Federal Circuit Grants Google Mandamus Petition, Directs Transfer of Patent Case to Northern District of California

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued an order Tuesday in In re Google LLC, granting a petition for a writ of mandamus and directing the U.S. District Court for the Western District of Texas (WDTX) to transfer a patent infringement case to the U.S. District Court for the Northern District of California (NDCA). The CAFC concluded that “the decision to deny transfer here was patently erroneous.”

The University of Southern California (USC) filed a lawsuit against Google LLC in WDTX, alleging infringement of U.S. Patent Nos. 8,206,929 and 8,264,504 based on certain functionality of Google Earth, Google Maps, and Google Street View. Google, headquartered in NDCA, moved to transfer the case under 28 U.S.C. Section 1404(a), arguing that the named inventor, most witnesses relevant to the accused functionality, and the physical and electronic evidence were located in or near NDCA and that WDTX had no meaningful connection to the case. The district court found that the willing witness factor slightly favored transfer, treated the remaining factors as neutral, and denied the motion.

Fifth Circuit law governed the CAFC’s review, where a transfer motion should be granted when the movant shows that the transferee venue “is clearly more convenient,” according to In re Volkswagen of America, Inc. Mandamus relief is appropriate when a district court’s denial of transfer amounts to a clear abuse of discretion and produces a patently erroneous result.

The CAFC found at least two problems with the district court’s conclusion that the sources of proof factor favored neither forum. The only specific sources of proof the district court discussed, prior art software maintained on a CD kept in NDCA, were located in NDCA, and the district court erred in giving that CD no weight on the view that the software could be loaded onto a computer and analyzed outside NDCA. The district court had also treated the location of potential employee witnesses as a proxy for the location of sources of proof. It had reasonably explained that the willing witness factor carried some weight toward transfer since key technical employee witnesses were in or closer to NDCA, while primarily sales and marketing employees were in WDTX. By the district court’s logic, the CAFC reasoned, the sources of proof factor should also have carried at least some weight toward transfer.

The CAFC also found that the district court incorrectly treated the local interest factor as neutral. Uncontroverted evidence indicated that Google designed, developed, and implemented the accused functionality in NDCA and not at all in WDTX, giving NDCA a significant interest in the litigation. USC’s willful infringement allegations also appeared to center on events in NDCA and on potential witnesses to those events who remain there. USC argued that it filed in WDTX since Google maintains a significant presence there connected to the accused products. The only local connection found by the district court was quality assurance testing that Google performed on one accused product in WDTX. That testing appeared undisputed to have no connection to the accused functionality, while general testing of the accused products occurred in NDCA. The CAFC stated that this testing provides WDTX a local interest, but one not comparable to that of NDCA.

The district court weighed the compulsory process factor as neutral because multiple witnesses were subject to the subpoena power of WDTX and NDCA. The CAFC observed that this analysis did not account for the apparently undisputed fact that seven potential non-party witnesses are subject to compulsory process in NDCA, while only five are in WDTX. One NDCA witness is the inventor, whose testimony may be critical to the events underlying the litigation, and two others are former Google employees whom USC indicated were connected with the inventor’s work. USC, by contrast, pointed to former Google employees with knowledge of the accused products generally rather than the accused features.

Even without disturbing the district court’s conclusion on the compulsory process factor, the CAFC found the denial of transfer patently erroneous. The CAFC stated that the case is about “products designed and developed in Northern California based on patents invented by a resident of Northern California.” Since the willing witness, sources of proof, and local interest factors favored transfer and no factor disfavored it, the CAFC cited In re Toyota Motor Corp., in which mandamus was granted to compel transfer where “nothing favors the transferor forum, whereas several factors favor the transferee forum.”

The CAFC granted the petition, vacated the order denying transfer, and directed the district court to grant Google’s motion and transfer the case to the NDCA under 28 U.S.C. Section 1404(a).

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