randomly assigned to 12 judges across the district, including to courts in San Antonio, Austin and El Paso. New patent cases filed in the Western District’s other divisions are not subject to this random assignment.
Chief Judge Garcia’s order responds to the explosion in patent filings in District Judge Alan Albright’s court. Since Judge Albright’s confirmation as the sole district judge in the Waco division in 2018, the number of patent cases filed in the Western District has grown dramatically, from less than 100 per year to nearly 1000 new case filings in 2021. Almost all of those cases have landed in Judge Albright’s court. As a result, Judge Albright currently oversees about 20 percent of all pending U.S. patent cases, more than any other district court judge in the country.
This consolidation of patent cases into a single court has drawn criticism from both the Federal Circuit and the Senate’s intellectual property subcommittee. Over the last two years, the Federal Circuit has granted multiple mandamus petitions overturning Judge Albright’s denials of transfer motions. And in November 2021, Senators Patrick Leahy and Thom Tillis sent a letter to Chief Justice John Roberts expressing their concern about the concentration of patent cases in a single court, saying that it “creates an appearance of impropriety” that is “unseemly and inappropriate.”
The new random assignment process addresses these criticisms by limiting plaintiffs’ ability to deliberately choose Judge Albright’s court over other venues. Now, patent plaintiffs who file in Waco hoping to have their case heard by Judge Albright will have only a one-in-twelve chance of seeing that happen. Instead, patent cases filed in the Waco division are far more likely to land elsewhere in the district, including the San Antonio division, where five of the 12 district judges identified in Chief Judge Garcia’s order sit.
Chief Judge Garcia’s order does not affect the hundreds of patent cases already on Judge Albright’s docket, but it is expected to substantially curtail the number of new patent cases filed in Waco. The extent of the impact remains to be seen, however, and will likely depend on whether other courts within the Western District of Texas adopt some or all of Judge Albright’s standing orders and guidelines pertaining to patent cases.
IPR Petition Denied Due to Expert’s Lack of Relevant Experience
by Matthew George Hartman & Rubén H. Muñoz
September 12, 2022
Patent Trial and Appeal Board, Inter Partes Review, Obviousness, Medical Devices, Expert Testimony
A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan.
The patent at issue related to a tele-presence system that allows a physician at a remote location to view a surgical procedure and to provide instructions and mentoring to personnel at the surgical site via video conference. The tele-presence system includes a cart with an overhead camera mounted on an arm or “boom” that can be extended or rotated. This allows the overhead camera to be placed in different positions, including inside the sterile operation field, in order to provide a desirable view of the patient and operating procedure. Petitioner filed a petition for inter partes review, alleging that the claims would have been obvious in view of several prior art combinations.
In assessing whether to institute IPR, the board considered, as a preliminary matter, whether petitioner’s expert had the requisite level of skill to testify from the perspective of a skilled artisan. The board found that the definition of a skilled artisan, which was advanced by petitioner, required “at least two years of research or work experience in designing or engineering teleconferencing systems, such as those used in telemedicine.” The board further found that although petitioner’s expert had advanced degrees in electrical engineering, he lacked specific experience researching or engineering teleconferencing systems. In reaching this conclusion, the board found the expert’s vague reference to “numerous experiences with teleconferencing” and to having performed “design reviews of telemedicine devices” insufficient to establish himself as a skilled artisan. Therefore, the board gave no weight to testimony by petitioner’s expert on any issue analyzed through the lens of an ordinarily skilled artisan, including what a skilled artisan would have derived from the prior art technology.
Nevertheless, the board found that even if petitioner’s expert had been a skilled artisan, his testimony was a “carbon copy” of the petition, neither of which explained sufficiently a motivation for combining the asserted references to arrive at the claimed tele-presence system. Thus, the board found that petitioner failed to establish why a skilled artisan would have modified a mobile robot disclosed in the prior art to include a camera attached to the robot by an adjustable boom. According to the board, petitioner failed to address patent owner’s contention that coupling a camera to the prior art robot would complicate the steering and balance which could cause the mobile robot to tip over or contact objects, such as patients. Because the board found the deficiencies in the petition dispositive, it declined to institute IPR.
Practice Tip: When relying on an expert to provide opinions from the perspective of an ordinarily skilled artisan, including before the PTAB, it is critical to ensure that the selected expert meets, at a minimum, the applicable definition of a skilled artisan, which needs to be backed up by evidence and not conclusory statements.