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Pilot Program’s End Likely to Affect Where Patent Owners Sue

March 9, 2021, 10:52 AM

Fewer patent lawsuits could be filed in places like Central California with the end of a program that funneled patent cases in certain judicial districts to a small group of judges.

The Patent Pilot Program was created 10 years ago by Congress with an eye toward increasing expertise in patent cases among district court judges. Within select judicial districts, patent suits were sent to judges who opted to hear such cases.

The program is set to expire in July. With its end, more lawsuits could be overseen by judges who aren’t experienced with patent cases—or don’t particularly care for them. That may change where some plaintiffs decide to file their lawsuits.

To be sure, the program wasn’t uniformly embraced by district courts, and pilot judges haven’t had a much better track record on appeal.

Still, it’s “a shame” the program is ending, Judge Alan Albright of the U.S. District Court for the Western District of Texas, which wasn’t part of the program, said at a recent conference.

Albright said it’s “always better to have a judge that is receptive to patent cases.”

“That is a relatively limited number of people, let me assure you,” he said at the 2021 Works in Progress in Intellectual Property (WIPIP) Conference hosted by American University, Texas A&M University, and the University of Utah.

Albright was a patent litigator before he took the bench in 2018. His courtroom in the past couple of years has become the busiest in the country for new patent cases.

More Predictability

As of May 2019, there were almost 60 judges across 13 judicial districts participating in the program, according to the Federal Judicial Center, the research and education agency of the judicial branch.

The participating districts included the Central and Southern Districts of California, the Northern District of Illinois, and the Southern District of New York.

Once the program expires, patent cases likely will be overseen by more judges in those districts. In Southern California, for example, a new patent case could be handled by any of its eight active judges, rather than being channeled to three designated judges.

“I’m not going to have as many as I would like. It makes me sad,” Judge Cathy Ann Bencivengo, one of Southern California’s pilot judges, said at the WIPIP conference. “It’s going to make other people even sadder who are going to get them and can’t get rid of them.”

Bencivengo was an attorney at DLA Piper LLP and specialized in IP litigation before taking the bench in 2012.

Fabio Marino, the vice chairman of the IP department at Polsinelli PC, said the program’s end will impact certain districts more than others. He noted in the Central District of California, which has a deep bench with more than 30 district court judges, six judges had opted into the program.

“It certainly gives you more predictability, trying cases in front of judges who are experienced in patent litigation,” Marino said.

While Central California doesn’t have the same volume of patent cases as Albright’s court in West Texas, it has hosted high-profile disputes. Last year, for example, a jury there awarded the California Institute of Technology $1.1 billion in a fight with Apple Inc. and Broadcom Ltd.

Because of the unpredictability in litigating a case in front of a less experienced judge, including unknowns in how a case will proceed, patent owners might look elsewhere to file their lawsuits, Marino said. Judges who regularly handle patent cases tend to have schedules or routines that give attorneys a good sense of how a case will unfold.

While Marino said it can be “refreshing to get new views,” a judge’s level of experience can also impact more substantive aspects of a case.

Lawyers may, for example, have to spend more time explaining certain nuances of patent law when the judge isn’t as experienced. There can also be concerns about the quality of decisions.

Building Expertise

There were more than 14,000 patent cases in the pilot program, according to a Federal Judicial Center report in December 2019, its most recent on the program.

When Congress created it, there was a perception that patent decisions were being overturned on appeal at a disproportionate rate compared to other kinds of cases. During a House debate, former Rep. Lamar Smith (R-Texas) said the idea behind the legislation was simple.

“Practice makes perfect, or at least better,” Smith said at the time. “Judges who are able to focus more attention on patent cases are more likely to render decisions that will not be reversed on appeal.”

The results have been mixed.

One year into the program, only two out of 335 cases filed in the Northern District of California had been transferred to a pilot judge, one study found. The Southern District of Florida dropped out of the program in 2014.

Southern Florida’s chief judge said in an order abandoning the program it was decided that “the administration of justice would best be served” by allowing patent cases “to remain assigned at random to the Judges to whom they are initially assigned.”

A Federal Judicial Center report at the program’s five-year mark found pilot judges terminated patent cases faster than other judges. The center suggested this was a result of the pilot judges being more experienced with patent cases.

Another study by University of Buffalo law professor Amy Semet looked at the same time frame and found pilot judges were reversed on appeal at about the same rate as other district court judges. The FJC’s 2019 report reached a similar conclusion, finding “the substantive outcomes are not significantly different between affirmance and reversal.”

Semet did find the two groups of judges, however, appeared to make different kinds of mistakes.

“Non-pilot judges in particular are more likely than pilot judges to make errors when claim construction is a dispositive issue in the case,” her study found, referring to the process where judges interpret the meaning of certain words or phrases in a patent.

Dedicating Resources

Semet said some of Congress’ overarching goals with the pilot program could be accomplished by allocating additional resources to the courts, giving judges access to technical advisers and other experts to help with complex cases.

There are ways to ensure “that district court judges have the resources to decide some of the more complex areas of patent law,” Semet said.

Along similar lines, Marino suggested additional resources may allow judges to recruit law clerks who have an interest in patent law. Albright, for example, has hired law clerks with intellectual property backgrounds and experience in fields like engineering.

“That would certainly improve the quality of the process at the end of the day,” Marino said.

To contact the reporter on this story: Matthew Bultman in New York at

To contact the editors responsible for this story: Renee Schoof at; Kibkabe Araya at