The US Court of Appeals for the Federal Circuit granted a mandamus petition after analyzing the Fifth Circuit’s public and private interest factors for transfer motions and ordered the US District Court for the Western District of Texas to transfer a case to the petitioner’s venue. In re Google LLC, Case No. 23-101 (Fed. Cir. Feb. 1, 2023) (Lourie, Taranto, Stark, JJ.).
Jawbone Innovations, LLC, had an eventful 2021:
- February: Incorporated in Texas
- May: Obtained ownership of nine patents (all directed to technologies behind the eponymous product line that liquidated in July 2017)
- August: Rented office space in Waco, Texas
- September: Asserted the nine patents it just acquired against Google in the Western District of Texas–Waco Division.
Google moved to transfer the dispute to the US District Court for the Northern District of California. That district was where (1) the accused products (earbuds, smartphones, speakers, displays and software) were researched, designed and developed; (2) the asserted technology was developed, and the asserted patents were prosecuted; and (3) the witnesses and sources of proof were primarily located. In contrast, no witnesses or sources of proof were located in the Western District of Texas. Moreover, Jawbone Innovations had no personnel in Waco nor activities related to the accused technology in the whole of Texas.
Judge Albright nevertheless denied Google’s transfer motion, weighing the Fifth Circuit’s four public interest factors and four private interest factors and finding that the transferee venue failed to meet the Fifth Circuit’s “clearly more convenient” standard. With the district court finding half of the eight factors not favoring either the transferee or the transferor, its holding boiled down to a ruling that considerations of “court congestion” and “judicial economy” (found to favor the transferor) outweighed considerations of “unwilling witness compulsion” and the “cost of attendance for willing witnesses” (found to favor the transferee).
Google petitioned the Federal Circuit for a writ of mandamus. The Court, applying the Fifth Circuit’s eight factor test, identified clear error in the district court’s analysis of five of the factors.
First: Addressing the “cost of attendance for willing witnesses” factor, the Federal Circuit found error in the district court’s conclusion that this factor only slightly favored transfer. Rather, the Court explained that this factor “weigh[ed] heavily in favor of transfer” because the transferee venue was clearly more convenient for potential witnesses, especially Google employees with technical, marketing and financial knowledge of the accused products. The error was localized to how the district court considered a Google declaration identifying at least 11 potential employee witnesses (all of whom were located in the transferee venue) and Jawbone Innovations’ assertions that the declaration omitted three potentially relevant Texas-based employees. The Court noted that while this 11 to three imbalance alone was sufficient to settle this factor, the district court’s error went further, finding Google’s declaration unreliable and less worthy of consideration because of the alleged omissions. The Federal Circuit determined this was error on error because the district court improperly ignored that the depositions [...]