“[W]hen a district court’s denial of a motion to transfer amounts to a clear abuse of discretion under governing legal standards, we have issued mandamus to overturn the denial of transfer.” – CAFC
On Friday, September 24, the United States Court of Appeals for the Federal Circuit (CAFC) granted Juniper Networks, Inc.’s petition for a writ of mandamus directing Judge Alan Albright of the United States District Court for the Western District of Texas to transfer six actions to the United States District Court for the Northern District of California, and holding that denying the motion to transfer constituted a legal error. The Federal Circuit has repeatedly granted such mandamus petitions from the Western District of Texas, or ordered Albright to reconsider denials of motions to transfer, in recent months.
In September 2020, WSOU Investments LLC d/b/a Brazos Licensing and Development (Brazos) filed seven complaints in the Waco Division of the Western District of Texas, alleging Juniper, a Delaware corporation headquartered in Sunnyvale, California, had infringed seven of their patents. Juniper moved to transfer the case to the Northern District of California pursuant to 28 U.S.C. §1404(a).
In its motion, Juniper argued that “whatever ties Brazos ha[d] to [Texas] ha[d] been created for the purpose of its patent litigation activities.” Specifically, Juniper pointed to the fact that Brazos describes itself as a “patent assertion entity” and does not appear to conduct any business from its Waco office besides filing patent lawsuits. Additionally, Juniper noted that both Brazos’s CEO and its president reside in California and therefore would be subject to compulsory process in the Northern District of California. Juniper further asserted that the accused products were primarily designed, developed, marketed, and sold from Juniper’s Sunnyvale headquarters and that Juniper has no identified employees involved in the design, development, testing, marketing, financing, or sales of the accused products who work in Texas. In response, Brazos argued that in addition to the two employees in their Waco office, Brazos also had a small office located in Austin, Texas.
In deciding to deny the motion to transfer, the district court considered four private and four public interest factors. Citing In re Volkswagen, the court explained the private interest factors are (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of non-party witnesses whose attendance may need to be compelled by court order; (3) the relative convenience of the two forums for potential witnesses; and (4) all other practical problems that make the trial of a case easy, expeditious, and inexpensive. Again citing In re Volkswagen, the court articulated the four public interest factors: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having disputes regarding activities occurring principally within a particular district denied in that forum; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or in the application of foreign laws. See In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)(en banc); In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004).
In analyzing the factors, the court determined with respect to the relative ease of access to sources of proof between the transferor and transferee districts that Brazos had not identified any documents located in its Waco office that were entitled to any weight in the transfer decision. As for Juniper’s documents, the court recognized that Juniper represented without contradiction that most of its documents were located at its California headquarters. However, the court noted that Juniper admitted to storing documents in other locations as well, albeit not in Texas. For that reason, the court found the sources-of proof-factor did not weigh either for or against transfer.
Regarding the availability of compulsory process, the court found that neither party had identified any of its proposed witnesses as unwilling witnesses whose appearance would require the issuance of court process. The court noted that the compulsory process factor holds little weight when neither party claims any witness would be willing to testify in holding that this factor presently weighs slightly against transfer.
With respect to the relative convenience of the two forums for potential witnesses, the court recognized that Juniper identified eleven potential party witnesses and for non-party prior-art witnesses, all of whom were in California. Brazos, on the other hand, was only able to locate one witness located in the Western District of Texas. The district court ruled that this factor weighed only slightly against transfer, noting that in its view the convenience of party and prior-art witnesses is entitled to little weight.
Finally, the district court found that the court-congestion factor weighed against transfer because the Waco court would be likely to reach trial quicker than if the case were transferred to California. In view of all the factors, the district court held that Juniper had not established the Northern District of California as the clearly more convenient forum. Accordingly, the motion to transfer was denied. Juniper then petitioned for a writ of mandamus.
Writ of Mandamus
Citing In re Vistaprint, the CAFC recognized that district courts generally enjoy broad discretion in making transfer decisions. See In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed. Cir. 2010). However, citing In re Samsung, the court noted that “when a district court’s denial of a motion to transfer amounts to a clear abuse of discretion under governing legal standards, we have issued mandamus to overturn the denial of transfer.” In re Samsung Elecs. Co., 2 F.4th 1371 (Fed. Cir. 2021).
First, the CAFC recognized, that the most important factor in deciding a motion to transfer is probably the relative cost and convenience for the attendance of witnesses between the two forums. With this in mind, the CAFC held that “the district court clearly erred in not giving sufficient weight to the relative convenience of the transferee forum for the potential witnesses, particularly in light of the striking imbalance in the parties’ respective presentation on this factor.” In its decision, the district court also stated that few party witnesses were likely to testify at trial. However, the CAFC did not find this persuasive, citing a lack of any evidence to support this assumption.
Additionally, the CAFC ruled that the district court erred in applying the local interest factor. The district court acknowledged that the events that formed the basis for Brazos’s infringement claim occurred primarily in the Northern District of California; none occurred in the Western District of Texas. This alone, the CAFC reasoned, is sufficient to give the transferee venue a greater localized interest in the dispute, thereby weighing in favor of transfer.
The district court further erred in its assessment of the availability of sources of proof according to the CAFC. Juniper stated that it held most of its relevant documentary evidence at its Sunnyvale headquarters. The district court found Juniper’s assertion flawed as being vague and speculative. However, the CAFC found this criticism to be unjustified, noting that none of the relevant evidence was in the Western District of Texas. According to the CAFC, when relevant evidence is not located in either the transferee or transferor forum, the location of evidence should not be given any weight at all.
Furthermore, the CAFC found error in the district court finding that the potential need for recourse to compulsory process weighed against transfer. The sole basis for the district court’s conclusion on this factor was the lack of specifically identified witnesses that would require compulsion to appear in court. However, the CAFC held that the district court confused the required burden of showing the transferee venue is clearly more convenient with a showing needed for a conclusion that a particular factor favors transfer.
Lastly, with respect to the district court’s conclusion that the court-congestion factor weighed against transfer based on the average time to trial in the Waco court compared to the Northern District of California, the CAFC disagreed that this was true and took issue with the lack of support provided by the district court for why an appreciable difference exists. Regardless, the CAFC was not persuaded that the relative speed with which a case might be brought to trial has particular significance. Accordingly, the CAFC vacated the district court decision and granted the motion to transfer.
On Monday, the CAFC issued three more orders involving petitions for writ of mandamus from Judge Albright’s court. All three were nonprecedential; two denied mandamus, but Google’s petition to transfer a case brought by Sonos, Inc. to the Northern District of California was granted, as the CAFC said that Albright’s refusal to transfer the case again “constituted a clear abuse of discretion.”