Federal Circuit Grants Another Mandamus Challenge And Sends Waco Patent Case Filed Against Hulu To California

Published date10 August 2021
Subject MatterIntellectual Property, Patent
Law FirmWinston & Strawn LLP
AuthorMr Michael R. Rueckheim

It's moving day again, with the Federal Circuit directing Judge Albright (Waco) to transfer a patent case against Hulu to the Central District of California. The In re Hulu, LLC 2021-142 opinion (Fed. Cir. Aug. 2, 2021) is another in a growing list of successful mandamus challenges seeking to stream cases out of Waco. This opinion may be the one to watch, though, as it provides one of the broadest rationales. The opinion weighted the convenience of party-related witnesses and prior art witnesses in the proposed transfer forum, regardless of whether the witness was shown as unwilling to testify in Texas. The opinion also discounted Waco's ability to set an earlier trial date. A tabular point-counterpoint summary of the findings is included below, followed by a list of the notable mandamus challenges seeking transfer out of Waco.

Transfer Analysis

Factor District Court Federal Circuit
The Relative Ease of Access to Sources of Proof

Factor weighs slightly in favor of transfer because bulk of documents/sources of proof are in California. But there was no showing with specificity of the evidence that could not be obtained in the alternate forum. Also, "the Court believes that the factor itself is at odds with the realities of modern patent litigation . . .

relevant documents are typically located on a server" accessible anywhere.
Factor was not specifically addressed by mandamus opinion.
The Availability of Compulsory Process to Secure the Attendance of Witnesses Factor weighs against transfer Minimal weight is given to prior art witnesses in California because those "witnesses are generally unlikely to testify at trial." Also, with one exception, Hulu did not show that California-based third party witnesses were unwilling to travel to Waco to testify. Factor favors transfer. The "vast majority of witnesses to be analyzed under this factor would be subject to the compulsory process of the Central District of California." District court overlooked multiple third party witnesses located in California. Also, it was improper to discount location of prior art witnesses here, where the identified prior art "was specifically mentioned in the asserted patents themselves, heightening their potential relevance." Also, it was improper to require a showing that witnesses are unwilling to travel to Texas to testify.
The Cost of Attendance for Willing Witnesses This, the most important factor weighs against transfer. Hulu's California witnesses are given less weight
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