2023 IP Outlook: Trends in the Western District of Texas - McDermott

2023 IP Outlook: Trends in the Western District of Texas


Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX.

In Depth

The US Court of Appeals for the Federal Circuit’s rate for grant of mandamus petitions on venue-related motions slowed down.

In recent years, the Federal Circuit has been active in hearing mandamus petitions filed under §1404(a) regarding the convenient venue provision, which have most frequently come from defendants challenging transfer denials from the Waco Division. In 2021, the Federal Circuit took a close look at the motion to transfer denials in the Waco Division of the WDTX, granting 48% of mandamus petitions. In 2022, we saw the success rate for mandamus petitions reduced to 40%. While the mandamus success rate declined, transfer motions granted in the Waco Division increased from 35% in 2021 to 58% in 2022.

A recent decision by the US Court of Appeals for the Fifth Circuit has breathed new life into certain factors considered in the §1404(a) analysis that may slow or reverse these trends.

In In re Planned Parenthood Fedn. Of Am., Inc., the Fifth Circuit denied a mandamus petition where the movant sought to transfer the case from the Northern District of Texas in Amarillo to the WDTX in Austin. In denying the petition, the Fifth Circuit noted the following grounds as relevant considerations:

  • The Fifth Circuit found no abuse of discretion where the district court judge noted his familiarity with the law as one factor for keeping the case.
  • The Fifth Circuit also explained that the location of evidence factor can be important, but not where the “vast majority of the evidence [is] electronic, and therefore equally accessible in either forum.”
  • The Fifth Circuit found no abuse of discretion where the district court judge took into account the low cost of staying in hotels and eating in Amarillo as compared to Austin.

Looking ahead: If the Federal Circuit considers this opinion by the Fifth Circuit, as it should in a venue analysis, the decision could decrease the trend of mandamus grants for venue-related decisions coming out of the WDTX.

In 2022, WDTX Chief Judge issued orders about random assignment and the reassignment of patent cases.

Former-Chief Judge Orlando L. Garcia issued an order in July 2022 that called for random assignment of patent cases filed in the Waco Division. Newly appointed WDTX Chief Judge Alia Moses has so far kept the random assignment policy for patent cases filed in the Waco Division. Her order, following Judge Garcia’s and effective December 16, 2022, allows for judges to reassign cases to other judges by mutual consent.

Despite the orders requiring random assignment, the WDTX remains the leading venue for patent cases filed across the country with 1-in-5 patent cases being filed in this district.

  • Between January 1, 2022, to July 25, 2022 (when the random assignment order issued), 24.6% of all patent cases were filed in the WDTX.
  • Since the order issued on July 25, 2022, to present, approximately 20% of all patent cases were filed in the WDTX.

Looking ahead:

  • Even though the WDTX may have lost some of its share of patent cases, the district will likely continue to take the lead with respect to the number of patent cases filed in Texas. This is in large part due to the number of businesses that have continued to flock to the Lone Star State, especially in the central Texas region, in the recent past.
  • Another contributing factor in this trend is that Delaware—which tends to be another patent-heavy docket—has been closely scrutinizing litigation funders backing patent plaintiffs that may be dissuading patent plaintiffs from flocking to the First State.
  • These factors make it likely that many plaintiffs will continue to bring and try their cases in the WDTX.