Fresh From the Bench: Latest Federal Circuit Court Case

CASE OF THE WEEK

In re: Google LLC, Appeal No. 2023-101 (Fed. Cir. 2023)

In the Federal Circuit’s only precedential patent opinion this week, the Court granted mandamus reversing yet another decision by Western District of Texas Judge Alan D. Albright refusing to transfer a patent case out of his court, which (like several of Judge Albright’s prior decisions) denied transfer to the U.S. District Court for the Northern District of California. Our write-ups of the Federal Circuit’s recent precedential reviews of Judge Albright’s transfer practices can be found below:

• In re: Samsung Electronics Co., Ltd., et al., Appeal Nos. 2021-139, -140 (Fed. Cir. June 30, 2021)
• In re: Juniper Networks, Inc., Appeal No. 2021-160 (Fed. Cir. Sept. 24, 2021)
• In re: Volkswagen Group of America, Inc. and In re: Hyundai Motor America, Appeal Nos. 2022-108, -109 (Fed. Cir. Mar. 9, 2022)
• Provisur Technologies, Inc. v. Weber, Inc., Appeal Nos. 2021-1942, -1975 (Fed. Cir. Sept. 27, 2022)
• In re: Apple Inc., Appeal No. 2022-162 (Fed. Cir. Nov. 8, 2022)

In this case, plaintiff Jawbone Innovations, LLC had sued Google (among others) shortly after being assigned the patents-in-suit and only seven months after being incorporated in Texas. Jawbone rented facilities in Waco for storage and certain sales activities, but had no personnel in the Western District of Texas and did not practice the asserted patents in the marketplace. By contrast, Google had presented evidence that the accused technology was researched, designed, and developed at its headquarters in the Northern District of California; that the technology underlying the patents was also developed and prosecuted in N.D. Cal.; that witnesses and sources of proof (including all Google personnel who worked on the accused technology and four of the six named inventors on the patents) were primarily located in N.D. Cal.; and that no witnesses or sources of proof were located in the Western District of Texas.

Judge Albright nonetheless denied Google’s motion to transfer under 28 U.S.C. § 1404(a), relying primarily on court congestion and judicial economy considerations. Applying Fifth Circuit law applicable to convenience transfers, the Federal Circuit found that Judge Albright’s decision was clearly erroneous.

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By Jason Wrubleski

Edited by Nika Aldrich and Jason Wrubleski, Schwabe, Williamson & Wyatt