Last week, the U.S. Court of Appeals for the Federal Circuit issued an order in In re Uber, No. 2021-150 (July 8, 2021), granting mandamus relief and ordering the U.S. District Court for the Western District of Texas to transfer a case against Uber Technologies, Inc. to the Northern District of California.
Ikorongo Technology LLC and Ikorongo Texas LLC sued Uber in the Western District of Texas for patent infringement in September 2020. Ikorongo Technology and Ikorongo Texas—which was formed in Texas just prior to the litigation—are run from the same office in North Carolina. Ikorongo Technology assigned Ikorongo Texas exclusive rights to enforce the asserted patents in certain counties in the Western District of Texas, while Ikorongo Technology retained the patent rights in the rest of the country.
Uber brought a motion under 28 U.S.C. § 1404(a) to transfer the case to the Northern District of California. In denying the motion, the district court held that, because of Ikorongo Texas’s limited geographic rights, Uber failed to establish that the action originally could have been brought in the Northern District of California, as required under section 1404(a). As alternative grounds for denial, the district court held that the balancing of traditional public and private factors did not weigh sufficiently in favor of transfer. Although some factors favored transfer, such as the development of the accused technology and the presence of the only identified witnesses in California, the district court determined that other factors, such as related litigation in the Western District of Texas, swung the balance against transfer. Uber sought mandamus review.
On review, the Federal Circuit drew on its recent order in In re Samsung, Nos. 2021-139, 2021-140 (June 30, 2021), and disregarded the fact that Ikorongo Texas’s patent enforcement rights were geographically limited because its presence was “plainly recent, ephemeral, and artificial,” and its creation was “the sort of maneuver in anticipation of litigation that has been routinely rejected.” The Court also rejected the district court’s weighing of the transfer factors, stating that the district court undervalued the development of the accused technology and presence of witnesses in California and overvalued the existence of related litigation in Texas. Applying the same analysis in Uber as it did in Samsung, the Court granted Uber’s mandamus petition and ordered that Uber’s motion to transfer venue be granted.
This blog post was co-authored by Jeffrey Blake and Zachary Krenz