Locke Lord QuickStudy: The Federal Circuit Issues Multiple ‎Orders Directing Transfer of Venue out of the Western ‎District ‎of Texas

On November 15th, the United States Court of Appeals for the Federal Circuit entered orders granting ‎three separate petitions for writ of mandamus in the cases styled In re Apple Inc., In re Atlassian Corp. ‎PLC, Atlassian, Inc., and In re Google LLC (“November 15 Orders”). Judge Alan Albright of the United ‎States District Court for the Western District of Texas was ordered to transfer the cases to the United ‎States District Court for the Northern District of California, although for different reasons based upon ‎the facts of each case. In each Order, the Federal Circuit noted that Judge Albright’s decision to ‎deny a transfer based upon the Western District of Texas’ speculative expedited time-to-trial was ‎improper. The Federal Circuit has over the past two years entered more than fifteen other orders ‎directing transfer of venue in patent cases out of the Western District of Texas. ^[1]

The November 15 Orders

In each case, the defendants sought to have their case transferred to the Northern District of ‎California under 28 U.S.C. § 1404(a), arguing that the Northern District of California was a more ‎convenient forum. In determining whether to transfer venue, a court traditionally analyzes private ‎and public interest factors. The Federal Circuit’s November 15 Orders analyzed six such factors.‎

The first factor in the Federal Circuit’s transfer of venue analysis is the location of the sources of ‎proof relevant to the dispute. The Federal Circuit has acknowledged that while electronic storage ‎and modern technology has made documents more widely accessible, what matters is the competing ‎forums’ ease of access to the sources of evidence. Although the electronic information was ‎‎“available” in the Western District of Texas due to modern technology, the Federal Circuit ruled that ‎this factor weighed in favor of transferring the cases to the Northern District of California because the ‎source code, servers storing the information, and maintenance of all such information was located in ‎the Northern District of California.‎

The second factor in the Federal Circuit’s transfer of venue analysis is a venue’s ability to compel ‎third-party witnesses to testify through its subpoena power. The Federal Circuit has repeatedly held ‎that when more third-party witnesses reside within the transferee venue than reside within the ‎transferor venue, this factor weighs in favor transferring the case. In all three cases, the ‎overwhelming majority of third-party witnesses resided within the Northern District of California, thus ‎favoring a transfer.‎

The third factor in the Federal Circuit’s transfer of venue analysis is the relative convenience of the ‎competing forums for potentially willing witnesses. Previous Federal Circuit opinions have held that ‎when there are several potentially willing witnesses located in the transferee forum and none in the ‎transferor forum, this factor weighs in favor of transferring the case. In all three cases, the ‎defendants identified multiple employees with extensive knowledge of the design, development, ‎marketing, licensing, and finances of the accused products residing within the Northern District of ‎California, while only a few employees with minimally relevant knowledge resided within the ‎Western District of Texas. As such, the Federal Circuit weighed this factor in favor of transferring the ‎case.‎

The fourth factor in the Federal Circuit’s transfer of venue analysis is the venue’s local interest, ‎specifically whether a defendant is “at home” in the venue and/or whether the events giving rise to ‎the dispute occurred in the forum. A party’s “general presence” in a forum is not enough on its own. ‎In all three cases, the defendants had their headquarters in the Northern District of California, as well ‎as designed and developed the products at issue in the Northern District of California. Thus, the ‎Federal Circuit found that the Northern District of California had a greater localized interest than the ‎Western District of Texas.‎

The fifth factor in the Federal Circuit’s transfer of venue analysis is whether inconsistent results can ‎be avoided and judicial resources may be preserved if the dispute is handled in a specific forum. The ‎preservation of judicial economy is viewed at the time the suit was filed, such that multiple lawsuits ‎filed on the same day in the same court may weigh against a transfer. However, the practical ‎considerations are not to be over-weighed. In all three cases, although there were co-pending cases ‎filed on the same day in the Western District of Texas, the Federal Circuit held that any incremental ‎gains obtained by keeping the cases in the Western District of Texas were insufficient to justify ‎overriding the inconvenience created for the parties and witnesses. Thus, the Federal Circuit held ‎this factor weighed in favor of transferring the cases to the Northern District of California.‎

The final factor in the Federal Circuit’s transfer of venue analysis is the ability of a court to efficiently ‎and effectively handle the dispute. In all three cases, Judge Albright denied transferring the cases to ‎the Northern District of California based upon his determination that the Western District of Texas ‎had a significantly faster time to trial due to its continued jury trials during the COVID-19 pandemic. ‎The Federal Circuit has consistently held that when the other relevant factors discussed above ‎weigh in favor of transferring the matter, then the speed of the transferee district court should not ‎alone outweigh all of those other factors. Additionally, the Federal Circuit noted that the Northern ‎District of California and Western District of Texas did not show any significant differences in ‎caseload or time-to-trial statistics to justify Judge Albright’s denial.‎

The Federal Circuit continues to provide guidance in these patent venue cases. Any consideration ‎of a potential motion to transfer should involve continued monitoring of Federal Circuit decisions ‎relating to venue and a thorough investigation into venue-related facts.‎

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[1]  ‎ See In re DISH Network, LLC, No. 2021-182 (Fed. Cir. Oct. 21, 2021); In re NetScout Sys., Inc., No. 2021-173, 2021 WL 4771756 ‎‎(Fed. Cir. Oct. 13, 2021); In re Pandora Media, LLC, No. 2021-172, 2021 WL 4772805 (Fed. Cir. Oct. 13, 2021); In re Google LLC, ‎No. 2021-171, 2021 WL 4592280 (Fed. Cir. Oct. 6, 2021); In re Juniper Networks, Inc., No; 2021-156, 2021 WL 4519889 (Fed. Cir. ‎Oct. 4, 2021); In re Apple, No. 2021-187, 2021 WL 4485016 (Fed. Cir. Oct. 1, 2021); In re Google LLC, No. 2021-170, 2021 WL ‎‎4427899 (Fed. Cir. Sep. 27, 2021); In re Juniper Networks, No. 2021-160, 2021 WL 4343309 (Fed.-Cir. Sep. 24, 2021); In re Hulu, ‎LLC, No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021); In re Uber Techs., Inc., 852 F.App'x 542 (Fed. Cir. 2021); In re ‎Samsung Elecs. Co., Ltd., 2 F.4th 1371 (Fed. Cir. 2021); In re TracFone Wireless, Inc., 852 F.App'x 537 (Fed. Cir. 2021); In re Apple ‎Inc., 979 F.3d 1332 (Fed. Cir. 2020); In re Nitro Fluids LLLC, 978 F.3d 1308 (Fed. Cir. 2020); In re Adobe Inc., 823 F.App'x 929 (Fed. ‎Cir. 2020).‎