In re: Google LLC, Appeal No. 2023-101 (Fed. Cir. 2023)
In the Federal Circuit’s only precedential patent opinion this week, the Court granted mandamus reversing yet another decision by Western District of Texas Judge Alan D. Albright refusing to transfer a patent case out of his court, which (like several of Judge Albright’s prior decisions) denied transfer to the U.S. District Court for the Northern District of California. Our write-ups of the Federal Circuit’s recent precedential reviews of Judge Albright’s transfer practices can be found below:
- In re: Samsung Electronics Co., Ltd., et al., Appeal Nos. 2021-139, -140 (Fed. Cir. June 30, 2021)
- In re: Juniper Networks, Inc., Appeal No. 2021-160 (Fed. Cir. Sept. 24, 2021)
- In re: Volkswagen Group of America, Inc. and In re: Hyundai Motor America, Appeal Nos. 2022-108, -109 (Fed. Cir. Mar. 9, 2022)
- Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022)
- In re: Apple Inc., Appeal No. 2022-162 (Fed. Cir. Nov. 8, 2022)
In this case, plaintiff Jawbone Innovations, LLC had sued Google (among others) shortly after being assigned the patents-in-suit and only seven months after being incorporated in Texas. Jawbone rented facilities in Waco for storage and certain sales activities, but had no personnel in the Western District of Texas and did not practice the asserted patents in the marketplace. By contrast, Google had presented evidence that the accused technology was researched, designed, and developed at its headquarters in the Northern District of California; that the technology underlying the patents was also developed and prosecuted in N.D. Cal.; that witnesses and sources of proof (including all Google personnel who worked on the accused technology and four of the six named inventors on the patents) were primarily located in N.D. Cal.; and that no witnesses or sources of proof were located in the Western District of Texas.
Judge Albright nonetheless denied Google’s motion to transfer under 28 U.S.C. § 1404(a), relying primarily on court congestion and judicial economy considerations. Applying Fifth Circuit law applicable to convenience transfers, the Federal Circuit found that Judge Albright’s decision was clearly erroneous.
First, in considering the practicalities of litigating the case, Judge Albright had determined that Jawbone’s co-pending case against Apple Inc. in W.D. Tex. on the same patents weighed against transferring the Google case. The Apple case had also been assigned to Judge Albright, Apple had also moved to transfer its case to N.D. Cal., and Judge Albright had postponed ruling on that motion until the parties had completed all fact discovery on the merits. By the time Google’s instant petition reached the Court, however, the Federal Circuit had vacated Judge Albright’s scheduling order in the Apple case and directed him to prioritize the transfer motion (see our write-up here), after which that case had been voluntarily dismissed. As such, the Federal Circuit found this factor did not weigh against transfer, also noting that “judicial economy considerations could not undermine the clear case for transfer in light of the imbalance on the other factors,” citing In re Samsung Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021), another case vacating one of Judge Albright’s decisions denying transfer (our write-up here).
Next, Judge Albright had determined that a judicial congestion factor also weighed against transfer. The Federal Circuit noted that while it would defer to the district court’s assessment of the time-to-trial averages between the two districts, this factor should have been given no weight in a case where the non-practicing plaintiff did not have any market position threatened in a way that would add urgency to resolution of the case.
The Federal Circuit also found that the district court clearly erred in finding that a “cost of attendance for willing witnesses” factor weighed only slightly against transfer. Google had submitted declaration testimony identifying at least 11 Google employees in N.D. Cal. who worked on the accused technology (and none in W.D. Tex.), which Judge Albright had discounted as “unreliable” in view of the declarant’s failure to consider Google employees in Texas that Jawbone had identified as having potentially relevant knowledge based on their online profiles. As each of the identified employees had themselves provided testimony that they did not work on the accused functionalities, and because there was otherwise insufficient basis to discount the clear imbalance in the location of witnesses, the Federal Circuit found that this factor should have weighed firmly in favor of transfer. Similarly, the Court found Judge Albright erred in determining an “ease of access to sources of proof” factor was neutral, and that it also weighed in favor of transfer.
The Court found that Judge Albright also erred in finding a “local interest” factor to be neutral, as he improperly relied on Jawbone’s presence in Texas. Citing to another decision overturning one of Judge Albright’s transfer decisions, In re Juniper Networks, Inc., 14 F.4th 1313 (Fed. Cir. 2021) (our write-up here), the Court found that the district court should have accorded no weight to a party’s “recent and ephemeral” presence in the transferor district, such as when it had established an office only to claim a presence for litigation purposes. By contrast, the Federal Circuit found that the Northern District of California had a clear localized interest in adjudicating a case involving technology invented in and prosecuted from—and as asserted against products developed in—that forum.
After briefly considering the remaining factors, the Court concluded that when the transfer factors were properly considered and weighed, the analysis clearly favored transfer to the Northern District of California. The district court’s order denying transfer was vacated, and it was directed to transfer the case.
The opinion can be found here.
This article summarizes aspects of the law and does not constitute legal advice. For legal advice for your situation, you should contact an attorney.
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