Reassignment on Remand Highlights Tension Between District Courts, Federal Circuit in Patent Cases

In a recent decision, the Federal Circuit not only reversed a North Carolina district court’s judgment of noninfringement, but took the unusual step of reassigning the case to another district court judge after finding that statements the judge had made “undermined the appearance of fairness.” In another recent case, a Minnesota district court judge recused himself from all further proceedings after being reversed by the Federal Circuit, stating that he was “at a loss” to reconcile the Federal Circuit’s holding and did not believe he could impartially resolve the parties’ dispute. These cases highlight the struggles many district courts face when handling patent cases, given the often complicated and time-consuming nature of the cases and the relatively high historical reversal rate of appeals to the Federal Circuit.

Trudell Medical v. DR Burton Healthcare

In February 2025, the Federal Circuit unanimously reversed a judgment of noninfringement that arose out of a patent case in the Eastern District of North Carolina assigned to Judge Terrence Boyle. In the underlying case, the jury found that defendant medical equipment supplier D R Burton did not infringe plaintiff Trudell’s patents, and Judge Boyle denied Trudell’s motion for a new trial. On appeal, however, the Federal Circuit found that the district court had abused its discretion in admitting certain expert testimony because it was untimely and unreliable, and found that the “harmful and prejudicial admission of [the expert]’s testimony warrant[ed] a new trial on infringement.” Trudell Medical International Inc. v. D R Burton Healthcare, LLC, 127 F.4th 1340, 1351 (Fed. Cir. 2025).

The Federal Circuit further agreed with Trudell that Judge Boyle had made several objectionable statements necessitating reassignment of the case on remand. For instance, Judge Boyle had said “[a]nd I’m going to settle this case or resolve it or dismiss it by September 30th. Just – that’s a heads up,” and “our duty is to get this case done. And if you can’t get it done, then I will. You can get it done by settling it. I can get it done by having a verdict in it.” Id., 1352. The Federal Circuit held that these statements indicated that Judge Boyle “did not intend to manage a fair trial with respect to the issues in this case” and, when made in the presence of the jury, “undermined the appearance of fairness.” Id. As a result, it remanded the case for trial before a different district court judge.

While appellate courts have reassigned cases from time to time, reassignment is most certainly a rare occurrence. A study of reassignments published in the Stanford Law Review in 2014 estimated that reassignments occur in “only a tiny fraction of the cases in which it was theoretically available” (i.e., reversals or remands)—and that, through 2012, the Federal Circuit had reassigned cases only four times. Toby J. Heytens, Reassignment, 66 Stan. L. Rev 1, 17-18 (2014).

Vascular Solutions v. Medtronic

In another recent case, a reversal by the Federal Circuit prompted a Minnesota district court judge to recuse himself. In Vascular Solutions LLC v. Medtronic, Inc., Chief Judge Patrick J. Schiltz of the District Court of Minnesota considered whether Medtronic’s catheter product infringed Teleflex’s patents. The court struggled to reach a viable construction for the claim term “substantially rigid portion/segment,” rejecting both parties’ claim constructions and concluding that the claims were “mutually exclusive.” Vascular Solutions LLC v. Medtronic, Inc., 2024 WL 95193, at *4-5 (D. Minn. 2024). Ultimately, the district court ruled that all claims reciting the phrase were invalid for indefiniteness. Id., at *8.

On appeal, the Federal Circuit disagreed, finding that the district court erred in determining that the asserted claims were “mutually exclusive” and indefinite. It ordered the district court to conduct claim construction on a claim-by-claim basis on remand, with the instruction that “the asserted claims are not necessarily mutually exclusive, and the claim limitation ‘substantially rigid portion/segment’ does not have to have a consistent boundary across different independent claims.” Vascular Solutions LLC v. Medtronic, Inc., 117 F.4th 1361, 1370 (Fed. Cir. 2024).

Following the Federal Circuit’s opinion, Judge Schiltz issued an order recusing himself from further proceedings in the matter. The order stated that the court “has no idea how to reconcile the facts presented to the court with the Federal Circuit’s holding,” and “does not believe that it can set aside its previous conclusions to make an impartial determination[.]” Vascular Solutions LLC v. Medtronic, Inc, No. 0:19-cv-01760, ECF No. 557 (D. Minn. Oct. 24, 2024). After a second recusal by another district court judge, the case has now been reassigned to a third district court judge and the claim construction process is again underway. Id., ECF Nos. 558, 560.

The Tension Between the Federal Circuit and District Courts in Patent Cases

These cases are examples of the tension between the Federal Circuit and U.S. District Courts in resolving patent suits. Several years ago, one of the authors attended a panel discussion of district court judges, where the judges discussed their frustration with patent cases in general, and how this frustration was particularly acute given the relatively high reversal rate in the Federal Circuit. Federal Circuit reversals are often based on what the court determines to be erroneous claim construction orders (which are not ordinarily appealable until after judgment has been entered). This puts district court judges in a difficult position: having to spend enormous resources resolving patent cases through summary judgment or trial—which often involve complex technology, discovery battles, dueling expert witnesses and potentially lengthy and complicated trials—only to have the cases reversed on appeal and remanded with the directive to “try again.” Further, a Michigan Law Review study of Federal Circuit claim construction reversal rates suggests that district court judges do not learn from appellate review of their rulings. David L. Schwartz, Practice Makes Perfect? An Empirical Study of Claim Construction Reversal Rates in Patent Cases, 107 Mich. L. Rev. 223, 225-26 (2008). This is consistent with a concern that the Federal Circuit “does not provide clear guidance on claim construction” and even a noted demoralizing effect on district court judges. Id.

What Patent Practitioners Can Do To Help Alleviate the Tension

Certainly, patent practitioners alone cannot change the system that lends itself to the tension between the courts resolving patent disputes and appeals. However, they do have a role to play in attempting to alleviate the tension. For instance, by refraining from over-litigating cases with excessive discovery battles, helping district court judges better understand the technology at issue, taking reasonable positions in claim construction, and generally being civil to the opposing party, litigators can avoid further exhausting district court resources and reducing the likelihood of reversal in the Federal Circuit.

Reprinted with permission from the April 17, 2025 edition of the National Law Journal © 2025 ALM Global Properties, LLC. All rights reserved.