TBJ January 2022

2021: The Year in Review

Patent Litigation

Written by Sean N. Hsu

2021 saw a number of developments for practitioners to monitor.

Arthrex and Patent Trial and Appeal Board Constitutionality
Addressing the constitutionality of inter partes review, or IPR, proceedings, the U.S. Supreme Court in U.S. v. Arthrex, Inc., held 5-4 that 35 U.S.C. § 6(c) was unconstitutional to the extent it insulated administrative patent judge, or APJ, decisions from review by a principal officer.1 However, seven justices agreed with the narrower, tailored remedy of permitting director review of any APJ decisions to cure the issue.

PTAB Discretionary Denials
2021 continued to see an increased number of discretionary denials of petitions by the PTAB based on the anticipated pace of co-pending litigation. In Mylan v. Janssen, the Federal Circuit declined to change this framework in a precedential order, holding it lacked jurisdiction to review the PTAB’s decision and the extraordinary remedy of mandamus was not warranted.2 The case is now pending on appeal before the U.S. Supreme Court.3

Venue and the Western District of Texas
The Waco division of the U.S. District Court for the Western District of Texas remains the subject of much attention and continues to be an active patent venue with over 20% of all patent cases filed in 2021, outpacing the District of Delaware. The Federal Circuit continued to issue more mandamus opinions this year, reversing some of the Western District court’s denials of transfer motions,4 while leaving others alone.5 The Western District court has also issued a standing order specifying the court’s procedures for expeditiously handling venue change requests.6

Texas Patent Trials During COVID-19
Texas federal courts worked hard to keep patent cases and trials moving despite COVID-19. As of mid-November 2021, the U.S. District Court for the Eastern District of Texas leads the country in the number of patent trials with 12 in 2021. The Western District of Texas is next with nine.

Chief Judge Rodney Gilstrap, of the Eastern District of Texas, held 10 trials—with an average time from filing to trial of 29 months and a 5-5 split on verdicts, defense v. plaintiff. The most recent result was a defense verdict of non-infringement and patent ineligibility in Infernal Tech. v. Sony.7 Plaintiff verdicts in 2021 totaled over $750 million through November.

Judge Alan Albright, of the Western District of Texas, held eight trials—with an average time from filing to trial of 23 months and a 4-4 split on verdicts, defense v. plaintiff. The most recent result was a $29.5 million verdict in Videoshare v. Google.8 Plaintiff verdicts in 2021 totaled over $2.2 billion through November, with the bulk being the $2.175 billion verdict in VLSI v. Intel.9

Subject Matter Eligibility
Patent eligibility remains a contentious issue, including whether the eligibility framework has been over-extended. In American Axle v. Neapco, a petition is pending before the U.S. Supreme Court on whether 35 U.S.C. § 101 should apply to historically patent-eligible subject matter, such as industrial manufacturing processes.10 Notably, the court invited a brief from the acting solicitor general for the U.S. government, and previously, the Federal Circuit split 6-6 on whether to grant rehearing en banc.11

On October 15, 2021, the U.S. Patent and Trademark Office also completed its public comment period on patent eligibility, as it prepares to report to Congress the effect that jurisprudence may have on U.S. innovation in important technical fields. The public comments provided contrasting viewpoints from across the computer and biotechnology industries.

New Patent-related Legislation Proposed
Legislative proposals were recently introduced in Congress and submitted to the Senate/House judiciary committees, including Senate Bill 2891, Restoring the America Invents Act (proposing additional changes to the IPR system) and House Bill 3664, Save Money on Auto Repair Transportation Act (limiting enforceability of automotive parts design patents).

1. U.S. v. Arthrex, Inc., 141 S. Ct. 1970 (Jun. 21, 2021).
2. Mylan Labs. Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375 (Fed. Cir. 2021).
3. Myland Labs. Ltd. v. Janssen Pharmaceutica, N.V., Case No. 2021-1071 (Sup. Ct. 2021).
4. See, e.g., In re Google LLC, 2021 U.S. App. LEXIS 33789, 2021 WL 5292267 (Fed. Cir. Nov. 15, 2021); In re Apple Inc., 2021 U.S. App. LEXIS 29659, 2021 WL 4485016 (Fed. Cir. Oct. 1, 2021); In re Juniper Networks, Inc., 14 F.4th 1313 (Fed. Cir. Sep. 24, 2021); In re Hulu, LLC, 2021 U.S. App. LEXIS 22723, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021); In re Uber Techs., Inc., 852 Fed. Appx. 542 (Fed. Cir. Jul. 8, 2021).
5. See, e.g., In re Intel Corp., 2021 U.S. App. LEXIS 29135, 2021 U.S.P.Q.2D (BNA) 1000 (Fed. Cir. Sep. 27, 2021); In re Volkswagen Grp. of Am., Inc., 851 Fed. Appx. 1036 (Fed. Cir. June 29, 2021); In re Bose Corp., 848 Fed. Appx. 426 (Fed. Cir. May 25, 2021); In re SK hynix Inc., 847 Fed. Appx. 847 (Fed. Cir. Feb. 25, 2021).
6. See Second Amended Standing Order Regarding Motions for Inter-District Transfer, dated Aug. 18, 2021.
7. Civ. No. 2:19-cv-248 (E.D. Tex.), Dkt. 341. Judges Amos L. Mazzant III and Robert W. Schroeder III, of the Eastern District of Texas, also held one trial each.
8. Civ. No. 6:19-cv-00663 (W.D. Tex.), Dkt. 217.
9. Civ. No. 6:21-cv-00057 (W.D. Tex.), Dkt. 564. Senior Judge David A. Ezra, of the Western District of Texas, also held a patent trial, with a plaintiff verdict of about $970,000.
10. Case No. 20-891.
11. Am. Axle & Mfg. v. Neapco Holdings LLC, 966 F.3d 1347 (Fed. Cir. July 31, 2020).

SEAN N. HSU is a member of Cole Schotz in Dallas. As a licensed patent and cybersecurity attorney, his practice focuses on intellectual property and commercial litigation, as well as helping clients protect their information assets. Hsu can be reached at shsu@coleschotz.com.


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