2011 TRENDS IN PATENT CASE FILINGSper Case Plaintiffs per Case Defendants per Plaintiffs District of Delaware 484 911 2458 5.1 1.9 2.7 Eastern District of Texas 418 593 3163 7.6 1.4

2011 TRENDS IN PATENT CASE FILINGS:

James C. Pistorino, Partner 650.838.4392 [email protected]

Susan J. Crane [email protected]

Eastern District of Texas Continues to Lead Until America Invents Act is SignedBy James C. Pistorino1 and Susan J. Crane2

1 James Pistorino is a patent litigation partner in the Palo Alto, California office of Perkins Coie LLP.2 Susan Crane is an attorney in Los Gatos, California.3 Some aspects of the PACER dataset bear noting. First, the dataset includes information from the original case filing as well as any later-added parties. Thus, the reported numbers

are not a perfect reflection of the action at the time of filing, as parties may have been added later. Second, the dataset only classifies parties as plaintiffs or defendants and makes no effort to classify the parties as patentees or accused infringers. Thus, in actions seeking a declaratory judgment of non-infringement/invalidity, the party/parties bringing the declaratory judgment action (presumably the accused infringers) will be classified as the plaintiffs and the patentee/patentees will be classified as the defendants. Third, named plaintiffs/defendants are counted each time they appear as a party. Thus, a single party that brings four suits asserting patent infringement is counted as four plaintiffs in the reported data. Fourth, only cases coded as patent cases (code 830) were pulled. Thus, to the extent that cases were miscoded they are not included. At least some false marking cases have been coded as 890 (other statutory actions) or 690 (forfeit/penalty; other). Finally, neither the U.S. Court of Federal Claims nor the International Trade Commission fully participates in PACER, so patent cases filed there are not included.

FOOTNOTES

I. INTRODUCTIONIn 2010, the Eastern District of Texas led the United States in patent filings by virtually any

measure, including: (1) the number of cases; (2) the number of plaintiffs; (3) the number

of defendants; (4) the number of defendants per case; and (5) the number of defendants

per plaintiff. See James C. Pistorino, “Concentration of Patent Cases in Eastern District of

Texas Increases in 2010,” 81 PTCJ 803, 04/15/2011 (BNA). This was so despite eight writs of

mandamus from the Federal Circuit transferring cases from the Eastern District of Texas in

the period 2008-2010.

The patent case filing statistics for 2011 show that the Eastern District of Texas was on

track to have even more cases against slightly more defendants through the signing of

the America Invents Act (AIA) on September 16, 2011. Annualizing the pre-AIA case filings,

the Eastern District of Texas would have had 396 cases by 567 plaintiffs against 3,955

defendants for the year 2011.

Since the AIA was signed, however, Delaware has taken a commanding lead. Indeed, even

before the AIA was signed, filings in Delaware increased dramatically. While much of the pre-

AIA increase in Delaware can be explained by a small number of mass defendant cases, there

was still a notable uptick in Delaware patent case filings even factoring out those cases.

The following article presents 2011 patent case filing statistics that factor out false marking

cases. The article also examines the effects of the AIA on patent case filings through the

end of 2011. In addition, we examine possible reasons for the 2011 filing statistics.

A. The Data Sources

Docket data on patent lawsuit filings across the United States

from January 1, 2011 to December 31, 2011 were retrieved

from PACER and compiled into a database. PACER classifies

each party in a suit as a plaintiff, defendant, or something else

(e.g., intervenor, third-party plaintiff/defendant, and counter/

cross-claimant). We filtered out the secondary classifications

and examined only the primary plaintiff(s) and defendant(s).

For the year 2011, the dataset included information on 21,334

parties involved in 3,981 cases. Combined with the previous

analysis of cases between 1999 and 2010, the dataset includes

information on 158,097 parties involved in 36,163 cases.3

Adapted with permission from BNA’s Patent Trademark & Copyright Journal, 83 PCTJ 710 (3/16/12) The Bureau of National Affairs, Inc. (800.372.1033) www.bna.com.

2011 Trends in Patent Case Filings: Eastern District of Texas Continues to Lead Until America Invents Act Is Signed by James C. Pistorino and Susan J. Crane

2

D Mass

4000350030002500200015001000500

0

# of

Def

enda

nts

SD Cal D NJ D Minn SD NY ND Cal ND Ill CD Cal D Del ED Tex

Jurisdiction

The number of false marking cases seen in 2010 declined

somewhat, but was still substantial in 2011. To isolate the

effect of the false marking cases, we took steps to factor

out those cases. The listing of false marking cases at

www.grayonclaims.com was used for this analysis, and a

complete listing of all the cases considered false marking

cases as well as all the underlying data

is available upon request.

B. 2011 Patent Filing Statistics

As shown in Table 1, in 2011 the Eastern District of Texas led

the United States in patent filings based on: (a) the number

of cases; (b) the number of defendants; (c) the number of

defendants per case; and (d) the number of defendants per

plaintiff. In 2011, the average patent case in the Eastern

District of Texas involved a single plaintiff suing six defendants.

By comparison, in 2010 the average patent case in the Eastern

District of Texas was a single plaintiff suing seven defendants.

Table 1: Top Ten Jurisdictions with the Most Patent Cases in 2011 (Including False Marking Cases)

District Cases Plaintiffs DefendantsDefendants

per CasePlaintiffs per Case

Defendants per Plaintiffs

Eastern District of Texas 608 793 3562 5.9 1.3 4.5

District of Delaware 484 911 2458 5.1 1.9 2.7

Central District of California 336 524 1058 3.1 1.6 2.0

Northern District of California 238 423 786 3.3 1.8 1.9

Northern District of Illinois 230 310 814 3.5 1.3 2.6

District of New Jersey 188 468 412 2.2 2.5 0.9

Southern District of New York 157 431 652 4.2 2.7 1.5

District of Massachusetts 92 183 198 2.2 2.0 1.1

District of Minnesota 86 132 430 5.0 1.5 3.3

Southern District of California 83 98 303 3.7 1.2 3.1

Figure 1: Jurisdictions With the Most Defendants in Patent Litigation in 2011 (Including False Marking Cases)


3

As an absolute number in 2011, nearly 24% of all

defendants named in patent cases were sued in the

Eastern District of Texas. By comparison, the District of

Delaware had 17%, the Central District of California had

7%, and no other district reported more than 6%.

Compared to 2010, case filings in 2011 increased

from 3,512 to 3,981 (13%), and the number of

parties increased from 18,595 to 21,334 (15%).

In 2011, 321 false marking cases were filed, down

significantly from 695 in 2010. Table 2 shows the same

data as Table 1 with the false marking cases factored out.

Table 2: Top Ten Jurisdictions with the Most Patent Cases in 2011 (Excluding False Marking Cases)













Middle District of Florida 82 99 275 3.4 1.2 2.8

Figure 2: Jurisdictions With the Most Defendants in Patent Litigation in 2011 (Excluding False Marking Cases)

D Mass

350030002500200015001000500

0

# of

Def

enda

nts

MD Fla D NJ D Minn SD NY ND Cal ND Ill CD Cal D Del ED Tex

Jurisdiction


4

Excluding false marking cases, the District of Delaware had

the most cases and plaintiffs, while the Eastern District

of Texas had the most defendants. As discussed below,

many of the differences in the numbers for 2011 compared

to 2010 are attributable to changes in legislation.

C. The Impact of the AIA

On September 8, 2011, Congress passed the America

Invents Act (AIA), and the President signed the bill into

law on September 16, 2011. With regard to venue and

case filings, the AIA contains two important provisions:

1) A provision requiring false marking cases to be

brought by competitors and making it more

difficult to recover monetary damages; and

2) A provision designed to address concerns about

joinder of multiple defendants in the Eastern

District of Texas. See H.R. Rep. 112-98 at 55, n.61.

Both provisions had a dramatic impact on case filings.

Although 321 false marking cases were filed in 2011,

only 15 of those were filed on or after September 16.

Table 3 shows statistics for non-false marking cases

filed before the AIA went into effect on September

16. Table 4 annualizes, but does not seasonably

adjust, those numbers for ease of comparison to both

the actual 2011 filings and the 2010 filings.4

4 The 2010 data suggest no obvious seasonal variation in the number of plaintiffs or defendants named in each month. As discussed below, however, there was a large spike in filings in advance of the signing of the AIA. Thus, at least some cases that would have been filed later in the year were presumably filed earlier in 2011 to avoid the effects of the AIA. The simple annualization used here may somewhat overstate the pre-AIA trends.

FOOTNOTES

Table 3: Top Ten Jurisdictions: January 1 – September 15, 2011 (Excluding False Marking Cases)












Eastern District of Virginia 58 71 199 3.4 1.2 2.8

Middle District of Florida 57 64 238 4.2 1.1 3.7


5

Table 4: Top Ten Jurisdictions: January 1 – September 15, 2011 Annualized (Excluding False Marking Cases)

District Cases Plaintiffs Defendants

Eastern District of Texas 396 567 3955

District of Delaware 395 767 2860

Central District of California 303 491 1165

Northern District of California 223 442 862

Northern District of Illinois 176 241 898

District of New Jersey 170 430 396

Southern District of New York 138 462 565

District of Minnesota 95 151 523

Eastern District of Virginia 82 101 283

Middle District of Florida 81 91 338

n Eastern District of Texas

n District of Delaware

n Central District of California

n Northern District of California

n Northern District of Illinois

n District of New Jersey

n Southern District of New York

n District of Minnesota

n Eastern District of Virginia

n Middle District of Florida

n District of Massachusetts

n Southern District of Florida

n Southern District of California

Figure 3: Number of Defendants: January 1 – September 15, 2011 (Excluding False Marking Cases)

Figure 4: Number of Defendants: September 16 – December 31, 2011 (Excluding False Marking Cases)

The pre-AIA 2011 case filings appear generally in line with

the 2010 filings. Indeed, the top seven districts by case filings

were the same in both years, and the Eastern District of Texas

continued to have more case filings and substantially more

defendants and defendants per case than the other districts.

Table 4 shows that before enactment of the AIA, the Eastern

District of Texas was on track to have a 32% increase in the

number of cases, a 39% increase in the number of plaintiffs,

and 2% more defendants over its 2010 figures. Through the

signing of the AIA, more than 11% of the patent cases filed in

2011 were filed in the Eastern District of Texas, naming 24% of

all the defendants.

Noteworthy in Table 3 is the general increase in the number

of defendants per case across all districts. In 2010, of the top

10 districts, only the Eastern District of Texas averaged more

than four defendants per non-false-marking case. By contrast,

through September 2011, six of the top 10 districts averaged

more than four defendants per case.


6

Table 5: Top Ten Jurisdictions: September 16 – December 31, 2011 (Excluding False Marking Cases)












Southern District of California 28 34 43 1.5 1.2 1.3

Southern District of Florida 27 50 47 1.7 1.9 0.9

The increased filings and numbers of defendants in the District

of Delaware in the pre-AIA period were remarkable. On an

annualized basis, the District of Delaware was experiencing

a more than 50% increase in case filings, an 18% increase in

the number of plaintiffs, and a 324% increase in the number

of defendants. But much of that pre-AIA growth can be traced

to filings by a small number of plaintiffs against a very large

number of defendants. Eight plaintiffs filed 47 cases naming

1,054 defendants in the District of Delaware in the pre-AIA

period. This small number of plaintiffs drove the District of

Delaware’s pre-AIA defendants-per-case figure to 7.2 compared

to 3.5 for all of 2010. Nevertheless, even factoring out these

cases, Delaware was still on track for a 29% annual increase

in the number of cases, an 8% annual increase in the number

of plaintiffs, and a 54% annual increase in the number of

defendants.

In sum, the pre-AIA data show that as a percentage of non-

false marking patent cases filed in the United States, the

Eastern District of Texas was on track to increase its percentage

of cases and plaintiffs while holding relatively steady in the

percentage of defendants. While not yet in the lead, the

District of Delaware was experiencing a tremendous surge.

Table 5 reports the numbers for non-false marking cases filed

on or after September 16. As shown in that Table, the impact

of the AIA on the number of defendants per case was dramatic.

In the Eastern District of Texas, the average was reduced from

10 defendants per case to less than three defendants per

case. After the AIA, only a single district had more than three

defendants per case, compared to nine before.

Table 6 annualizes the post-AIA figures for ease of comparison

to the actual filings and the 2010 data.5 Had the post-AIA filing

rate prevailed throughout 2011, there would have been 4,160

non-false-marking cases nationwide, filed by 6,556 plaintiffs

against 9,399 defendants. These numbers would reflect a 14%

increase in the number of cases, a 7% increase in the number of

plaintiffs, and a 34% decrease in the number of defendants.

5 As noted above, the spike in case filings in the week before the AIA went into effect may have reduced the post-AIA filings because cases that may have been filed later in the year were filed earlier to avoid the AIA’s limitation on joinder.

FOOTNOTES


7

Table 6: Top Ten Jurisdictions: September 16 – December 31, 2011 Annualized (Excluding False Marking Cases)

District Cases Plaintiffs Defendants

District of Delaware 696 1254 1501

Eastern District of Texas 470 656 1278

Central District of California 375 554 730

Northern District of Illinois 304 416 534

Northern District of California 230 311 554

District of New Jersey 203 524 355

Southern District of New York 183 338 818

District of Massachusetts 139 270 220

Southern District of California 95 115 145

Southern District of Florida 91 169 159

Importantly, the provisions of the AIA related to joinder

were not retroactive. To the extent plaintiffs wished to avoid

the joinder provisions of the AIA, they had the incentive

to file more cases in the period leading up to the effective

date of the Act, and that is what the data shows.

Table 7 shows case filings through seven days before the AIA

passed Congress, during the seven days after passage but

before the President’s signature, and the period after the Act

went into effect. From January 1, 2011 to September 15, 2011,

11,419 defendants were named in non-false-marking cases.

More than 15% of that total (1,787) were named in cases

filed in the week between passage of the Act by Congress

and the President’s signature. Figure 3 shows the number

of defendants named in each calendar week in 2011. Week

36 corresponds to the week of September 8-15, 2011.

Table 7: AIA Effect on Non-False Marking Filings

District

Defendants Defendants per Case % Pre-AIA Defendants

Named Sept. 8-15

% Total Defendants

Named Sept. 8-15

Before Sept. 8 Sept. 8-15

After Sept. 15

Before Sept. 8 Sept. 8-15

After Sept. 15

District of Minnesota 229 139 60 3.8 23.2 3.5 37.8% 32.5%

Northern District of Illinois 433 199 158 3.8 22.1 1.8 31.5% 25.2%

Southern District of California 163 74 43 3.4 18.5 1.5 31.2% 26.4%

District of Delaware 1605 409 444 6.4 14.6 2.2 20.3% 16.6%

Eastern District of Texas 2079 706 378 9.2 13.1 2.7 25.4% 22.3%

Middle District of Tennessee 21 13 6 2.6 13.0 3.0 38.2% 32.5%

District of Oregon 59 23 26 4.9 11.5 1.7 28.0% 21.3%

Middle District of Florida 207 31 37 3.9 7.8 1.5 13.0% 11.3%

Western District of Wisconsin 46 14 75 2.3 7.0 4.2 23.3% 10.4%

Eastern District of Missouri 16 7 12 2.0 7.0 1.5 30.4% 20.0%


8

Figure 5: Number of Defendants Named in Cases by Calendar Week 2011 (Excluding False Marking Cases)

0

1800

1600

1400

1200

1000

800

600

400

200

0

# of

Def

enda

nts

1 2 3 5150494847464544434241403938373534333231302920191817151413121110987654 523616 21 2822 2723 2624 25

II. WHAT EXPLAINS THE 2011 FILINGS

A. Eastern District of Texas

As noted above, before the enactment of the AIA, the Eastern

District of Texas continued to lead the nation in non-false-

marking case filings, by virtually any measure. This was so

despite several factors that some expected to reduce filings

there. While none of the factors discussed below reduced

the absolute growth in Eastern District of Texas filings, it is

possible that these factors reduced the rate of growth.

1) Writs of Mandamus

Between 2008 and 2010, the Federal Circuit issued eight

writs of mandamus ordering Eastern District of Texas judges

to transfer cases to other districts. Some predicted that these

writ grants would reduce case filings in the Eastern District

of Texas, on the theory that plaintiffs would prefer to pick

a jurisdiction where venue would stick rather than being

transferred to a venue preferred by their opponents. But that

did not happen. By the end of 2010, non-false marking filings

in the Eastern District of Texas had increased by nearly 20%

over the 2009 filings, and the Eastern District of Texas had

more non-false marking filings than any other district in the

nation. Indeed, more than 25% of all defendants named in non-

false marking patent litigation in the United States in 2010

were named as defendants in Eastern District of Texas suits.

In 2011, the Federal Circuit issued three additional writs

ordering cases transferred from the Eastern District of Texas.

See In re Verizon, 2011-M956 (Mar. 23, 2011) (writ issued to

Judge Ward); In re Morgan Stanley, No. 2011-M962 (Apr. 6,

2011) (writ issued to Judge Davis); In re BioResearch, No. 2011-

M995 (Dec. 22, 2011) (writ issued to Judge Ward). Two of those

writs issued before the signing of the AIA. Nevertheless, as

detailed above, filings in the Eastern District of Texas were on

track to increase through the signing of the AIA. Thus, the writs

did not stop the growth in Eastern District of Texas filings.

As mentioned above, it is possible that the writs reduced the

rate of growth (i.e., absent the writs there would have been

even more cases and defendants in the Eastern District of

Texas). Alternatively, the Federal Circuit’s denials of writs of

mandamus relief in other cases, see, e.g., In re Google Inc.,

No. 2011-M968 (Mar. 4, 2011) (affirming denial to sever and

transfer by Judge Davis), combined with continued reluctance

of some Eastern District of Texas judges to order transfers,

may have encouraged even more filings in that court.


9

2) Eastern District of Texas Retirements/Resignations/Case Assignments

2011 saw three Eastern District of Texas judges resign

or retire. On September 29, 2010, Judge Ward announced

that he would resign effective October 1, 2011. On March

23, 2011, Judge Folsom announced that he would retire

effective March 31, 2012. On June 1, 2011, Magistrate Judge

Everingham announced that he would resign effective

October 1, 2011. On May 19, Rodney Gilstrap was nominated

to replace Judge Ward, and he was confirmed by the Senate

on December 5, 2011. Those resignations and retirements

did not stop the growth of pre-AIA Eastern District of Texas

filings, although they may have reduced the rate of growth.

Time will tell whether Judge Gilstrap and other new judges

are more inclined to transfer cases than their predecessors.

Notably, plaintiffs have some ability to influence which

Eastern District of Texas judges are likely to hear their cases.

The Eastern District of Texas has several divisions, six of which

are relevant to civil cases. These are: Beaumont (division 1);

Marshall (division 2); Sherman (division 4); Texarkana, (division

5); Tyler (division 6); and Lufkin (division 9). In December

2009, the court issued General Order No. 09-20 concerning

the assignment of cases to judges in the district. Under that

Order, 75% of the civil cases filed in Marshall were assigned to

Judge Ward, with the remaining 25% assigned to Judge Folsom.

Likewise, 95% of the patent cases filed in Tyler were assigned

to Judge Davis and 5% to Judge Schneider. Under the Order,

90% of the Texarkana filings were assigned to Judge Folsom,

with the remaining 10% to Judge Ward. Plaintiffs familiar with

this allocation had an incentive to file in particular divisions to

increase their odds of landing a judge that they deemed more

favorable (i.e., less inclined to transfer and more hospitable

on the merits). For example, plaintiffs desiring Judge Ward

could file a case in Marshall and have a 75% chance of having

him assigned to their cases. Likewise, plaintiffs desiring Judge

Davis had a 95% chance of having him as their judge merely

by filing in Tyler. Plaintiffs wishing for Judge Folsom had a

90% chance of being assigned to him by filing in Texarkana.

Effective October 3, 2011, General Order 11-13 modified

the case assignments so that 100% of the Marshall and

Texarkana filings were assigned to Judge Folsom. On December

15, 2011, General Order 11-17 reverted to the assignment

percentages of General Order 09-20 substituting Judge

Gilstrap for Judge Ward (i.e., 75% of the Marshall and 10%

of Texarkana filings were assigned to Judge Gilstrap).6

The case filings indicate that plaintiffs were making choices

based on the judicial assignments. Table 8 shows 2010 and

pre-AIA 2011 case filings by division in the Eastern District of

Texas. As shown there, filings in two divisions (Marshall and

Tyler) dominated, suggesting that plaintiffs were selecting

for Judges Ward and Davis. Table 9 shows the post-AIA

filings and the switch in preference from Marshall to Tyler

(i.e., for Judge Davis in light of Judge Ward’s retirement).

6 General Order 12-3 provides that starting in March 2012, the civil cases previously assigned to Judge Folsom will be assigned to Judge Schneider.

FOOTNOTES


10

Table 8: Eastern District of Texas Filings by Division—2010 – September 15, 2011 (Excluding False Marking Cases)

Beaumont Marshall Sherman Texarkana Tyler Lufkin

Month/Year Pltfs Defs Pltfs Defs Pltfs Defs Pltfs Defs Pltfs Defs Pltfs Defs

Jan-10 11 57 1 5 51

Feb-10 15 140 3 1 15 71

Mar-10 17 157 28 253 1 1

Apr-10 11 106 25 133

May-10 14 233 1 1 1 1 15 150

Jun-10 16 256 6 121

Jul-10 1 2 17 208 1 1 20 277

Aug-10 1 2 11 132 1 22 14 101

Sep-10 1 5 6 23 1 3 21 244 5 12

Oct-10 11 104 2 1 3 3 22 111

Nov-10 4 3 17 60 1 1 23 190

Dec-10 2 1 18 487 1 2 1 1 18 150

Jan-11 1 3 29 120 3 18 19 104

Feb-11 8 59 2 16 5 3 14 128

Mar-11 21 276 2 11 16 169

Apr-11 13 99 17 72

May-11 18 123 3 6 1 2 13 177

Jun-11 30 165 1 2 1 2 21 95

Jul-11 2 3 30 76 1 4 14 45 1 1

Aug-11 1 1 11 41 19 120

Sep-11 4 65 45 429 2 39 31 311

Grand Total 17 85 369 3351 20 85 17 56 376 3073 7 14

Table 9: Eastern District of Texas Filings by Division—September 16 – December 2011 (Excluding False Marking Cases)

Beaumont Marshall Sherman Tyler

Month/Year Pltfs Defs Pltfs Defs Pltfs Defs Pltfs Defs

Sep-11 9 12 2 2

Oct-11 1 1 5 16 3 9 15 46

Nov-11 1 2 37 40 2 1 59 132

Dec-11 14 15 1 2 45 100

Grand Total 2 3 65 83 6 12 121 280


11

n Marshall

n Tyler

n Lufkin

n Texarkana

n Sherman

n Beaumont

Figure 6: Defendants (Eastern District of Texas) January 1 - September 15, 2011

Figure 7: Defendants (Eastern District of Texas) September 16 - December 31, 2011

3) Lemley Article

In October 2010, Stanford Professor Mark Lemley

published an article entitled “Where to File Your Patent Case,”

which considered patentee/defendant pre-trial and trial

win rates, time to disposition, and time to trial by district.

See Mark Lemley, “Where to File Your Patent Case,” 38 AIPLA

Q.J. No. 4, at 1 (Fall 2010). Based on those measurements,

Professor Lemley concluded that patentees were overvaluing

the Eastern District of Texas, which was not in the top five

districts by any of those measures.7 Instead, Professor Lemley

suggested that filing suit in other districts would be wiser.

As discussed above, filings in the Eastern District of

Texas did not drop off before the signing of the AIA, but

it is possible that Professor Lemley’s article reduced the

rate of growth in Eastern District of Texas filings.

4) Post-AIA Filings

After the signing of the AIA, the Eastern District of

Texas slipped to a distant second place in terms of filings and

defendants. One reason may be that plaintiffs are currently in

the “anchor” phase of an anchor case strategy. The anchor case

strategy is designed to make it more difficult for defendants

to succeed in transferring cases to other districts. Under that

approach, plaintiffs first file suit against a single defendant

that has little hope of transferring the case to another district

(e.g., a party with a facility, etc. in the Eastern District of Texas).

After waiting some time, the plaintiff then sues additional

defendants with less connection to the district. When

motions to transfer by the new defendants are presented,

the plaintiff argues that the cases should not be transferred

because the court is already familiar with the patents (i.e.,

judicial economy). Such an approach was publicly advocated

by members of the Eastern District of Texas bar at the Bench

and Bar Conference held in Dallas in September 2011.

Whether the drop-off in post-AIA filings is a result of

plaintiffs employing that approach remains to be seen. It

is also possible that plaintiffs are concluding that due to

the AIA’s venue provisions, judicial retirements, or other

reasons, the Eastern District of Texas is not as favorable as it

once was. It is important to bear in mind, however, that the

Eastern District of Texas remained the second most popular

venue for patent filings even after enactment of the AIA.

7 Professor Lemley also looked at the percentage of filed cases that actually go to trial in each district and by that measure the Eastern District of Texas was second with 8% behind the District of Delaware with 11.8%.

FOOTNOTES


12

B. The District of Delaware

No one factor appears responsible for the increase in pre-AIA

2011 filings in the District of Delaware. As noted above, a

small number of plaintiffs were responsible for a large number

of defendants. Even factoring out those cases, however, the

District of Delaware experienced increased filings. Other

factors that may account for the 2011 filings include:

1) Transfer Decisions by Judge Robinson

On June 8, 2010, District Judge Robinson issued a

decision in XPRT Ventures, LLC v. eBay, Inc., et al, Civ. No. 10-

595-SLR, denying a motion to transfer. In that decision, she

reasoned that “because all defendants are incorporated in

Delaware, they have no reason to complain about being sued

in Delaware.” In June 2011, Judge Robinson denied a motion

to transfer in Marvell v. Link_A_Media Devices Corp., Civ. No.

10-869-SLR, using virtually the same language. As a result,

plaintiffs suing defendants incorporated in Delaware may have

assumed that cases filed there are less likely to be transferred.

While this factor may have accounted for some of the increase

in filings in the District of Delaware, the pattern may not

continue in 2012. On December 2, 2011, the Federal Circuit

issued a writ of mandamus in Marvell v. Link_A_Media,

No. 2011-M990, ordering that case transferred from the

District of Delaware. The Federal Circuit rejected the theory

that place of incorporation dominates all the other factors,

and suggested that it may not even be a significant factor

in the calculus. In the wake of Link_A_Media, plaintiffs

may be less certain that a case filed in Delaware will be

able to resist a motion to transfer. This may lead to a

reduction in case filings. But see Intellectual Ventures v.

Altera, Civ. No. 10-1065 LPS (D. Del. Jan. 23, 2012) (Stark, J.)

(distinguishing Link_A_Media and refusing to transfer case).

2) The Lemley Article

Although Professor Lemley considered the Eastern

District of Texas overvalued as a forum for plaintiffs, he

concluded that the District of Delaware was being undervalued

as a forum. Nevertheless, the District of Delaware has been

in the top three districts in terms of patent filings for some

period of time. Thus, to the extent the District of Delaware

was undervalued, it was only with respect to a few districts.

3) Post-AIA Filings

In the wake of the AIA, the District of Delaware has led

the United States in non-false marking patent case filings

and the total number of defendants in those cases. As noted

above, however, the mandamus order in Link_A_Media issued

only at the end of 2011 and may change the trend in 2012.

The District of Delaware has long been one of the

leading venues for patent litigation for a number of

reasons. Cases in that district are assigned randomly,

so plaintiffs cannot pick their judge. Nevertheless,

other factors encourage filings there, including:

The Small Number of Judges in the District – The

small number of judges in the District of Delaware

means that plaintiffs can track the preferences of the

individual judges and have a rough sense before filing

of how the judges are likely to handle issues even

without knowing which judge will be assigned. Further,

there is less variation among the judges’ practices

and approaches compared to other leading venues.

Jurisdiction – Because so many companies are

incorporated in Delaware, a filing in Delaware is

likely to be immune to a jurisdictional challenge.

Low Transfer Rate – Historically, Delaware district

judges have not been inclined to transfer cases.

Accordingly, plaintiffs are more confident that

a case filed in the District of Delaware will not

be transferred to a less favored forum.

Early Summary Judgment Less Likely – Some judges in

the District of Delaware have adopted the practice of

not considering motions for summary judgment early

in the case. For example, Judge Robinson normally

does not decide summary judgment motions until

shortly before trial. The effect of this practice is to

ensure that defendants incur nearly the full cost

of defense, which can encourage settlement.

main icon for use

Perkins Coie llp www.perkinscoie.com

Some jurisdictions in which Perkins Coie LLP practices law may require that this communication

be designated as Advertising Materials.

MARCH 2012

A N C H O R A G E · B E I J I N G · B E L L E V U E · B O I S E · C H I C A G O · D A L L A S · D E N V E R

L O S A N G E L E S · M A D I S O N · N E W Y O R K · P A L O A LT O · P H O E N I X · P O R T L A N D

SAN DIEGO · SAN FR AN CISCO · SE AT TLE · SHANGHAI · TAIPEI · WA SHINGTO N , D.C .

With more than 800 lawyers in 19 offices across the United

States, China and Taiwan, Perkins Coie serves great companies

ranging in size from start-ups to FORTUNE 100 corporations.

Later Markman Rulings – Judges in the District of Delaware

tend not to issue claim construction rulings until relatively

late in the case. Again, this has the effect of ensuring that

defendants will incur substantial litigation costs and that

can impact settlement, where litigation cost is a factor.

Speed to Trial – As noted by Professor Lemley,

Delaware is a relatively fast district. On the other

hand, it is not and never has been the fastest.

Lack of Patent Local Rules – To at least some plaintiffs,

the lack of Patent Local Rules may be attractive. Patent

Local Rules typically require the plaintiff to submit

infringement contentions early in the case and limit

its ability to alter those contentions later. Without

binding infringement contentions, plaintiffs are more

free to adjust their infringement positions in light of

discovery about the accused products and prior art.

III. CONSIDERATIONS FOR JUDICIAL ADMINISTRATIONIn the post-AIA period, the Eastern District of Texas and the

District of Delaware together have accounted for 18% of all

non-false-marking cases, with 29% of the plaintiffs and 30%

of the defendants. From a judicial administration perspective,

it may be wise to have patent litigation spread more widely

around the country. This could be accomplished by transferring

cases from over-subscribed districts to those with less activity.

As detailed above, one driver for filings in particular districts is

the plaintiff’s ability to pick a particular judge or be assigned a

judge from a small pool of like-minded judges. From a judicial

administration perspective, it may be wise to promulgate rules

that combat this abuse. For example, if cases filed in the Eastern

District of Texas were assigned randomly to all judges in the

district, the potential biasing effects that have been observed

would be eliminated. Ironically, one unintended effect of the

Patent Pilot Program may be to concentrate patent cases before a

smaller number of judges, giving plaintiffs greater ability to select

not only the venue but also the judges assigned to their cases.

Documents

2011 TRENDS IN PATENT CASE FILINGSper Case Plaintiffs per Case Defendants per Plaintiffs District of Delaware 484 911 2458 5.1 1.9 2.7 Eastern District of Texas 418 593 3163 7.6 1.4