In re Google LLC, No. 2023-101 (February 1, 2023) (Lourie, Taranto, Stark*)

In another case from the United States District Court for the Western District of Texas, the panel found that the district court had erred in its evaluation of the Volkswagen factors and so abused its discretion when it denied Google’s motion to transfer the case to the United States District Court for the Northern District of California.

Jawbone, an NPE, filed an infringement suit against Google in the Western District of Texas in September of 2021, only seven months after being incorporated in Texas, four months after gaining ownership of the asserted patents, and just one month after opening an office in Waco, Texas. Moreover, no Jawbone personnel worked at the office in Waco or any other location in the Western District. Google moved under 28 U.S.C. § 1404(a) to transfer the action to the Northern District of California. Google argued that the relevant technical features of the accused products at the center of Jawbone’s infringement allegations were researched, designed, and developed at Google’s headquarters within the Northern District, the technology underlying the asserted patents was likewise developed and prosecuted in Northern California by a predecessor company, and the majority of witnesses and sources of proof—including prototypes of the accused products, Google’s key technical and financial personnel and four of the six named inventors of the asserted patents—were located in the Northern District, while no witnesses or sources of proof were located in the Western District.

The district court nevertheless denied the motion. Although acknowledging that the Northern District had an advantage in being able to compel unwilling witnesses and in being more convenient for more willing witnesses, the court also determined that the court congestion factor and judicial economy considerations weighed against transfer and the remaining factors were neutral. Google then petitioned for a writ of mandamus.

In granting Google’s petition, the panel re-evaluated the Volkswagen factors and found that, of the eight, two of the factors were neutral rather than weighing against transfer, one weighed heavily in favor of transfer rather than only slightly, and two favored transfer instead of being neutral.

First, in an opinion written by Judge Stark, the panel held that the district court erroneously concluded that the factor considering “all other practical problems that make trial of a case easy, expeditious, and inexpensive” weighed against transfer. The district court had relied on a co-pending case against Apple in the Western District in evaluating this factor, but the panel noted that not only had Apple moved to transfer that case to the Northern District of California, but there was also a case involving the same patents (Jawbone v. Amazon) that had been transferred from the Eastern District of Texas to the Northern District of California. The panel concluded that any efficiencies that might arise from combining cases asserting the same patents against different defendants with different accused products were as likely to appear in the Northern District of California as the Western District of Texas, and this factor therefore did not weigh against transfer but, rather, was neutral. The panel also held that the district court abused its discretion in holding that the factor considering “administrative difficulties flowing from court congestion” weighed slightly against transfer, and this factor should be accorded no weight in cases like this where the patent owner is not engaged in product competition in the marketplace, and so is not threatened in the market in a way that would add any urgency to resolution of the dispute.

Turning to the other factors, the panel held that the district court erred in holding the “willing witness” factor weighed only slightly in favor of transfer. The panel observed that the Northern District of California was more convenient for most, if not all, of Google’s potential witnesses as well as several third-party witnesses. The panel found that, based on these facts, the district court should have held that this factor weight firmly in favor of transfer, not just slightly. The panel also found that Jawbone had no meaningful presence in the Western District that should have been accorded significant weight. Given that both the patented technology and the accused products were developed in the Northern District of California, the panel held that it was clear error not to find that the “local interest” factor favored transfer. The panel further held that it was clearly erroneous for the district court to find the “relative ease of access to sources of proof” factor was neutral given that four of the six inventors of the asserted patents lived in the Northern District, as did the prosecuting attorneys, former Google employees and potential third-party witnesses, and the only physical prototypes of the accused products were located in the Northern District. The panel held that this factor also favored transfer.

Taking all of these together, the panel found that four factors favored transfer and four factors were neutral. The panel therefore concluded that the district court had abused its discretion in denying Google’s motion to transfer.