On Thursday, February 23, 2017, the United States Court of Appeals for the Federal Circuit granted a mandamus petition filed by Google and ordered a Texas federal court to transfer a patent infringement case to a federal court that covers Silicon Valley as requested by Google. See In re: Google Inc. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh transfer factors de novo.
This petition for writ of mandamus arose out of a patent infringement suit brought by Eolas Technologies, Inc. against Google and various other defendants involving U.S. Patent No. 9,195,507. On the day this lawsuit was filed against Google, Eolas also filed two related suits in the same district, accusing various Walmart and Amazon entities of infringement. The Walmart and Amazon entities, like Google, sought transfer to the Northern District of California under 28 U.S.C. § 1404(a) for convenience. Weighing the relevant transfer factors, the district court concluded that the Northern District of California was not clearly a more convenient forum than the Eastern District of Texas.
According to Chief Judge Prost, the Eastern District of Texas committed clear error by denying Google’s motion for several reasons.
First, the district court’s determination was largely based on judicial economy with all three lawsuits being filed in the Eastern District of Texas. This rubbed the Federal Circuit the wrong way because “the mere co-pendency of related suits in a particular district would automatically tip the balance in non-movant’s favor regardless of the existence of co-pending transfer motions and their underlying merits.” The Federal Circuit also did not buy the district court’s statement about institutional knowledge supporting a denial of transfer since the original judge hearing previous cases had retired. Although not directly stated, it seems relatively clear that the Federal Circuit just felt that the Northern District of California could have been as appropriate a choice as the Eastern District of Texas.
Second, the district court identified the location of sources of proof as a factor that weighed in favor of Google by a “slight” margin. Because a significant number of Google employees reside in the Northern District of California and only a single employee of Eolas resides in the Eastern District of Texas, Chief Judge Prost disagreed that this factor favored Google only slightly. She explained, “the evidence overwhelmingly supports a conclusion that this factor weights strongly in Google’s favor.”
Ultimately, the Federal Circuit ruled, “it was a clear abuse of discretion for the district court to conclude that the Northern District of California is not clearly the more convenient forum.”
Judge Linn dissented and not surprisingly I agree with his dissent. Judge Linn essentially points out that the majority paid little more than lip service to the extraordinarily high standard that faces a mandamus petitioner. Judge Linn wrote:
As even the majority has recognized, “the mandamus standard does not give us license to substitute our own judgment for that of a district court. To the contrary, we must accord it substantial deference under this exacting standard.” Majority opinion at 7. In this case, the majority would give the convenience factors more consideration and would discount potential judicial economy from co- pending litigations. The majority does not dispute, however, that the district court considered all of the relevant factors. At best, the majority believes the district court should have weighed these factors differently. Such reweighing, however, is not the task before the court on mandamus review.
Judge Linn would go on to conclude that in his opinion Google had not shown that the “district court’s ruling was a clear abuse of its considerable discretion or that the ruling produced the patently erroneous result necessary to warrant issuance of a writ of mandamus.” Judge Linn is, of course, correct.
I suspect if I were a district court judge I probably would have ordered a transfer, but our patent judicial system is playing fast and loose with far too many procedural rules any more. The fact that I would have decided this case differently doesn’t change the fact that the mandamus standard is extraordinarily high for a reason. There are times when it should be used, but this is not one of those times. Chief Judge Prost has not shown anything other than a disagreement with the district court and that is simply not a sufficient threshold to warrant a mandamus order.
There can be little serious debate. Whether you like the outcome of this case or not, everyone has to agree that the Federal Circuit has stepped out of its designated lane. This will encourage the filing of hundreds, perhaps many hundreds, of mandamus petitions, and it should. Now that the Federal Circuit has shown a willingness to second guess district court judges and use mandamus powers like this it would be practically malpractice not to ask file a petition for mandamus in ever denied transfer case. Petitions for mandamus should probably be considered whenever a district court makes an unfavorable procedural ruling.
The Federal Circuit goes out of their way to insert themselves in areas where appellate courts ought not to operate and yet they seem to have no problem with more than 50% of their docket now being one-word judgments that simply say “Affirmed.” Between the egregious abuse of Rule 36 (see here, here, here and here) and second guessing district courts with extraordinary writs some very difficult questions must be asked about the Federal Circuit moving forward.