IP UPDATE
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Exploring the latest in intellectual property law
Results for "Patent infringement"
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That’s So Metal: Narrow Limitation Doesn’t Contradict Broader One

by | Mar 14, 2024 |

The US Court of Appeals for the Federal Circuit reversed a district court’s indefiniteness determination, finding that two claim limitations – one broad and one narrow – were not contradictory since it was possible to meet the requirements of both. Maxell, Ltd. v. Amperex Technology Limited, Case No. 23-1194 (Fed. Cir. Mar. 6, 2024) (Prost, Taranto, Chen, JJ.)

Maxell owns a patent directed to a rechargeable lithium-ion battery. Maxell filed suit against Amperex alleging infringement. Following claim construction proceedings, the district court found the claims to be indefinite based on two limitations in the independent claim that recited the variable M1. The relevant claim limitations read:

1- wherein M1 represents at least one transition metal element selected from Co, Ni and Mn, [. . .]

2- wherein the content of Co in the transition metal M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole[.]

The district court found that these two limitations contradicted each other because limitation 1 recited Co (cobalt) as an optional transition metal selected from a Markush group for M1, whereas limitation 2 recited a minimum Co content of 30% in M1. The district court reasoned that the claims were indefinite because limitation 1 did not require the presence of cobalt, whereas limitation 2 did. In its claim construction order, the district court stated that simultaneous recitation that a claim element is both optional and required is a “contradiction on its face.” Maxell appealed.

The Federal Circuit found no contradiction between the two limitations, explaining that “[i]t is perfectly possible for a selected [M1] to satisfy both of these limitations.” The Court reasoned that in the context of Maxell’s patent, it was of no import that the two requirements (i.e., that M1 must comprise cobalt, nickel (Ni) or manganese (Mn), and that M1 must comprise at least 30% cobalt) were recited in separate clauses. It was enough that both limitations could be simultaneously satisfied. The Court further reasoned that the inclusion of two requirements in a claim did not create an otherwise nonexistent contradiction because the claim language must be read as a whole and not merely on a limitation-by-limitation basis. The Court also looked to the prosecution history to provide context for the ordering of the claim limitations at issue and explained that limitation 2 was added during prosecution to overcome a prior art reference that primarily used nickel as a transition metal.

The Federal Circuit explained that contrary to the district court’s characterization, the subject claim limitations did not grant options. Instead, they stated requirements that must be met to fall within the scope of the claimed invention. The Court noted that, rather than contradicting limitation 1, limitation 2 narrowed it. If limitation 2 had been recited in a dependent claim, there would be no contradiction, notwithstanding that proper construction of a dependent claim requires importation of all limitations from the claims from which it depends. The same conclusion applied when both limitations were [...]

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I Hear Ya – No Intent to Deceive, No Inequitable Conduct

by | Mar 7, 2024 |

The US Court of Appeals for the Federal Circuit affirmed a district court’s finding that the asserted patents were not unenforceable for inequitable conduct, determining that statements made by counsel to the US Patent & Trademark Office (PTO) to revive an abandoned application were not shown to have been made with deceptive intent. Freshub, Inc. v. Amazon.com, Inc., Case No. 2022-1391 (Fed. Cir. Feb. 26, 2024) (Reyna, Taranto, Chen, JJ.)

Freshub sued Amazon for infringement of patents directed to voice processing technology. Amazon denied infringement and defended on the basis that the patents should be declared unenforceable based on inequitable conduct by Freshub’s parent company, Ikan Holdings, during prosecution of the application at the PTO. Amazon alleged that Ikan improperly revived an earlier-abandoned parent application from which the asserted patents descend.

The predicate facts are as follows: In June 2011, the PTO issued a final office action rejecting the claims of the parent application. Ikan failed to respond to the office action, rendering the application abandoned in January 2012. In January 2017, Ikan petitioned the PTO to revive the application. In support of its revival petition, Ikan’s counsel asserted that “[t]he entire [five-year] delay in filing the required reply . . . was unintentional.” “[R]elying on petitioner’s duty of candor and good faith,” the PTO granted the petition, eventually resulting in issuance of the three patents-in-suit.

At trial, a jury found that Amazon did not infringe the asserted patents. The district court subsequently conducted a bench trial on inequitable conduct and found that Amazon had failed to prove inequitable conduct by clear and convincing evidence. Freshub appealed, arguing that it was entitled to judgment as a matter of law that Amazon infringed. Amazon cross-appealed, seeking reversal of the district court’s inequitable conduct ruling.

The Federal Circuit affirmed the district court’s determination of failure to prove inequitable conduct, finding that Amazon had not shown by clear and convincing evidence that Ikan misrepresented or omitted material information with the specific intent to deceive the PTO. The Court focused its analysis on deceptive intent, finding that the district court did not commit clear error in rejecting Amazon’s inequitable conduct defense.

The Federal Circuit noted that the record was minimal due to the passage of time and the limited testimonial and documentary evidence available, as well as the many unchallenged claims of attorney-client privilege. Nevertheless, both parties presented evidence concerning Ikan’s intent between 2012 and 2017.

To support its position, Freshub relied on the 2017 statement by Ikan’s counsel asserting that Ikan’s delay in filing its reply to the PTO’s final office action was unintentional. The Federal Circuit found this evidence probative, even without the presentation of additional evidence to further explain why the period of non-response was so long. On the other hand, Amazon presented specific evidence that it contended demonstrated deceptive intent. For example:

  • The 2017 statement to revive the parent application was made by the same counsel that prosecuted the application at the time of its 2012 abandonment.
  • Ikan’s counsel [...]

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I Hear Ya: Claim Terms Not as Narrow as Features in Specification

by | Feb 29, 2024 |

The US Court of Appeals for the Federal Circuit vacated a district court’s final judgment of noninfringement, finding that the district court improperly narrowed the constructions of certain claim terms to particular features recited in the specification. Promptu Sys. Corp. v. Comcast Corp., Case No. 22-1939 (Fed. Cir. Feb. 16, 2024) (Moore, Prost, Taranto, JJ.)

Promptu filed a lawsuit against Comcast alleging infringement of two patents. The patents describe and claim subject matter generally related to voice recognition but have materially different specifications. The first patent describes using remote voice recognition systems to deliver content in response to a user’s speech request (content delivery patent), while the second patent describes using remote voice recognition systems to control a user’s television set based on a user’s speech command (control patent).

The content delivery patent’s representative claim recites a method for using a “back channel containing a multiplicity of identified speech channels from a multiplicity of user sites presented to a speech processing system at a wireline node in a network supporting at least one of cable television delivery and video delivery” as well as a “method of operating at least part of a speech recognition system coupled to a wireline node in a network [for] processing a multiplicity of received identified speech channels to create a multiplicity of identified speech content.” Meanwhile, the claim of the control patent recites “a centralized multi-user voice operated television control system, comprising . . . a centralized processing station configured to receive and process second output from a multitude of television set top boxes by applying voice recognition.”

During the underlying district court proceeding, the district court adopted claim constructions proposed by Comcast. Based on those claim constructions, Promptu stipulated to and moved for entry of a final judgment of no infringement. After the district court granted Promptu’s motion, Promptu appealed.

Promptu challenged the district court’s construction of three claim limitations from the content delivery patent (“back channel,” “multiplicity of received identified speech channels” and “speech recognition system coupled to a wireline node”) and one claim limitation from the control patent (“centralized processing station”). In accordance with long-standing precedent, the Federal Circuit reviewed claim construction by affording the words of the claims their ordinary meaning in the context of the claims and specification.

The Federal Circuit concluded that the district court erred by narrowly construing “back channel” in the content delivery patent as being limited to a “fixed band of frequencies or time slot(s) for transmitting signals to a speech processing system or engine” because nothing in the claim language or the specification required limitation to a “fixed band of frequencies or time slot.” To the contrary, the specification of the patent disclosed the back channel broadly while recognizing the possibility of using different protocols and formats along different subsections of the path or route from user site to speech recognition system. Given the breadth of the techniques for the back channel disclosed in the specification, the Court found no reason to narrow the claims [...]

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Uncle Sam Can March In: Government Licenses Under Bayh-Dole Aren’t Subject to “Strict Timing Requirements”

by | Feb 22, 2024 |

In an appeal from the US Court of Federal Claims, the US Court of Appeals for the Federal Circuit affirmed a determination that 35 U.S.C. § 202(c)(4), a provision of the Bayh-Dole Act, operates to provide a license to the government for federally funded research based on work that occurred prior to the effective date of a funding agreement. University of South Fl. Board of Trustees v. United States, Case No. 22-2248 (Fed. Cir. Feb. 9, 2024) (Reyna, Taranto, Stoll, JJ.)

University of South Florida (USF) owns a now-expired patent directed to transgenic mice expressing a certain gene causing an accelerated pathology for Alzheimer’s disease. The patent’s subject matter was conceived while the two named inventors worked at USF, but both inventors transitioned their work to the Mayo Clinic prior to the first actual reduction to practice of the claimed invention. The mice remained at USF, under the care of USF professors, while the named inventors continued to oversee the project from Mayo. The first actual reduction to practice occurred while the inventors were at Mayo.

While the named inventors were still at USF, one inventor submitted a grant application to the National Institutes of Health (NIH). The NIH awarded the inventors (while they were still at USF) a grant covering the mouse project. After the inventors moved to Mayo but prior to the award grant, the designated grantee changed from USF to Mayo. In November 1997, Mayo and USF entered into a subcontract whereby Mayo would pay USF for grant-covered work occurring at USF.

USF sued the United States alleging infringement of the mouse patent by a third party with the government’s authorization and consent. The third party was producing and using mice covered by the patent for the government. The US asserted a license defense under the Bayh-Dole Act, which gives the government a license to practice certain federally funded inventions. The Claims Court granted judgment to the US under its license defense, determining that USF operated pursuant to an implied contract with Mayo based on the understanding that Mayo would use funding from the NIH grant to pay USF for work done there. The Claims Court therefore determined that USF was a contactor with an implied subcontract that was a funding agreement under Bayh-Dole. Since the invention was therefore invented by a government contractor operating under a funding agreement, it was a “subject invention” that was first actually reduced to practice under a government contract. Therefore, under Bayh-Dole, the government was entitled to a license. USF appealed, arguing that the invention was not a “subject invention” within the meaning of § 202(c)(4) of Bayh-Dole.

USF argued that to trigger § 202(c)(4), a funding agreement must be in place at the time of the relevant work and there was no implied agreement in April 1997, the time the work that led to the reduction to practice commenced. The Federal Circuit determined that the November 1997 subcontract was adequate to support entitlement to claim a government license under § [...]

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Carolina Calling: Sources of Proof Favor Transfer

by | Feb 8, 2024 |

The US Court of Appeals for the Federal Circuit vacated a district court order denying transfer, finding that the sources of proof, compulsory process and localized interest factors all favored transfer. In re Honeywell Int’l Inc., Case No. 23-152 (Fed. Cir. Jan. 26, 2024) (Dyk, Bryson, Taranto, JJ.) (per curiam) (nonprecedential)

Lone Star SCM Systems filed a lawsuit against Honeywell in the Western District of Texas, Waco Division (West Texas) asserting infringement of four patents related to radio frequency identification technology. Honeywell moved to transfer the suit to the Western District of North Carolina (West Carolina), where Hand Held Products, a Honeywell subsidiary that designed, manufactured, imported and sold certain accused products, is headquartered. Honeywell argued that it had identified five potential Hand Held witnesses who would be subject to the transferee’s subpoena power and that relevant and material evidence would be more likely to exist in the transferee district.

The district court denied Honeywell’s motion. The district court analyzed public- and private-interest factors outlined in the Fifth Circuit’s 2008 In re Volkswagen of Am. decision and concluded that although Lone Star could have brought its suit in West Carolina, Honeywell had failed to demonstrate that West Carolina was clearly more convenient. The district court acknowledged that the bulk of the evidence was located in West Carolina but ultimately concluded that the convenience to potential party witnesses favored West Texas, pointing to several Lone Star witnesses who resided in the Northern District of Texas. The court found that the public-interest factors were neutral or similarly offsetting. The district court also found that West Carolina’s local interest favored transfer, but judicial efficiency did not because a transfer would have required relocating this suit away from two co-pending Lone Star infringement suits.

Honeywell petitioned the Federal Circuit for a writ of mandamus. The Federal Circuit determined that the district court’s denial of Honeywell’s transfer motion was patently erroneous. The Federal Circuit explained that the district court’s findings regarding potential party witness convenience and judicial efficiency were contrary to recent Fifth Circuit and Federal Circuit precedent. Regarding the potential party witnesses, the Federal Circuit cited the Fifth Circuit’s 2023 In re TikTok decision, explaining that it was improper to place witnesses residing outside of West Texas but still within the state of Texas on par with those residing in West Carolina. Regarding judicial efficiency, the Federal Circuit found that Lone Star’s position differed little from the circumstances that the Federal Circuit considered in its 2021 In re Samsung Elecs. decision, where the other suits involved different defendants with different hardware and software. Consistent with Samsung, the Federal Circuit concluded that Lone Star’s co-pending suits did not favor West Texas because the other cases were likely to involve significantly different discovery, evidence and issues. The Federal Circuit vacated the district court’s decision and ordered the district court to grant Honeywell’s transfer motion.



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R&D Expenditures Need Only Relate to Subset of Domestic Industry Product

by | Feb 1, 2024 |

Addressing a decision by the US International Trade Commission finding a violation of Section 337 based on importation of certain TV products, the US Court of Appeals for the Federal Circuit agreed that the patent holder had established a domestic industry based on research and development (R&D) relating to only a subset of the domestic industry products. Roku, Inc. v. ITC, Case No. 22-1386 (Fed. Cir. Jan. 19, 2024) (Dyk, Hughes, Stoll, JJ.)

In 2020, Universal Electronics filed a complaint at the Commission seeking a Section 337 investigation of certain streaming devices, TVs, set top boxes and remote controls sold by Roku and others that allegedly infringed six of Universal Electronics’ patents. During the investigation, the administrative law judge (ALJ) granted Roku’s summary determination motion that Universal Electronics lacked ownership of one of the patents, but the Commission promptly reversed that decision. Prior to the hearing, Universal Electronics terminated the investigation as to the three other patents and all respondents other than Roku. The ALJ subsequently issued an initial determination finding infringement and domestic industry for all three patents but held that two of the patents were invalid. The Commission agreed and issued a limited exclusion order barring Roku’s importation. Roku appealed.

Roku raised three challenges to the Commission’s decision on appeal. Roku renewed its ownership argument, disputed the domestic industry finding, and contested the holding of nonobviousness. The Federal Circuit affirmed on all issues.

On ownership, the Federal Circuit faced the question of whether an inventor had executed an automatic assignment or merely a promise to assign. The Court noted that Roku only addressed a 2004 agreement cited by the ALJ and disregarded a later 2012 agreement relied on by the Commission where the inventor agreed to “hereby sell and assign” the patent.

The Federal Circuit rebuffed Roku’s argument that the domestic industry prong was not satisfied on the basis that Universal Electronics failed to allocate expenses to specific domestic industry products. Instead, the Court noted that Section 337 requires investment in the exploitation of the intellectual property and explained that the expenditures can relate to only a subset of a product if the patent only involves that subset.

Finally, regarding obviousness, the Federal Circuit noted that Roku’s arguments regarding secondary considerations ignored the Commission’s finding that the prior art combination failed to satisfy the key claim limitation. As to secondary considerations, the Court dismissed Roku’s lack of nexus argument by finding that it did not matter that the news articles showing a long-felt but unmet need also discussed features other than what was claimed by the patent.



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Espresso Yourself: When Prosecution History as a Whole Doesn’t Demonstrate Clear, Unmistakable Disclaimer

by | Jan 4, 2024 |

The US Court of Appeals for the Federal Circuit reversed and remanded a district court’s claim construction and related summary judgment rulings after determining that the district court erred in construing a claim term by improperly limiting the plain and ordinary meaning of the term. K-fee System GmbH v. Nespresso USA, Inc., Case No. 22-2042 (Fed. Cir. Dec. 26, 2023) (Taranto, Clevenger, Stoll, JJ.)

K-fee filed a lawsuit against Nespresso alleging infringement of three K-fee patents directed toward coffee machine portion capsules that use a barcode. The district court issued a claim construction order construing the term “barcode,” which was present in every asserted claim. In the claim construction order, the district court characterized the dispute as “whether statements made by K-fee System GmbH . . . before the EPO [European Patent Office] concerning the meaning of ‘barcode’ should influence the plain and ordinary meaning of that limitation in these proceedings.”

In the EPO, Nespresso’s foreign affiliate had challenged the validity of K-fee’s related European patent, and K-fee had responded seeking to distinguish a particular piece of prior art (Jarisch/D1). Because the statements made to the EPO were submitted to the US Patent & Trademark Office during prosecution of the asserted patents, the district court analyzed the statements as part of the intrinsic record. The district court concluded that K-fee had “argued strenuously before the EPO for a particular ‘plain and ordinary meaning,’ which excluded ‘bit codes’—codes made up of two binary symbols.” Based on the EPO submissions, the district court construed the claim term “barcode” to:

its plain and ordinary meaning (i.e., a code having bars of variable width, which includes the lines and gaps), the scope of which is understood by the clear and unequivocal statements K-fee made to the EPO (i.e., the scope of barcode does not include the type of bit code disclosed in Jarisch/D1).

Based on that construction of “barcode,” Nespresso moved for summary judgment of noninfringement. It argued that its accused products operated identically to Jarisch capsules, which K-fee distinguished before the EPO, since both use a machine-readable code with only two binary symbols. The district court agreed. When applying its construction at summary judgment, the district court clarified that using “the type of bit code disclosed in Jarisch” … means “a binary code containing only ‘0s’ and ‘1s.’” Thus, the district court read K-fee’s EPO statements “to mean that a barcode must ‘contain more than only two binary symbols’ and, by extension, that any code that contains only two binary symbols could not be a barcode.” Because the court found that “there was no dispute that Nespresso’s accused products used a code having only two symbols,” it granted Nespresso’s motion for summary judgment of noninfringement. K-fee appealed.

Considering the issue de novo, the Federal Circuit reviewed K-fee’s statements to the EPO in context and disagreed “that the ordinary meaning of ‘barcode’ excludes ‘bit codes’ (in some sense, two-value codes) or even bit codes of ‘the type . . . disclosed in Jarisch’ to [...]

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If the Label Is Skinny Enough – No Inducement Under Hatch-Waxman

by | Dec 14, 2023 |

The US Court of Appeals for the Federal Circuit made explicit what has long been considered implicit based on Warner-Lambert and its progeny, namely, that plaintiffs asserting an induced infringement theory to bar the entry of generic drugs in a Hatch-Waxman suit are subject to higher scrutiny than plaintiffs asserting the same theories outside of the Hatch-Waxman context. H. Lundbeck A/S v. Lupin Ltd., Case No. 22-1194 (Fed. Cir. Dec. 7, 2023) (Dyk, Prost, Hughes, JJ.)

Lundbeck owns the approved new drug application (NDA) for Trintellix®, a drug indicated for the treatment of major depressive disorder (MDD), as well as an expired compound patent for the associated active ingredient vortioxetine. Lundbeck also owns a patent that claims the use of vortioxetine as an antidepressant that can be prescribed in place of a traditional antidepressant to alleviate a patient’s negative sexual side effects, and another patent that claims the use of vortioxetine to treat cognitive impairment symptoms in patients with MDD.

Generic pharmaceutical companies filed abbreviated new drug applications (ANDAs) seeking approval to market generic versions of Trintellix® and asserting that Lundbeck’s unexpired patents listed in its NDA were invalid and would not be infringed by the generic companies. As required by the Hatch-Waxman Act (to prevent the entry of a generic on the market), Lundbeck sued the generic companies. At the district court, the defendants prevailed on the finding of noninfringement but lost on invalidity. Lundbeck appealed.

Lundbeck pressed its induced infringement and contributory infringement theories on appeal. Lundbeck argued that the generics infringed under the plain text of Hatch-Waxman (35 USC 271(e)(2)(A)) because they filed ANDAs seeking approval to market vortioxetine, and that “some uses of vortioxetine—for the treatment of patients that have previously taken other drugs but had to cease or reduce use due to sexually related adverse events and for the treatment of cognitive impairment—are covered by [Lundbeck’s listed] patents; and the labels do not prohibit prescribing vortioxetine for those uses, even though the defendants do not propose to market the drug for those patented uses.” In other words, Lundbeck argued that in terms of its inducement allegation, it made no difference whether a drug would be sold for a use not covered by Lundberg’s NDA-listed patents because the drug could be prescribed for those patented uses.

The Federal Circuit disagreed, explaining that “‘the use’ in § 271(e)(2)(A) refers to the use for which the FDA has granted an NDA” and for which the ANDA was submitted.” The Court emphasized that it is not “an act of infringement under . . . § 271(e)(2)(A) to submit an ANDA for a drug if just any use of that drug were claimed in a patent.” If it were, a brand could “maintain its exclusivity merely by regularly filing a new patent application claiming a narrow method of use not covered by its NDA,” which “would confer substantial additional rights on pioneer drug patent owners that Congress quite clearly did not intend to confer.” As the Court then held, “actions for [...]

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Sound the Alarm: Reasonable Royalty Apportionment Analysis Overlooks “Sleep State”

by | Dec 14, 2023 |

After a jury found infringement of two patents and awarded almost $2.2 billion in damages, the US Court of Appeals for the Federal Circuit reversed the infringement finding for one asserted patent, vacated the damages award for the other asserted patent, and reversed the district court’s refusal to allow the alleged infringer to add a licensing defense. VLSI Technology LLC v. Intel Corporation, Case No. 22-1906 (Fed. Cir. Dec. 4, 2023) (Lourie, Dyk, Taranto, JJ.)

VLSI sued Intel for infringement of two patents. During the litigation, third party Finjan underwent a change in control after which it was controlled by the same parent entity as VLSI. Intel sought to amend its answer to add a licensing defense based on the broad definition of “affiliates” in its license agreement with Finjan, arguing that as a consequence of the change in control Intel was licensed to patents owned by VLSI. The district court denied the motion to amend.

At trial, the jury found literal infringement of one patent and infringement under the doctrine of equivalents (DoE) for the other patent. The jury awarded $2.2 billion in damages. Intel appealed.

The patent that the jury found infringed under the DoE was directed to devices, such as computer processors, having the ability to operate at a variety of frequencies. Depending on the operating conditions, a master device can provide a trigger input to a controller in response to a desired increase in device performance, and the controller can then adjust the clock frequency accordingly. Intel argued that the evidence of equivalents presented to the jury was legally insufficient to support a finding of infringement.

The Federal Circuit agreed and reversed the jury’s finding under the DoE. The Court stressed that for a patent owner to prevail under a DoE assertion, it must provide “particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the accused device.” While VLSI’s proof of equivalence was limitation specific, the testimony provided during the trial was insufficient to explain the “insubstantiality” of the differences between the claims and the Intel products. The Court specifically cited trial testimony by VLSI’s expert, who characterized the differences as “a difference of where an engineer draws the line . . . it’s a design choice.” In its explanation of why the analysis and testimony was insufficient, the Court explained that “[i]t is not enough [] to say that the different functionality-location placements were a ‘design choice.’ . . . VLSI had to prove—with particularized testimony and linking argument—that the elements of the Intel arrangement were substantially the same as the elements of the claimed arrangement. But VLSI offered no meaningful testimony doing so.”

Intel also appealed the damages award based on the patent that was found to be literally infringed. That patent was directed to certain features that provide separate scalable (as opposed to fixed) power supply voltages for both processors and memory devices, depending on the need of the device. VLSI’s expert presented a calculation of damages based [...]

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TikTok Makes It Out of West Texas to Sunny Northern California

by | Nov 16, 2023 |

The US Court of Appeals for the Fifth Circuit granted a writ of mandamus ordering the transfer of a case, finding that the district court’s denial of the motion to transfer “was so patently erroneous” that the extreme measure was appropriate. In re TikTok, Inc., Case No. 23-50575 (5th Cir. Oct. 31, 2023) (Smith, Southwick, Wilson, JJ.)

In the underlying case, Beijing Meishe Network Technology Co. sued TikTok in the US District Court for the Western District of Texas, alleging infringement, trade secret misappropriation and false advertising. All claims stemmed from the theory that a former Meishe employee disclosed copyrighted source code for video and audio editing software to TikTok, which TikTok then implemented into its app. Meishe and TikTok are Chinese companies, and both the alleged disclosure and TikTok’s alleged code implementation occurred in China, assisted by TikTok engineers in California. TikTok has no engineers in Texas but does maintain a business office there, although not within the Western District.

TikTok moved under 28 U.S.C. § 1404 to transfer the case to the Northern District of California. The district court took 11 months to rule on the motion, and in the meantime the case continued through discovery. After the district court denied the motion, TikTok petitioned the Fifth Circuit for a writ of mandamus.

The sole issue on mandamus was the propriety of the district court’s refusal to transfer venue. To succeed on a writ of mandamus, a petitioner must satisfy the reviewing court regarding the following questions:

  1. Are there other ways to obtain the desired relief?
  2. Is the reviewing court’s right to issue the writ “clear and indisputable”?
  3. Is the writ appropriate, given the circumstances?

The Fifth Circuit focused on the second question, its right to issue the writ. In the Fifth Circuit, the 2008 en banc In re Volkswagen case mandates an eight-factor test that a district court must consider in deciding a § 1404 transfer motion. No one factor is dispositive, and the Fifth Circuit has cautioned against tallying the yes/no results or denying transfer just because most factors are neutral. Unsurprisingly, in the 15 years since Volkswagen, district courts applying these factors have reached inconsistent results. Even the Fifth Circuit has reached “conflicting outcomes” when reviewing these cases. The Fifth Circuit therefore took the opportunity to address each factor.

The Fifth Circuit found that two factors weighed in favor of transfer:

  • The relative ease of access to sources of proof
  • The cost of attendance of willing witnesses

Regarding ease of access to proof, the Fifth Circuit clarified that factfinders analyze “relative ease of access, not absolute ease of access” to documents and other physical evidence. The district court had determined that this factor was neutral, given that most documentation was electronic. The Fifth Circuit disagreed, explaining that while the source code was electronically stored, it was protected by a high level of security clearance. Only certain TikTok employees based in California and China were able to access the code. Using the relative metric, [...]

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