Guest Post: A Study of Eastern District of Texas Patent Appeals to the Federal Circuit: 2008-2012

Peter J. Corcoran, III[*]

            The following study, first presented at the Eastern District of Texas Bench and Bar Conference on October 26, 2012, examines the trends of patent appeals and mandamus petitions from the U.S. District Court for the Eastern District of Texas to the U.S. Court of Appeals for the Federal Circuit from September 1, 2008 to November 1, 2012.  The study’s timeframe begins before the U.S. Court of Appeals for the Fifth Circuit issued In re Volkswagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc), defining the venue transfer standards for the Fifth Circuit under 28 U.S.C. § 1404(a).  Tables 1 to 8 provide the study’s objective data, collected using Westlaw® to search for all patent appeals and mandamus petitions from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.

           Table 1 provides the yearly number of decided patent appeals and mandamus petitions from the Eastern District of Texas to the Federal Circuit.  It also provides the yearly number of affirmances and mandamus denials.  As seen, the number of patent appeals has steadily risen from thirteen to eighteen appeals from September 1, 2008 to November 1, 2012.  The number of affirmances also rose from eight to fourteen during the same timeframe as the overall number of appeals has increased, resulting in a 62 to 78% affirmance rate during the study’s timeframe.  The gap between the number of appeals decided and the number of affirmances includes the number of affirmances-in-part/reversals-in-part and full reversals.

             Table 1 also provides the yearly number of mandamus petitions from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.  Until 2011, the number of petitions steadily rose from zero to eleven petitions after the Federal Circuit issued In re TS Tech, 551 F.3d 1315 (Fed. Cir. 2008), relying on the Fifth Circuit’s venue transfer standards in In re Volkswagen.  Since September 1, 2011, the number of mandamus petitions decreased to eight petitions, while the number of mandamus denials since September 1, 2010 held steady at six denials.  From September 1, 2008 to September 1, 2010, the number of mandamus denials rose commensurate with the number of petitions filed, resulting in a 50 to 67% denial rate.  In 2011, the Federal Circuit denied 55% of the mandamus petitions filed, and it denied 75% of the filed petitions up to November 1, 2012.  The overall data indicates the Eastern District of Texas has an increasingly high affirmance rate at the Federal Circuit.

             Table 2 shows the yearly win rate for Eastern District of Texas plaintiffs and defendants at the Federal Circuit from September 1, 2008 to November 1, 2012.  From September 1, 2008 to September 1, 2011, defendants led plaintiffs in the number of victories at the Federal Circuit.  These numbers include affirmances, affirmances-in-part, and reversals that favor plaintiffs and defendants.  As of November 1, 2012, the number of plaintiff and defendant wins equaled eleven each. 

             Table 2 also shows the yearly number of plaintiff and defendant wins for mandamus petitions to the Federal Circuit during the study’s timeframe.  The number of plaintiff wins (mandamus denials) and defendant wins (mandamus grants) steadily increased from September 1, 2008 to September 1, 2011, commensurate with the number of petitions filed during that time.  During the same timeframe, the number of plaintiff wins outpaced the number of defendant wins.  For the past two years, the number of plaintiff wins held steady at six, while the number of defendant wins decreased from five to two.

            Table 3 provides the ratio of Federal Circuit affirmances of Eastern District of Texas final judgments under Federal Rule of Appellate Procedure 36 from September 1, 2008 to November 1, 2012.  Rule 36 affirmances are summary affirmances of a lower court’s final judgment.  The Federal Circuit affirms a final judgment under Rule 36 when the three members of the appellate panel unanimously agree that the lower court adequately disposed of the issues appealed and that no further opinion is necessary. 

 As seen, the ratio of Rule 36 affirmances steadily increased to 100% by September 1, 2011.  This means that all of the Federal Circuit affirmances of Eastern District of Texas final judgments between September 1, 2010 and September 1, 2011 were Rule 36 affirmances.  From September 1, 2011 to November 1, 2012, the ratio of Rule 36 affirmances was 43%.

           Table 4 shows the number of Federal Circuit affirmances of issues appealed from the Eastern District of Texas during the study’s timeframe.  These issues include claim construction, infringement, invalidity, written description, damages, willfulness, and inequitable conduct.  As seen, the Federal Circuit affirmed an increasing number of infringement issues and affirmed a somewhat constant number of claim construction and invalidity issues from September 1, 2008 to November 1, 2012.  The number of Federal Circuit affirmances of written description, damages, willfulness, and inequitable conduct issues varied over the study’s timeframe.

 
           Table 5 provides the number of Federal Circuit reversals of the same issues shown in Table 4 that were appealed from the Eastern District of Texas from September 1, 2008 to November 1, 2012.  As seen, the Federal Circuit reversed an increasing number of infringement issues until September 1, 2011, while the Court reversed no infringement issues between September 1, 2011 and November 1, 2012.  The increased number of affirmances and reversals of infringement issues is due to the overall rise of patent appeals from the Eastern District of Texas to the Federal Circuit during the study’s timeframe.  The number of reversals of invalidity issues also increased, while the number of claim construction reversals decreased over the study’s timeframe.  The number of reversals of written description, damages, willfulness, and inequitable conduct issues varied over the same timeframe.

 
           Table 6 shows the number of Federal Circuit affirmances (including Rule 36 affirmances and mandamus denials) of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

 
Table 7 provides the number of Federal Circuit affirmances-in-part/reversals-in-part of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

 
           Table 8 shows the number of Federal Circuit reversals (including mandamus grants) of Eastern District of Texas judges between September 1, 2008 and November 1, 2012.

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[*] Associate, Winston & Strawn LLP, Houston, Texas.  The contents of this study do not reflect the views of Winston & Strawn LLP or any of its clients.