“As has become its inclination, the Federal Circuit said that Judge Alan Albright of the Western District of Texas clearly abused his discretion in denying the motion because the public and private interest factors plainly favored transfer.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Apple’s petition for a writ of mandamus asking the court to direct the U.S. District Court for the Western District of Texas to transfer a case brought by BillJCo, LLC to the Northern District of California.
BillJCo owns six patents directed to beacon technology, with Bill Johnson and his son Jason Johnson, who lives in Waco, Texas, named as inventors or co-inventors. The suit was brought against Apple for infringement based on its iBeacon protocol. Apple argued that it “researched, designed, and developed the accused technology from its headquarters within the [Northern District of California]; that evidence and witnesses would likely be in Northern California; and that neither BillJCo nor this litigation had any meaningful connection to Western Texas.” The district court denied Apple’s motion for transfer, disagreeing that the N.D. of CA would be “clearly more convenient.”
As has become its inclination, the Federal Circuit said that Judge Alan Albright of the Western District of Texas clearly abused his discretion in denying the motion because the public and private interest factors plainly favored transfer.
In evaluating the factors, the CAFC found that the district court placed too much weight on the ability to compel Jason Johnson as a witness, since he lives in Waco. First, said the court, Johnson had indicated he would be willing to testify in Waco and thus did not need to be compelled, and secondly, there are “numerous potential witnesses Apple identified in Northern California,” meaning the district court placed too much emphasis on this one witness in Waco.
As to the public interest factors, the court held that none of them “is sufficient to override the striking imbalance in favor of transfer on the private interest factors.”
First, the court erred in weighing BillJCo’s headquarters in Flower Mound, Texas, where the patented invention was developed, in favor of the local interest factor because Flower Mound is in the Eastern District of Texas, not the Western District of Texas. Second, “the court assigned too much weight to Apple’s ‘substantial general presence in this District.’ As our precedent has made clear, an assessment of the local interest factor must focus on whether there are “‘significant connections between a particular venue and the events that gave rise to a suit.’”
Since there was no indication that Apple’s Western Texas offices “had any involvement in the research, design, or development of the accused technology,” giving substantial weight to this presence amounts to a clear abuse of discretion, said the CAFC, adding: “The upshot is that this factor also favors transfer.”
Finally, the court once again shot down Albright’s views about court congestion, explaining that “precedent does not permit giving such speculation about whether a court can reach trial faster more weight than all the remaining factors.”
Panelists at IPWatchdog’s Patent Litigation Masters Program earlier this week discussed some of the reasons for the Federal Circuit’s focus on using mandamus to compel transfer of cases, specifically from the Western District of Texas to the Northern District of California, with some speculating it is at least partly rooted in anti-patent sentiment and the CAFC judges’ view that Albright’s court is hearing too many patent cases.