In a February 1, 2023 precedential opinion in In re: Google LLC (available here), the Federal Circuit vacated an order from the Western District of Texas (“Western District”) denying Google LLC’s (“Google”) motion to transfer a patent infringement lawsuit to the Northern District of California (“Northern District”) and directed that the case be transferred.

 

Jawbone Innovations, LLC (“Jawbone”) sued Google for patent infringement in the Western District, four months after being assigned ownership of the asserted patents and seven months after being incorporated in Texas. While Jawbone rents space in Waco to store documents relating to the patents, and conducts some activities, no Jawbone personnel work in that or any other location in the Western District.

 

After being sued for patent infringement, Google moved to transfer to the Northern District, arguing that relevant technical aspects of the accused products were researched, designed, and developed in the Northern District.  Further, the technology underlying the patents asserted by Jawbone was developed and prosecuted in Northern California.  Still further, Google’s key personnel and four of the six named inventors were primarily located in the Northern District.  Finally, no witnesses or sources of proof were located in the Western District.

 

Nonetheless, the district court denied the motion.  Although the court acknowledged that the Northern District was more convenient for willing witnesses and a competitive advantage in being able to compel unwilling witnesses, it found that the court congestion factor and judicial economy considerations weighed against transfer.  Other factors favored neither forum.  Thus, the court concluded that Google had failed to demonstrate that the Northern District was clearly more convenient.

 

On appeal, the Federal Circuit found that the district court clearly abused its discretion in denying Google’s motion to transfer.  In analyzing the four private and four public factors after the “clear errors are correct,” the Federal Circuit found that factors identified by the district court as weighing against transfer were, at best for Jawbone, neutral; the factor that the district court found weighed only slightly in favor of transfer actually weighed heavily in favor of transfer; two neutral factors identified by the district court actually favored transfer; and the remaining factors either favored transfer or were neutral.

 

For example, the district court, in considering average time to trial, held that the “administrative difficulties flowing from court congestion” factor weighed slightly against transfer.  However, the Federal Circuit found that it was a clear abuse of discretion to accord this factor any weight.  Jawbone was not engaged in product competition and is not threatened in a way that, in other patent cases, might add urgency to case resolution.  “Nor does the record reveal any other basis on which to accord significance to whatever greater speed the district court speculates it could reach trial as compared to Northern California.”  The Federal Circuit found that this factor was neutral.

 

With regard to attendance of witnesses at trial, while the district court found that it weighed only slightly in favor of transfer, the Federal Circuit found that this was clearly erroneous as it weighs heavily in favor of transfer.  There were at least eleven Google employees in the Northern District and none in the Western District (as to the accused features).  Further, despite Jawbone identifying three Google employees in the Western District who might have knowledge, given the number of Google employees in the Northern District, “the district court should have weighed this factor firmly (not slightly) in favor of transfer.”

 

Further, the Federal Circuit found that the district court abused its discretion in giving weight to Jawbone’s office and corporate residence in Waco.  “Jawbone has no meaningful presence in the Western District of Texas that should be given significant, let alone, comparable weight to the facts tying the litigation to the California forum, where both the patented and accused technology were developed.”  Thus, it was clear error not to find that the local interest factor favors transfer.

 

Still further, the relative ease of access to sources of proof favored transfer, despite the district court finding that factor neutral.  Physical prototypes were in the Northern District, as were several of the inventors, as well as the prosecuting attorneys, relevant former Google employees, and third-parties that provide certain accused functionality.  “The Northern District would clearly provide easier access to sources of proof, including documents, and be more convenient for potential non-party witnesses.”

 

Finally, the Federal Circuit agreed with the district court that the “availability of compulsory process to secure the attendance of witnesses” favors transfer, as the Northern District could compel multiple potential witnesses to appear at trial while no likely non-party witnesses had been identified whom the Western District has authority to compel.  Similarly, the Federal Circuit agreed with the district court and both parties that the remaining factors were neutral.

 

Thus, four factors favored transfer and four factors were neutral, with no factors weighing against transfer.  As recognized by the Federal Circuit, “[t]he center of gravity of this action. . . is clearly in the Northern District of California, not in the Western District of Texas.”  Accordingly, finding that the district court clearly erred and its denial of Google’s motion was a clear abuse of discretion, the Federal Circuit vacated the order denying the motion to transfer and directed the district court to grant the motion.