More Mandamus Maneuvering at the CAFC in Latest Venue Transfer Win for Apple

“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.

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2 comments so far.

  • [Avatar for Alan]
    Alan
    May 27, 2022 02:40 pm

    The private factors recited by the Court (they always list these) are:

    (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious, and inexpensive.

    Anyone who has litigated in either WD or ED Texas and ND Cal knows it is far more expensive to litigate in ND Cal, and good luck making it to trial within a couple of years. Does anyone track this information (as applied to certain big tech/FAANG defendants)? In ND Cal the judges will go right along with a bleed the plaintiff dry defense. That is unethical, but they turn a blind eye to abusive and meritless motions that cause delays and increase plaintiff attorney time and costs. Look at a docket report involving Apple or Google in ND Cal and compare the same to WD or ED Texas.

    It seems ludicrous that venue transfers are made based on location of a handful of witnesses, who’s collective travel costs are 10X+ less than the increased attorney costs in ND Cal. I haven’t seen any plaintiff argue this, but it might be due to missing/unavailable data. Also, in a recent venue transfer order the Fed. Circuit gave weight to the location of prior art defense witnesses in the district – witnesses who may never be called. That is going to motivate every big tech defendant to identify prior art witnesses within ND Cal.

  • [Avatar for Model 101]
    Model 101
    May 27, 2022 02:03 pm

    Completely crooked.

    Judge Albright is honest.

    California is an insane asylum.

    Beware the rotten Apple.

    They will tell every like in the book.

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