By: Kassidy Schmitz — Legal Intern, Unified Patents

It is no secret that the district court in the Western District of Texas (WDTX) in Waco, TX, before Judge Alan D Albright, is currently the most popular court for patent litigation. However, it is not always the most convenient court. Motions to transfer are filed frequently and are almost as frequently denied by Judge Albright. Defendants are consistently petitioning the Federal Circuit and, surprisingly, receiving support.

Writs of mandamus are exceedingly rare and reserved for “extraordinary causes.”[1] They can be granted only if there is a clear showing that the transferee forum is clearly more convenient, taking into consideration relevant public and private forum non conveniens factors,[2] and that there was a clear abuse of discretion by the district court in denying the motion.[3] Nevertheless, since July of 2020, the Federal Circuit has granted nine of the twenty petitions for writs of mandamus filed on Judge Albright’s denials.

In one of the earliest granted petitions, In re Adobe,[4] Judge Albright ruled against transfer despite the evidence that Northern California more convenient because both Adobe and the inventor were in Northern California, and Adobe had multiple witnesses were in Northern California. The Federal Circuit determined the district court failed to give appropriate weight to the convenience and willing witness factors, erroneously basing the denial solely on his “perceived ability to more quickly schedule a trial.”[5] The Court pointed out that this factor was explicitly at issue in Genentech, and it was determined that if several factors weigh in favor of transfer, then “the speed of the of the transferee district court should not alone outweigh” the other factors.[6]

The speed of the district court as a determining factor was again called into question three months later in both In re Nitro Fluids, L.L.C.[7] and In re Apple.[8] In In re Nitro Fluids, L.L.C., Judge Albright reasoned that the WDTX would be able to hear the case faster than the SDTX because the WDTX has a patent-specific Order Governing Proceedings.[9] The Federal Circuit found this reasoning was flawed as the focus needed to be on whether there was “an appreciable difference in docket congestion between the two forums.”[10] The potential difference between the two courts’ abilities to schedule a trial would not be related to the potential appreciable difference. The Federal Circuit also found that district court erroneously relied on the assumption that it could move faster and had made more progress on the current case than the SDTX had on the co-pending case to deny the first-to-file claim. The basis of first-to-file is to alleviate the issue of two courts resolving overlapping issues, not which can make it to the finish line first.[11] If the balance of transfer factors favors keeping the case in the second-filed court, which is rare, then the case should stay; otherwise, the case should be transferred to the first-filed court.

In In re Apple, the speed of the court was only one of a myriad of factors the Federal Circuit determined the district court weighed incorrectly. In this case, the district court acknowledged, and the Federal Circuit agreed, that the Northern District of California (“NDCA”) historically had a shorter time to trial for patent cases than WDTX.[12] The district court’s argument that the NDCA had a more congested docket did not outweigh the fact that both courts can reach a decision at about the same rate.[13] Other factors the Federal Circuit discussed were relative ease of access to sources of proof, cost of attendance for willing witnesses, and local interest. For the sources of proof factor, the district court found that it weighed slightly in favor of a transfer by looking at the location of witnesses and location of documents. The Federal Circuit noted that the district court erred in ignoring Apple’s sources of proof in NDCA and overemphasized the sources of proof in or nearer to WDTX. The place where the defendant’s documents are kept, especially in patent infringement cases as the bulk of relevant evidence usually comes from the accused infringer, weighs in favor of transfer to that location. For the willing witness factor, the Federal Circuit determined that the district court applied the Fifth Circuit 100-Mile Rule too rigidly as the witnesses would need to leave home for an extended period of time regardless of where they traveled to. In addition, the most relevant party witnesses for all the parties would be in NDCA. The combination of these factors weighed in favor of transfer. The Federal Circuit found that the district court misapplied the law for the local interest factor by incorrectly focusing on the purported tax benefits of Apple’s presence in WDTX. The factor is more importantly focused on the “significant connection between a particular venue and the events that gave rise to a suit,”[14] not just the parties’ significant connections to each forum. The accused products were designed, developed, and tested in NDCA, and Uniloc has a presence in NDCA and not WDTX, thus the factor weighs in favor of transfer.

The speed of the court, or rather lack thereof, was the reason the petitions were filed in In re SK Hynix[15] and In re TracFone Wireless, Inc.[16] In both cases, the petitioners waited almost eight months for the district court to rule on a motion to transfer before filing their petitions. In the meantime, the district court continued to conduct proceedings, such as Markman hearings and issuing claim construction orders. The Federal Circuit called the district court’s handling of the motions an “egregious delay and blatant disregard for precedent.”[17] The Court reiterated their position in Apple that while district courts have discretion as to how they handle their dockets, a transfer motion should “unquestionably take top priority.”[18]

Three days after the Federal Circuit ordered the district court to make a ruling on TracFone’s transfer motion, the district court denied the motion based almost entirely on the willing witness factor; TracFone filed a second petition.[19] Similar to Adobe, there were no witnesses identified by either party that resided within or even close to Waco, Texas. As in Apple, the Federal Circuit determined that the district court misapplied the 100-Mile Rule by saying that doubling the distance traveled by non-party witnesses in Arizona and Minnesota would double the inconvenience. While that was originally how the rule was applied,[20] the court in Genentech held that rule should not be rigidly applied where witnesses will be required to travel a significant distance regardless of where they testify.[21] The Federal Circuit held that the district court “clearly abused its discretion” in reaching the conclusion that the willing witness factor weighed against transfer.

The willing witness factor was again at issue in the most recent cases of In re Samsung Electronics[22] and In re Uber.[23]  In both cases, as in TracFone, there were no witnesses located in WDTX and over a dozen located in NDCA. In Samsung, the Federal Circuit chastised the district court for again not giving any weight to the witnesses in NDCA and ignoring the precedent the Federal Circuit set in Apple that those witnesses need to be considered. In a flip of the script from the district court’s typical heavy weight given to non-party witnesses,[24] the Federal Circuit held that the district court did not give enough weight to non-party witnesses, who were also located in NDCA. Similar to Apple, the events that lead to the infringement suit mainly took place in NDCA and not at all in WDTX. The facts and analysis by the district court in Uber were almost identical to those of Samsung.[25] As such, the Federal Circuit again reversed the district court and found that the transfer motion should be granted.

District courts have wide discretion in balancing the factors when deciding to transfer a case. In these eight cases,[26] the Federal Circuit did not mince words; there was clear abuse in each case. When a court continuously rules against transfer and abuses its discretion, especially in the Western District of Texas with its heavy patent docket, it is cause for concern. By forcing parties to litigate in the Western District, it is not only circumventing the venue statutes, but also tipping the scales and potentially affecting the outcome of patent infringement cases. With the rise of arguably abusive litigation of lower-quality patents, having one district court with one sitting judge hear a large number of the cases is dangerous. While it appears the Western District has heeded the Federal Circuit’s warnings on weighing factors in deciding Correct Transmission LLC v. ADTRAN, Inc.[27] and Infogation Corp. v. Google LLC[28] and addressed the speed and congestion issue with the Standing Order issued in March, time will tell if nine granted writs of mandamus were enough to convince the Western District of Texas to stay the course.

[1] Ex parte Fahey, 332 U.S. 258, 259-60 (1947).

[2] See In re Volkswagen of Am., Inc., 545 F.3d 304, 311 (5th Cir. 2008) (en banc).

[3] See In re Genentech Inc., 566 F.3d 1338, 1348 (Fed. Cir. 2009).

[4] In re Adobe, 823 F. App’x 929 (Fed. Cir. 2020).

[5] Id. at 932.

[6] Genentech, 566 F.3d at 1348.

[7] In re Nitro Fluids, L.L.C., 978 F.3d 1308 (Fed. Cir. 2020).

[8] In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020).

[9] Nitro Fluids, 978 F.3d at 1313.

[10] Id. at 1314 (quoting In re Adobe Inc., 823 F. App’x 929, 935 (Fed. Cir. 2020)).

[11] See id.

[12] In re Apple Inc., 979 F.3d at 1347.

[13] Id.

[14] In re Acer, 626 F.3d 1252, 1256 (Fed. Cir. 2010).

[15] In re SK Hynix, 835 Fed. App’x. 600 (Fed. Cir. 2021).

[16] In re Tracfone Wireless, Inc., 848 Fed. App’x. 899 (Fed. Cir. 2021).

[17] In re SK Hynix, 835 Fed. App’x at 602.

[18] In re Apple, 979 F.3d 1332, 1337 (Fed. Cir. 2020).

[19] In re TracFone, No 2021-136 (Fed. Cir. April 20, 2021).

[20] In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004).

[21] In re Genentech, Inc., 566 F.3d 1338, 1344 (Fed. Cir. 2009).

[22] In re Samsung Electronics Co., Nos. 2021-139, -140 (Fed. Cir. June 30, 2021).

[23] In re Uber, No. 2021-150 (Fed. Cir. July 8, 2021).

[24] TracFone, No 2021-136; In re Apple, 979 F.3d 1332, 1344 (Fed. Cir. 2020).

[25] See In re Uber, at 2-3.

[26] In re Intel was not discussed as it pertained mainly to the closure of the Austin court due to the COVID 19 pandemic.

[27] Correct Transmission L.L.C. v. ADTRAN, Inc., 6:20-CV-00669 (Order Granting Defendant’s Motion to Transfer)

[28] Infogation Corp. v. Google L.L.C, 6:20-CV-00366 (Order Granting Defendant’s Motion to Transfer)