Federal Circuit grants Google mandamus petition to transfer patent case out of Eastern Texas

By Gene Quinn
February 26, 2017

Next exit CaliforniaOn 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 See In re: Google Inc. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh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.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 20 Comments comments.

  1. Caesar Salazar February 26, 2017 3:50 pm

    “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.”

    Gene, I’m struggling to see how you can reconcile these two statements. Would you have ordered the transfer at the district level AND ruled differently to the current circuit ruling? That would mean that you have allowed the transfer but opposed it at the circuit level? Is that what you mean to say?

  2. Caesar Salazar February 26, 2017 3:52 pm

    Or do you mean to say that as a district judge, you would have allowed the transfer, and at the circuit level you would have deferred to the district judge’s (yourself) decision unless the high bar of mandamus was satisfied?

  3. Caesar Salazar February 26, 2017 4:00 pm

    Now as to the merits of the case, it seems like the one Eolas employee vs. hundreds of google employees was the decisive factor here and it seems reasonable to characterize it as satisfying the high bar of mandamus. The co-pending litigation is arguable, but the employee issue is really big. They are factors after all, and they can each have different inherent weights. Thus it’s not inherently unreasonable for a court to find that the employee factor greatly outweighed the co-pending factor even if the co-pending factor were given its greatest weight imaginable.

  4. Dana Blankenhorn February 26, 2017 7:11 pm

    Y’all are dancing around the issue. Google got a case thrown out of the Patent Troll court and put into a court that is far more friendly to its interests, in part because it in theory gets a lot of tech cases.

    The analysis belongs lower down, after you talk about all the mandamus petitions to follow, because that discussion helps us understand their likely fate.

  5. angry dude February 26, 2017 11:19 pm


    you are a troll, dude

  6. Caesar Salazar February 26, 2017 11:26 pm

    angry dude,

    I’m uncertain as to why you are making baseless accusations. I’m trying to clarify a statement Gene made in the article. I also added my opinion that the outcome was not unreasonable on the legal grounds that it was decided.

    Statements like “you are a troll, dude” only serve to derail an important conversation.

    Gene, I implore you to censure angry dude for baseless accusations that I’m a troll.

  7. angry dude February 26, 2017 11:52 pm

    Caesar Salazar @5

    accusations are not baseless

    unlike you I put my money where my mouth is – I hold US patent

    I can smell anti-patent and anti-inventor rhetoric from miles away

    your arguments are every big infringer’s dream

    So if I sue any corp I have to do it in their home court because they have more employees ?
    Did I hear it right ???

  8. Caesar Salazar February 26, 2017 11:57 pm

    angry dude,

    “So if I sue any corp I have to do it in their home court because they have more employees ?
    Did I hear it right ???”

    That’s not what I said. In fact I didn’t really state my opinion on the issue. Rather I said it was not unreasonable for the court to rule as it did. It’s like saying “I may not have acted as he/she did, but I understand why he/she did it and it seemed reasonable for him/her to act that way.” Thus in the same vein it was not unreasonable for the court, in this particular case given the stated circumstances, to change venue for convenience. Please try to read critically what others write and offer informed responses.

  9. Nick Valentine February 27, 2017 12:02 am

    Ceasar, the location of employees should only matter in the event the case goes to trial. And if that happens, the Defendant will only need to send a few from California to Texas, whereas plaintiff will have to send the one employee from Texas to California. Co-pending litigation, on the other hand, is immediately wasteful for the Plaintiff and the courts. There’s nothing worse than having contradictory ruling on the same patent at the same time. This situation seems like a toss up that the judge has discretion to decide either way.

  10. angry dude February 27, 2017 12:29 am

    Caesar Salazar @7

    ok, dude,

    so if i meet you in the dark alley it will not be unreasonable for me to take your wallet, under the circumstances that i’m bigger and stronger than you are…

    that’s your argument ?

  11. Caesar Salazar February 27, 2017 12:37 am

    angry dude,

    That analogy isn’t correct. A more apt analogy would be that some guy tried to take your wallet and you shot and killed him. Depending on the particular circumstances, your actions could be judged as reasonable. Would another person have shot and killed the guy? Maybe. Maybe not. But the reasonableness of your particular decision is not called into question when the circumstances are analyzed. Thus in the same vein the court’s judgment in this case would not be unreasonable.

  12. Caesar Salazar February 27, 2017 12:37 am

    I apologize, didn’t mean to bold that entire section. Only the italicized part was meant to be highlighted.

  13. Caesar Salazar February 27, 2017 1:09 am

    angry dude,

    An even more apt analogy would be one where you and your friends wanted to play basketball. Your friends are at the basketball court at your school, but you insist that the game be played at the court near your house. Just doesn’t make sense to have ALL of you friends come to you now does it?

  14. Eric Berend February 27, 2017 7:44 am

    @ 1, 2, 3, 5, 7, 9, 10, 11; ‘Caesar Salazar’:

    Hmmm…. so many posts. Why are you so dedicated to the interests of the larger entity, here?

    If there are motions to bring that can result in a relief as requested by a movant party, which are correct and within the powers of their application, that is one thing; however, this is not what has been ruled by this decision. No: it is clear that this is ultra vires to the ambit of a writ of mandamas.

    I would hope that before you going running around spouting off on such haphazard and lurid descriptions of your erroneous legal interpretations, that you would first recognize what makes an issue moot, or application of a legal writ or precedent incorrect; if I can understand this principle, having not even stepped a foot inside a school of law; and, this being well known as a blog read by discerning and well educated legal minds; then, I see no excuse for your loquacious nonsense.

  15. Caesar Salazar February 27, 2017 7:58 am


    You say: “I would hope that before you going running around spouting off on such haphazard and lurid descriptions of your erroneous legal interpretations, that you would first recognize what makes an issue moot, or application of a legal writ or precedent incorrect”

    There is no mention of mootness in the opinion. So I’m not quite certain why you are in favor of that view. As to whether application is incorrect, the court stated that mandamus is only used in extraordinary circumstances; and the court did in fact find an extraordinary circumstance in their view once all relevant factors were analyzed. Thus how can it be “ultra vires” in your view? You stated that but didn’t articulate the reason why. You just said it was “clear.” Care to elaborate?

  16. Tim February 27, 2017 8:03 am

    After Vringo won on infringement against Google, 14-0 with a 12-man “unanimous jury”, just to have it “tossed” by unscrupulous judges (2-3) at the US Appeals Ct, and go to an “unbanc”, to later take it to the US Supreme Ct, and this court not even bother to see the case. WHY BOTHER? Vringo was crucified after proving Google, AOL, Gannett and Target had infringed. Vringo is now File Holdings, and shareholders lost all! Company has tried it’s best to re-invent itself, and dropped to $2.07 a share on Friday. Even after a huge reverse split that put it back around $5.00 a share. Criminal on the courts of this country! Google own’s them!

  17. Paul F. Morgan February 27, 2017 10:32 am

    This is not the first time the Fed. Cir. has reversed a D.C. venue transfer motion decision by “non convenience” mandamus actions from E.D.TX on undisputed facts. It is just that they have not granted any more such mandamus motions recently, because the E.D.TX judges were granting more venue transfer motions themselves after earlier mandamus orders. BTW, the first of those, the TX Volkswagen case, was by their own Circuit Court, not the Fed. Cir.
    Also, the pending Sup. Ct. case on the patent venue statute [also via a mandamus action] may render “non convenience” transfer cases like this moot, but increase other venue disputes.

  18. CW5 February 27, 2017 1:17 pm

    I’m wondering whether the Supreme Court has ever issued a writ of mandamus to the Federal Circuit. If I were representing Eolas, I would be researching that right now.

  19. Eric Berend February 28, 2017 7:05 am

    @ 15: ‘Caesar Salar’:

    No, I would not care to waste my time that way. Your use of the derogatory and insulting term “patent maximalist” – a moniker straight out of the “Big Infringer” ‘s handbook of U.S. patent destruction – in another article on this blog; makes it clear: that you engage in the issues presented in this forum, in bad faith; therefore, your obfuscation does not warrant nor deserve a response.

    You asked for greater explication of what I meant by “clear”. There, you have it. That is the last request I will ever grant to you.

    I refuse to play ‘patty-cakes’ with the enemy. Get this illegitimate imp outta here. The sooner, the better.

  20. Caesar Salazar February 28, 2017 1:30 pm


    I simply requested that you provide a reason for your assertion. This is not an unreasonable thing to do, as many commentors (including you), have done for others making claims. The foundation of legal reasoning is just that, reasons. Assertions can be thrown around as easily as insults, and what I see from you is insults instead of engagement. I would be remiss if I didn’t note that this style of argumentation is frowned upon in legal circles as well as intellectual circles in general. The “I’m above civil engagement because I may disagree with my perceived notion of my esteemed comrade” only stifles discussion. I implore you to engage with your humanity and respond politely.