–E.D. of Texas Defendants Seek to Ride Off Into the Sunset– 

The E.D. of Texas is well established as the premiere plaintiff forum for patent holders, speedily deciding patent cases, and finding patents invalid relatively infrequently. Similarly, the emergence of patent reexamination as an effective tool in avoiding litigation costs by staying a concurrent litigation has proved effective in the E.D. of Texas sporadically at best; Judge Ward and Judge Davis in particular very rarely, if at all, stay an action in favor of a pending patent reexamination.  

Since In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), a motion to transfer to a more convenient venue from a Texas court has become a marginally effective defendant strategy.  Now, as a matter of course, defendants will seek transfer of a patent infringement case to a more “convenient” forum.  Of course, convenience is rarely a mere issue of geography, but rather a basis for moving the dispute to a less patent friendly forum. In the eyes of defendants, less patent friendly would describe practically any other forum. Yet, as noted in the chart below, infringement cases seeking transfer in 2008-2009[1] increasingly sought California as a destination of “convenience.” 

xfer1e litigation despite the fact that the reexamination proceedings could take five to seven years with appeals to conclude.[2]

In a post last month, we explained that plaintiff forum selection should include an analysis as to the “reexamination friendliness.”  As can be appreciated, depending upon the location and judge of a given federal district court, the odds of a case being stayed can vary quite significantly.  Indeed, even after a plaintiff has selected a seemingly desirable forum, the game is not over; the ability of a defendant to transfer from a plaintiff-friendly forum to a forum that is reexamination friendly, such as the N.D. of California, and subsequently seek a stay of the litigation can be an especially effective, Texas Two-Step.


[1] 64 Motions were analyzed in total.

 [2] Perhaps the Plaintiff overplayed the prejudice factor to the detriment of others, still, many district courts point to such delays as clearly prejudicial, especially when direct competitors are involved as is the case here.