Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in In re Google LLC, 2023-101 (Feb. 1, 2023), granting Google’s petition for a writ of mandamus and directing the transfer of the underlying case.
Jawbone Innovations, LLC filed suit for patent infringement against Google in the Western District of Texas. Google moved under 28 U.S.C. § 1404(a) to transfer the suit to the Northern District of California. The district court denied the motion. The district court acknowledged that the Northern District had a comparative advantage in being able to compel witnesses and in being more convenient for willing witnesses; determined court congestion and judicial economy weighed against transfer; and determined the remaining factors were neutral. On balance, the district court concluded Google had failed to demonstrate that the Northern District was clearly more convenient. Google petitioned for a writ of mandamus directing transfer of the case.
The Federal Circuit granted the petition. Applying Fifth Circuit law, the Court held the district court abused its discretion in finding judicial economy weighed against transfer because a co-pending case against Apple was also subject to a motion to transfer to the Northern District and another case against Amazon had already been transferred there. The Court held the “court congestion” factor should have been treated as neutral because there was no need for a quick resolution given Jawbone’s lack of product competition in the marketplace. The Court held the district court should have weighed the “cost of attendance for willing witnesses” factor heavily in favor of transfer. The Court further held the district court erred in assessing the “local interest” factor. Specifically, the patented and accused technologies were developed in California while Jawbone’s Waco office was established just one month prior to the filing of suit and Jawbone conducts no activities from Texas that relate to the accused technology. The Court also held the district court should have found that the “relative ease of access to proof” factor weighs in favor of transfer as the only physical prototypes of the accused products, as well as relevant inventors, prosecuting attorneys, former Google employees, and third-party companies, are in California. On balance, the Court concluded that, with four of the factors favoring transfer, four factors neutral, and no factors weighing against transfer, the district court’s decision to deny Google’s motion to transfer was a clear abuse of discretion.