The Federal Circuit’s 2020-2021 Patent Venue Mandamus Cases (Part 2 of a 4-Part Series)

While I was in trial last week Texas Lawyer published the second article of a 4-part series I co-authored with Erick S. Robinson and Karl Rupp. ALM subscribers can access the article here.

Part 1 of this series identified two reasons for the large number of Federal Circuit opinions granting mandamuses reversing Western District of Texas Judge Alan D Albright’s rulings denying patent defendant motions to transfer venue. The article referenced the Federal Circuit’s well-documented tendency to add requirements to statutes, and the panel-specific nature of many Federal Circuit decisions, pinpointing that while 13 judges were eligible to sit on the mandamus panels, only four have overwhelmingly granted the petitions. But those four judges—along with Judge Taranto—sit on a disproportionate number of panels, and have designated for publication several of the opinions in their cases.

This article examines this second aspect of the 2020 – 2021 opinions in more detail, including reasons why more petitions for mandamus review of venue decisions make their way to certain judges, and especially those filed by certain types of defendants.

Baylor Law Executive LL.M. in Litigation Management


Well, I’m at it again. Just finished the introductory course in Baylor Law’s Executive LL.M. program in Litigation Management. https://www.baylor.edu/law/llm/ “Courageous Conversations: Hearing Every Voice” helps educate members of the Baylor community on issues of diversity, equity and inclusion.

It was enjoyable and informative, and I think prepared me to play a more positive role as a (returning) member of the Baylor community. If schedule holds, I’ll graduate January 2024.
Next course up is Law 9130 “Forum Issues Affecting Major Litigation”. Okay.

The Local – Joey Hartstone


On this week’s New York Times recommended reading list is a new legal thriller – this time set in Marshall and featuring a (fictional) local patent lawyer.  I thought readers might like a review from a local perspective.

The book is a murder mystery set in Marshall, and features a native Marshallite (and former law clerk) who works as local counsel in the burgeoning patent docket.  So the three things you might want to know are (1) how close is the book’s EDTX patent docket, compared to the real thing; (2) how close is the book’s Marshall, compared to the real thing; and (3) is it a good read?

The Book’s Eastern District of Texas Patent Docket

Authors of fiction have the privilege of altering reality when selecting the setting for their book.  For example, Jake Tapper’s recent political thriller posited a world where vacancies in the U.S. House of Representatives are filled by appointment by governors.  That allowed him to install an unusually politically inexperienced congressman as required for the plot of his book.

Similarly, here, either because he didn’t consult sufficiently with a patent lawyer or decided for his own reasons to alter the structure of the local patent docket, Hartstone created a docket where patent venue can be established wherever a single act of patent infringement has occurred, and the entire Eastern District of Texas consists of a single district judge presiding over a court where jurors are drawn exclusively from the citizens of Marshall Texas, which he assumes would mean six high school degrees between eight jurors, with at least one not only illiterate but vocal about it. So when the courtroom deputy came up one copy of the court’s instructions short in a patent trial, Juror Number Three tells the judge not to worry about it because “I can’t read none anyway.”  Uh, not quite.

Hartstone’s EDTX docket originated with judge-created patent rules, which is accurate enough, but he departs from the real district by characterizing the docket as being based on EDTX jurors awarding “ungodly sums of money” which he attributes to jurors “who are overlooked for their entire lives” being given a modicum of power.  In truth, local patent verdicts tend to skew low – not the 20x what the (fictional) plaintiff asks for, establishing the docket.  The reason the EDTX docket started out with 18 straight plaintiff wins in the early 2000s had nothing to do with the jurors, but with the defense trial teams from patent prosecution shops who simply didn’t know how to try a lawsuit before a jury compared to the former personal injury lawyers that were representing plaintiffs.  By 2006 they had figured this out, and ever since verdicts have been almost exactly even, with some years (2007 and 2013 come to mind) representing bloodbaths for plaintiffs.  In general, the district portrayed in the book is the district portrayed in the recurring hatchet jobs about the Eastern District in the popular and legal media – right down to the skating rink “that Samsung put up.” Locals know better – in fact I was the city commissioner that moved approval of budget for the city purchasing and installing a skating rink for our Wonderland festival two decades ago – years before Samsung knew that Marshall was spelled with two “l”s.

The portrayal of what local counsel do is also a little off – we rarely get to close, and no lawyer in Harrison County has ever stood in front of a local jury and said “Go Mavericks”.  Why?  Because whether it is a state court jury chosen from the citizens of Harrison County, or a federal court jury chosen from six counties, Marshall is only one of many high schools in the area, and the quickest way to piss off anybody locally is to make a derogatory comment about their high school.  But, again, the book assumes that both federal and state juries are chosen only from the residents of the city of Marshall, so the above doesn’t apply.   And that actually enhances a few plot points, so, again, I’m not certain that the author – a screenwriter – didn’t deliberately simplify the judicial system for his own dramatic purposes, building in a local bias.  Which, again, is completely legit.  I just mind when Congressmen do it.

But for purposes of the book it is a distinction without a difference, since while I was expecting Hartstone to base the novel on a patent infringement case, and the supposed predilections of local jurors in federal court, which is what he initially seemed to be laying the groundwork for (and knowing the shows he’s written for it seemed likely) the novel goes in a completely different direction.

Thus while the novel’s characterization of practice in federal court – with banging of gavels and multiple fistfights in court and f-bombs lobbed at district judges by lawyers and litigants alike – is quite entertaining, if something less than accurate, the action quickly moves out of federal court.

The Book’s Marshall, Texas

Okay, no book about Marshall that was written without someone from Marshall looking over the author’s shoulder is going to be perfect, but this one is pretty damn close.  Hartstone has clearly never actually been to Marshall (he repeatedly refers to the Confederate soldier statue on the square as bronze, and makes a mistaken topographical assumption that will become important later) but he gets the big things right – how much we know about each other, how far back experiences and disputes go, and how important high school football is.  I particularly enjoyed his illustration of just how much of a jackass someone in a small town can be. It’s a full-time job for some people. Sometimes an inherited position. And characters repeatedly identify with and relate back to incidents in high school football, and that’s exactly how we are.  I was walking the first New York Times reporter around town 20 years ago and told him that the right question would start a 15 minute story about the late 1980s and early 1990s Marshall football teams – and not just the one that won the state championship in 1990, but the one built around Odell Beckham a few years earlier.  (Like my dad, Odell went on to play football at LSU, and later had a son who played football too). Hartstone knows where the closest federal correctional facility is, what the hotels are, and if he doesn’t describe the downtown parking arrangements around the courthouse with complete accuracy (to say nothing of the security ones), it becomes clear later in the book that he needs a specific setting for his plot.  And no, the old courthouse courtroom doesn’t have mahogany floors, but it is a terrific place to try a lawsuit.

So points for a pretty accurate depiction of the town, even if the constant references between fictional Marshallites to the “old Harrison County Courthouse” and the “main/town square” are a little grating.  (It’s the “old courthouse” and “the square”).

One other thing.  Every book club in town is interested in who the characters “really are”.  It is to the author’s credit that it is absolutely plain that none are based on a real person.  Clearly the judge at the beginning of the story did the same thing that Judge Ward did in 2000 coming up with patent local rules, but neither that character nor any of the others bear any similarity to any of the judges or lawyers that I know either in federal or state court.  Which isn’t surprising – Hartstone is an experienced screenwriter and didn’t develop the story by coming to Marshall and talking to local lawyers and judges and then lightly fictionalizing a story about a case.  He came up with a story and characters, and realized the story could grow out of a setting he’d heard about from patent lawyer friends. It’s not a story about the patent docket per se.

The Murder Mystery

So how good is the actual story?  I read it three weeks ago when our family was on vacation.  I downloaded the morning we started one of two half-day tours in Vienna, and stayed up till almost 3 am to finish it.

As I said, Marshall and the federal patent docket is only the setting for the beginning of the story.  After that, you’re in a small Southern town familiar as a legal thriller setting for generations, and your attention is on the characters and the plot twists.  And that’s what kept me up half the night finishing the book – I just couldn’t put it down until I knew whodunit.

And it was only at the end that I figured out why the story wasn’t making sense to me – it was because I’m too Marshall.  The plot of the story places particular emphasis on the local counsel’s office at the corner of Franklin and Bowie, and what could be seen of the federal courthouse from there.  But I could never get past that – because that was my Aunt Toddy’s house.  She was actually the aunt of a friend of my dad’s, but I grew up mowing her yard, and when after she passed her home became everyone’s favorite downtown restaurant, it was actually where my wife and I had our first date.  And I knew you can’t see the back door of the federal courthouse from there.

I finally figured out that the author had assumed there was a line of sight from the fictional law office to the back door of the courthouse.  And there would have been, had the topography not resulted in a drop of several dozen feet between the courthouse square which, as locals know, is on the hill where in 1843 Peter Whetstone pulled out his whiskey jug and proceeded to get the commissioners deciding where to site the new town so drunk they decided to call it a day and put the town square on Whetstone’s property.

So yes, I highly recommend it.  But not for the patent docket or local counsel aspect.  That’s just where the story starts.