In re Google LLC (Fed. Cir. 2023)
This is another mandamus action win by Google on convenience grounds. The Federal Circuit has ordered the case moved out of the Western District of Texas (Waco) to the Northern District of California.
Jawbone Innovations, LLC sued Google for patent infringement back in 2021 in W.D.Tex. (Waco). Jawbone is a Texas company and has a physical base in Waco. But, as the court noted, the company was formed only a few months before the lawsuit was filed. Some of you may own Jawbone headphone/speaker products. The operating company closed in 2017, and Jawbone Innovations is a resulting patent-holding company.
As usual, Google moved to transfer its case out of the W.D. Tex. Judge Albright reviewed and rejected the transfer motion and Google immediately petitioned for mandamus. The Federal Circuit has now granted mandamus and ordered the case transferred.
Although the appellate court stated that it provided deference to Judge Albright’s decision, it ultimately rejected his analysis. I note a couple of the issues below:
- Time to Trial: The appellate panel indicated that the likelihood of a speedy resolution in one jurisdiction versus another should not be given any regard in the convenience analysis unless the parties particularly justify why a speedy trial is important. Here, the court held that Jawbone clearly has no urgency to resolve the case since it is a non-practicing entity. As such, the fact that W.D.Tex. may resolve the case faster than N.D.Cal. should be given no consideration. This result appears problematic to me in general. Although there is no Constitutional right to a speedy trial in patent cases,
- P is a (new) Texas Corp: The district court gave substantial weight to the fact that Jawbone is a Texas company and has an office in Waco near the Courthouse. The Federal Circuit rejected that analysis — finding instead that Jawbone has no meaningful presence in the district. Further, the claimed presence appears a transparent effort to manufacture facts favorable for this sort of venue challenge.
In addition to Google’s accused infringing design work being done in N.D.Cal., an important factor in this case is that the underlying Jawbone inventions were also created in N.D.Cal.; and that is the location of the former Jawbone decision-makers and prosecuting attorneys.
As I’ve written before, I expect Google’s true reason for asking for transfer is not primarily based upon any of the convenience factors. Rather Google is concerned that it is more likely to receive a harsh outcome in Texas from Judge Albright than it would before one of the N.D. Cal. Judges in Silicon Valley.
NPE also have an interest in a speedy trial. If they win, the sooner the trial is over the sooner they can pay their bills and the less interest they pay on their outstanding loans.
I would imagine that a slower trial also tends to translate into a more expensive trial, and makes it more difficult to finance the law suite, whether they lose or win.
The vast majority of the many E.D.TX Waco PAE suits are being settled well before any trial, so clearly actually getting a trial is not the primary objective of many PAE’s. However, earlier discovery and other pre-trial activities which raise defense costs earlier are inducements to earlier settlements, and that does logically benefit many PAEs.
“The vast majority of the many E.D.TX Waco PAE suits are being settled well before any trial,”
Since settling takes BOTH sides, your statement shows more than a bit of your tendency to be obtuse (and a cheerleader for Efficient Infringers).
Speed to Justice includes both speed to settlement (by both sides) OR speed to judicial decision (that likely both sides do not like).
The speed to Justice is what is desired.
> slower trial also tends to translate into a more expensive trial,
I’m skeptical, apples-to-apples. “15 depositions and a SJ motion” cost about the same regardless of whether you have 9 months or 3 years to do them.
*I’d even guess the rocket dockets end up being very-slightly cheaper in practice, as the trial counsel(s) probably have to use cheaper associates for more tasks and probably file fewer low-probability motions. There are only so many billable-hours in a day that can be wasted by a white-shoe litigator.
>I’d even guess
/sigh. I wish there was an edit function.
Time—as they say—is money. The longer it takes to get to the payout, the larger the finance charges the NPE is running up. The parties supplying the capital to finance the enforcement are not pleased to wait forever to be repaid. An NPE who can turn their cases around quickly will be a much more attractive investment for capital than one with a reputation for drawn out enforcement efforts/ licensing negotiations.
…. And let’s not forget that ‘licensing’ is a sanctioned US-centric business effort employing that which is protected by a scope of a patent….
Re “slower trials”[by which I assume is meant delayed trials] and the comment that this reduces the number of days in which “billable-hours .. can be wasted* by a white-shoe litigator” in a [true] “rocket docket.”
Note that the latter could be considerably reduced by general counsels and/or chief patent counsels able to do their job in controlling their client’s outside counsel cost burdens, getting realistic impartial lawsuit outcome advice, and promptly considering IPRs and reasonable settlement efforts whenever possible.
*including, as noted, some highly-unlikely-to-succeed pre-trial motions
“Before LOURIE, TARANTO, and STARK, Circuit Judges.
STARK, Circuit Judge.”
Is this the first venue mandamus decision that the “appellate panel indicated that the likelihood of a speedy resolution in one jurisdiction versus another should not be given any regard in the convenience analysis unless the parties particularly justify why a speedy trial is important.”?
That seems even more significant for venue transfer out of Waco than the Director’s requirement for the PTAB to check for actual rather than announced-in-advance normal times to trial for Fintiv avoidance of IPRs?
As I’ve written before, I expect Google’s true reason for asking for transfer is not primarily based upon any of the convenience factors. Rather Google is concerned that it is more likely to receive a harsh outcome in Texas from Judge Albright than it would before one of the N.D. Cal. Judges in Silicon Valley.
Gaming the patent system … good for me but not for thee ~ Google
The Federal Circuit is actively promoting patent infringement by discounting an NPE desire for a speedy trial. I thought the right to a speedy trial was guaranteed somewhere…..
Correct me if I’m wrong, but this decision is also precedential. Isn’t this the first mandamus petition regarding a transfer that was made precedential? Two key points will definitely hamper non-practicing entities with this decision – no weight on time to trial and a local office set up to establish a connection to the district. It’ll be interesting moving forward how Albright applies these two factors.
Ends justifying the means — the CAFC is supposed to be applying the law OF the Circuit, not telling the Circuit what it wants the law to be.
Definitely not the first. In re Apple, 979 F.3d 1332 (Fed. Cir. 2020) was precedential.
Agreed.
As I’ve written before, I expect Google’s true reason for asking for transfer is not primarily based upon any of the convenience factors. Rather Google is concerned that it is more likely to receive a harsh outcome in Texas from Judge Albright than it would before one of the N.D. Cal. Judges in Silicon Valley.
Right. And Jawbone Innovations LLC’s true reasons for opposing transfer to N.D. Cal. are also likely not primarily based on any convenience factors. Rather, Jawbone believes it is more likely to receive a good outcome in Texas from Judge Albright than it would elsewhere.
DCL, you took the words right out of my mouth. To people like Dennis, it’s immoral and despicable for potential outcomes to factor into a defendant’s decisions to seek venue transfer out of a district, but it’s totally cool for a plaintiff to decide to file in that district in the first place based entirely on those same considerations. Based on the underlying facts here, it’s clear that convenience factors played zero role in Jawbone’s decision to file in that district.
You do “get” that it is typically the right of the plaintiff as to where they file, right?
You seem to want some type of “equal umbrage,” and that’s just not the case.
Certainly Google doesn’t want to be in front of a Texas jury. However, the NPE plaintiff here chose an inconvenient forum because it wants to be in front of such jury. So, the motivations are a wash. (At least Google didn’t set up a Potemkin office in California to make it seem like they reside there, contrary to the typical NPE that incorporates in Texas and sets up a fake “office” in Waco or Marshall).
What matters then, is the statute, and the precedent interpreting it, showing that the case should be transferred.
> it wants to be in front of such jury. So, the motivations
IDK. My general impression is WDTX litigants are primarily motivated by a desire to get a final judgment this decade
Fwiw, the fed cir has plenty of tools to control excessive damage awards
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