Discretionary Transfer out of Waco

SynKloud Technologies, LLC v. Adobe, Inc. (Supreme Court 2021)

This petition for writ of certiorari fits nicely into my Civil Procedure teaching calendar because we are now arriving at the topic of discretionary transfer under 28 U.S.C. § 1404.

SynKloud sued Adobe for patent infringement in Waco (W.D. Tex.).  Adobe requested a transfer of venue to its home venue of N.D. Cal., but Judge Albright denied that motion.  The Federal Circuit granted mandamus and ordered the case transferred.  The court wrote:

In short, retaining this case in the Western District of Texas is not convenient for the parties and witnesses. It is not in the interest of justice or proper administration. And the district court’s contrary determination amounted to a clear abuse of discretion. We therefore grant Adobe’s petition for a writ of mandamus to direct transfer.

Slip Op. In the process of its decision, the Federal Circuit effectively rejected all of the lower court’s factual findings regarding convenience and justice.  The petition to the Supreme Court focuses on extraordinary error standard of review of the discretionary transfer denial on mandamus and argues that the appellate panel went to the other extreme of reweighing the evidence “to choose its preferred interpretation.” Rather, the patentee argues that mandamus should have only been granted if the lower court’s findings failed rational basis review.

Question presented:

1. Whether the Federal Circuit wrongly overruled a district court judge’s discretionary 1404(a) transfer decision when rational basis exists for all of the transfer factors and the “extraordinary error” standard was not met when multiple factors favored plaintiff’s chosen venue including the completion of third-party discovery in the current forum, the court congestion factor and the only evidence supporting transfer was set forth in self-serving declarations from defendant.

SynKloud Petition for Certiorari. The petition presents two additional questions:

2. Whether the equities lie considerably against granting mandamus, United States v. Dern, 289 U.S. 352 (1933), Zabel v. Tabb, 430 F.2d 199 (5th Cir. 1970) and In re Telular Corp., 319 F. App’x 909 (Fed. Cir. 2009), when defendant operates in, hires employees and transacts business in transferor forum; and in contrast (i) plaintiff is not subject to personal jurisdiction or venue in the transferee forum, (ii) a declaratory judgment action of patent non-infringement could not have been brought against plaintiff in the transferee forum, and (iii) a small business such as plaintiff would be forced to incur significant delays and significantly greater costs and expenses in the transferee forum.

3. Whether the district court’s lack of explanation requires the Federal Circuit to remand the case back for an explanation instead of drastically ruling that there was a clear abuse of discretion leading to a patently erroneous result, see In re Archer Directional Drilling Servs., L.L.C., 630 F. App’x 327 (5th Cir. 2016) (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 310-11 (5th Cir. 2008)).

Id.  As the Supreme Court petition proceeds, the N.D. Cal. case is also moving forward. In one of the questions SynKloud notes the personal jurisdiction problem which was not addressed by the Federal Circuit mandamus judgment.  When the case is transferred, SynKloud remains the plaintiff and thus cannot directly challenge personal jurisdiction — other than by simply dismissing its case and forfeiting its patent rights.

Folks who read this petition will recognize that it was not drafted by traditional Supreme Court council.  I expect that its style may reduce its odds of being granted certiorari.  However, it is also setting up a potential follow-on petition in Uniloc v. Apple that will be coming soon.

19 thoughts on “Discretionary Transfer out of Waco

  1. 7

    That’s interesting. I’d be much obliged if you could share the interview link.

    Coincidentally, a FWD just issued in IPR2019-01655 (filed by Unified, not Adobe) yesterday finding all challenged claims of U.S.P. 9,098,526 unpatentable.

  2. 6

    “In the process of its decision, the Federal Circuit effectively rejected all of the lower court’s factual findings”

    . . . and isn’t this a big surprise.

  3. 5

    Let’s be frank. The CAFC is so off the rails that a local federal court probably can justify not following CAFC precedent based on them figuring that this was all transitory and that the Constitution was more important than what a bunch of Silicon Valley selected judges who are anti-patent, judicial activists, and mainly science illiterate or ancient beyond measure.

  4. 4

    The CAFC is not going to allow a situation to (further) develop in west Texas that was just cleaned up in east Texas. While the Supreme Court does apparently enjoy knuckling the CAFC, doubtfully so in this non-codified, but certainly extant role as quasi-supervisor of district court patent procedure. Albright is a powerful man, but there are powers greater than he, and they will find a way.

  5. 3

    A less likely cert grant would be hard to find. First level mandamus appellate intervention is rare enough, this is asking for second level intervention!

    1. 3.1

      P.S. how consistent with factual assertions of being in W.D.TX is the Petition’s admission that “petitioner SynKloud Technologies, LLC states that its parent company is IdeaHub Inc., which owns 100% of its stock” and the long list of their indicated related patent cases?

      1. 3.1.1

        Didn’t you see where it said that SynKloud is a “small business”? It just happens to be owned by a South Korean company that “oversees multiple worldwide licensing platforms”, but that doesn’t seem too unusual.


  6. 2

    Judge Albright doesn’t follow the Federal Circuit’s precedential opinions on Section 101 or 28 USC 1404. He is the clear outlier among district court judges. It doesn’t matter if he thinks the Fed Cir or Supreme Court is “wrong” as he is obliged to follow precedent. He bends over backwards, often with absurd stretch arguments, to avoid precedent.


          Sorry you missed the joke [and the movie], but as a patent litigator it now seems likely you will be spending more time in West Texas, and learn some of its famous historical lore.

  7. 1

    Folks who read this petition will recognize that it was not drafted by traditional Supreme Court council. I expect that its style may reduce its odds of being granted certiorari.

    Not just the style, but the substance, I think. SynKloud’s petition treats Supreme Court review as a second appeal. It complains about the result in this case, not any broader problem. “Fact-bound error correction” is a common phrase in briefs in opposition, and Supreme Court Rule 10 says “A petition for a writ of certiorari is rarely granted when the asserted error consists of erroneous factual findings or the misapplication of a properly stated rule of law.”

    1. 1.2

      I think another takeaway is they are just really desperate not to be in NDCal and/or to stay in WDTX. So they have nothing to lose in filing a petition even if the odds of a grant here are less than winning Powerball.

      Also, I appreciated the fawning tribute to Judge Albright—and even his clerks—in the last paragraph of the Preliminary Statement. I reckon that SynKloud is hoping to butter him up a little (on the assumption he and/or his clerks set eyes on the petition) for when they bring future cases in WDTX.

      1. 1.2.1

        Re “his clerks:” He said in a interview that he has been able to get 5 magistrates [not just clerks] to handle all the civil suits now drawn to his Waco West Texas docket.

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