U.S. Court of Appeals for the Federal Circuit, In Re: Google LLC, Docket No. 2023-101

Motion to Transfer

 

Venue

 

Jurisdiction

 

Federal Law

 

 

 

 

On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas in No. 6:21-cv-00985-ADA

 

 

 

Google LLC (“Google”) petitions for a writ of mandamus directing the United States District Court for the Western District of Texas to vacate its order denying Google’s motion to transfer and to transfer the case to the United States District Court for the Northern District of California. (…) For the following reasons, we grant the petition and direct transfer.

 

 

Pursuant to 28 U.S.C. § 1404(a), a district court may transfer any civil action to any other district court where the action might have been brought for the convenience of parties and witnesses and in the interest of justice.

 

 

In re Planned Parenthood Fed. of Am., Inc., 52 F.4th 625, 629 (5th Cir. 2022), when a movant “demonstrates that the transferee venue is clearly more convenient” the district court “should” grant transfer, In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc); see also Planned Parenthood, 52 F.4th at 629 (“The ultimate inquiry is whether the destination venue is ‘clearly more convenient than the venue chosen by the plaintiff.’”) (quoting Volkswagen, 545 F.3d at 315).

 

 

The Fifth Circuit has identified “private and public interest factors,” which are “not necessarily exhaustive or exclusive,” to be evaluated in connection with determining whether a case should be transferred. Planned Parenthood, 52 F.4th at 630 (internal quotation marks omitted). The private interest factors are: (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious, and inexpensive. Id. The public interest factors are: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign law. Id.

 

 

The district court held that the “administrative difficulties flowing from court congestion” factor weighed slightly against transfer. While we defer to the district court’s assessment of the average time to trial data, see Planned Parenthood, 52 F.4th at 631; In re Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009) (“We do not disturb the district court’s suggestion that it could dispose of the case more quickly than if the case was transferred to the Northern District of California.”), in this case it was a clear abuse of discretion to accord this factor any weight, see Juniper, 14 F.4th at 1322 (discounting time-to-trial difference because there was no “need of a quick resolution” where patentee lacked “position in the market . . . being threatened”). It appears undisputed that Jawbone (unlike its predecessor owners of the patents) is not engaged in product competition in the marketplace and is not threatened in the market in a way that, in other patent cases, might add urgency to case resolution and give some significance to the time-to-trial difference. Nor does the record reveal any other basis on which to accord significance to whatever greater speed the district court speculates it could reach trial as compared to Northern California. See Genentech, 566 F.3d at 1347 (describing this factor as “most speculative”). This factor, then, is neutral.

 

 

By contrast, the events giving rise to this patent infringement suit clearly have a particularized connection with Northern California. The patented technology was invented in, and the patents prosecuted from, that forum. Additionally, the district court found that Google developed the accused products in the Northern District, notwithstanding Google’s separate office in Austin. Appx932; see also Def. Distributed v. Bruck, 30 F.4th 414, 435 (5th Cir. 2022) (“The local interest in having localized interests decided at home, ‘most notably regards not merely the parties’ significant connections to each forum writ large, but rather the significant connections between a particular venue and the events that gave rise to a suit.’”) (quoting In re Apple Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020)). It was clear error not to find that the local interest factor favors transfer.

 

 

We agree with the district court, and both parties, that the “familiarity of the forum with the law that will govern the case” and the “problems associated with conflicts of law” are neutral.

 

 

In sum, on the record before us, four factors favor transfer and four factors are neutral. No factor weighs against transfer. The center of gravity of this action, focusing on the Volkswagen factors and the overriding convenience inquiry, is clearly in the Northern District of California, not in the Western District of Texas. The district court clearly erred in finding otherwise and its decision to deny Google’s motion to transfer was a clear abuse of discretion.

 

 

 

 

(U.S. Court of Appeals for the Federal Circuit, Feb. 1^st, 2023, In Re: Google LLC, Docket No. 2023-101)