On December 20, 2021, in an uncommon move and without much explanation, U.S. District Judge Alan Albright granted five requests for stays while the Patent Trial and Appeal Board (PTAB) reviews the patent at issue (U.S. Patent No. 10,844,697). For his part, Judge Albright oversees the largest patent docket in the country, accounting for nearly 25% of all new patent cases filed in the United States in 2021. With this heavy caseload and rising public scrutiny of the rocket docket of patent litigation,[1] there seems to be certain inevitable changes coming to Judge Albright’s courtroom within the Western District of Texas.
Notably, Judge Albright has gained a reputation for not staying cases for PTAB review – a tendency that has made the Western District of Texas a beneficial venue for patent litigation plaintiffs as a stay stops a case, and plaintiffs don’t want their cases to be stopped. While plaintiffs file patent litigation complaints in district courts, defendants often respond by filing some type of petition[2] before the PTAB hoping to invalidate the underlying patent(s). The strategy here is that if the PTAB invalidates the patents before the district court holds a trial or otherwise concludes the case, the defendants can get the district court case dismissed. In short, there’s no case if the patents are invalid. As part of this strategy, defendants will often file a motion for a stay in the district court after filing their petition before the PTAB. The defendants want to delay the district court case as much as possible, hoping the PTAB will rule on their petitions, invalidate the patent(s), and the district court case will be overcome by events.
For most of his tenure, Judge Albright has denied such requests for stays and pushed for cases to follow a strict two-year schedule (from complaint to trial), with district court proceedings running parallel to PTAB proceedings. That is, until now with Judge Albright pausing infringement litigation in five cases brought by Plaintiffs DynaEnergetics Europe GmbH and DynaEnergetics US Inc against five separate entities on the same oil drilling patent. Two of these Defendants – G&H Diversified Manufacturing and Nextier Completion Solutions Inc. – filed petitions for post-grant review (PGR) before the PTAB. The PTAB instituted G&H’s petition for PGR on November 1st, 2021,[3] and all five defendants lodged motions for stay in the five separate Western District cases. In an uncharacteristic outcome, Judge Albright granted all five motions – putting all five cases on hold.
This leaves us to speculate if these recent stays mark the beginning of change in the Western District of Texas, or if this is an outlier event.
[1] Side Note #1: Judge Albright’s court recently became the subject of bipartisan criticism within the Senate Judiciary Committee’s intellectual property subcommittee due to the large concentration of patent litigation in Judge Albright’s district court. U.S. Senators Patrick Leahy, Democrat and Chair, and Thom Tillis, Republican and Ranking Member, of the Judiciary Committee’s intellectual property subcommittee have brought these concerns to Supreme Court Chief Justice John Roberts.
[2] Side Note #2: The two most common types of PTAB petitions are (1) an inter partes review (IPR) or (2) a post grant review (PGR). IPRs can only be filed based on the grounds of anticipation and obviousness, and only after the period for PGR has passed or no PGR is filed within nine months of the patent being issued. PGRs can be filed based on any ground that can challenge the validity of a patent claim (e.g., anticipation, obviousness, eligibility, written description, enablement, or indefiniteness), and can be filed immediately after a patent issuance or reissuance. To make matters a little more complicated, PGRs can only be filed on patents filed on or after March 16, 2013 and is not applicable on earlier patents. Overall, most petitioners prefer IPRs over PGRs, although this may change the farther removed we get from March 16, 2013.
[3] Side Note #3: The PTAB has not yet decided whether to institute Nextier’s petition for PGR. The PTAB is expected to decide in mid-January of 2022.
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