Mandamus Petition Granted Transferring Case From Waco To Northern District Of California

• Published date: 03 November 2021
• Subject Matter: Intellectual Property, Patent
• Law Firm: Winston & Strawn LLP
• Author: Ms Danielle Williams

The Federal Circuit held that it was a clear abuse of discretion for Judge Alan Albright to refuse to transfer the lawsuit between Jenam and Google from the Western District of Texas to the Northern District of California. The Federal Circuit granted Google's mandamus petition directing Judge Albright to transfer the lawsuit. The Federal Circuit's review of Judge Albright's order denying transfer focused on four disputed transfer factors.

Convenience to Witnesses

The most hotly disputed factor was the relative convenience of the forums to the potential witnesses. Judge Albright held that this factor did not support transfer for two reasons: (1) the convenience of non-party witnesses receives more weight than party witnesses; and (2) inconvenience to the patent inventor receives more weight than inconvenience to other non-party witnesses. The Federal Circuit disagreed.

First, the Federal Circuit has repeatedly stated in cases like In re Hulu and In re Samsung that the convenience of party witnesses cannot be disregarded just because they are affiliated with a party. Contrary to Judge Albright's order, the Federal Circuit held that the inconvenience to Google's party witnesses must be considered. Judge Albright held that the inconvenience to each party's witnesses cancels out, because one party will have witnesses who are forced to travel, regardless of the chosen forum. While Google identified multiple party witnesses in the Northern District of California, Jenam identified only one in the Western District of Texas. Judge Albright also assumed that few party witnesses will be called to testify. The Federal Circuit recently rejected this assumption in In re Juniper Networks. Thus, the Federal Circuit decided that Judge Albright should have given more weight favoring transfer under this factor.

Second, the Federal Circuit held that Judge Albright was wrong to lend more weight to the inventor's convenience. Although the inventor, located in Atlanta, is geographically closer to Waco than San Francisco, the main metric considered should be travel time, rather than distance travelled. Travelling from Atlanta to Waco would only take "marginally less" time than travelling to San Francisco. Moreover, relying on In re Genentech, the Federal Circuit noted that it is inappropriate to weigh the convenience of a witness outside either proposed forum when there are several witnesses in the transferee forum, and none in the transferor forum. 566 F.3d 1338, 1345 (Fed. Cir...