Venue Transfer and Witness Credibility

In re: Roku, Inc. (Fed. Cir. 2023)

IOEngine sued Roku for patent infringement back in 2021. As is common with large corporate defendants sued in Waco, Roku asked Judge Albright to transfer the case to N.D. California on convenience grounds under 28 U.S.C. 1404.  Judge Albright refused — noting that Roku’s corporate witness lacked credibility and his testimony was “either misleading or based on an inadequate investigation of the facts.”  In particular, the record showed several Roku employees with “particularly relevant knowledge” of the case located in the W.D. Tex. (Austin), but that Roku had indicated all potential employee witnesses were located in Northern California.

Still, Roku petitioned for mandamus with some confidence, having seen the Federal Circuit previously repeatedly nitpick the work of Judge Albright on transfer motions.  Although Roku did not expressly claim that Judge Albright was biased, it did argue a failure of “objective assessment” (essentially the equivalent).

Objectively assessing the facts shows that the [Roku] employees in WDTX identified by IOENGINE do not possess relevant material information. And, even if they do, their knowledge is, at best, cumulative to the knowledge of Roku employees in NDCA.

Roku Petition.  Of course, the second sentence suggests the problem with Roku’s argument.

In the end here, the appellate panel did not move forward — holding that denial of transfer was not a “clear abuse of discretion” since the district court considered the relevant factors in its conclusion that Roku failed to show that the Northern District of California was clearly more convenient.

9 thoughts on “Venue Transfer and Witness Credibility

  1. 1

    Bros, I have a somewhat odd situation here. Someone is making a C-I-P claim back to an application which doesn’t even have any common inventors listed as the current application shows. Anyone know if that can and/or is a valid CIP claim back (assume everything else is ok, but just different inventorships entirely).

    I should just note that 35 U.S.C 120 seems to require at least a joint or common inventor be listed in order to get the effective filing date validly claimed back.

    link to

    1. 1.1

      I should note here that the situation is a bit more complex than I’d let on. It’s actually a chain of dates and apps.

      App A, by inventorship XYZ inventors dated latest filing date.

      App B, by inventorship XTW inventors (X inventor is common to app A+B, but inventors T and W are not common to A and B) is filed in the middle filing date of these apps.

      Then finally app C is by inventorship TRP (now only inventor T is common to apps B+C and inventors R and P are not common between any applications) was the earliest back filing date.

      So question is, does this bizarro inventorship chain let the application have its effective filing date go back to the earliest filing date?

      1. 1.1.2

        Are you trying to remove a reference? Or make the priority claim yourself?

        I tried to do the former once. The Examiner just ignored the argument. We didn’t end up appealing.


          Bro I’m trying to figure out what filing date I’m even trying to “beat”, could be 2019, could be 2015, or could be an even further back one I can’t remember. But I’m pretty sure it just ends when the inventorship no longer has any of the inventors of the present application (unless they did a name change/went trans but I don’t think any of that happened). And actually after I’d posted this hours later I had a recollection that I think I discussed this matter with the attorney in the immediate parent of this one (it has like 7 parent cases in the chain) during an interview and I think he had agreed with the date I’d previously determined back in the parent.

          So I think I’m all straight thx, everyone seems agreed. And there is an MPEP section that seems to support this as well.

      2. 1.1.3

        Is App B claimed as a Con or CIP,

        I figure that App C is the CIP you mention, but there may well be more than one as you laid out.

        Keep in mind that if App B is merely a Con, the answer may not be the simple “no,” mentioned, as inventors of App A are so designated merely on the claims as filed, and the specification may well have the B-C connection legitimately present back to A (also keeping in mind the VERY easy – penalty free ability to fix inventorship through the AIA (such as for example, dropping the ‘deceptive intent’ aspect).


          My hypothetical chain is a very simplified version of the actual gargantuan chain. In the hypo tho they’re all just CONs, though we could add still yet further inventorship shinanigans as a app D repeating the inventorship pattern above (only one common inventor to the immediate child and two more that aren’t isn’t common to any other apps in the chain) and then have App C be a CIP of that one.

          “may well have the B-C connection legitimately present back to A (also keeping in mind the VERY easy – penalty free ability to fix inventorship through the AIA (such as for example, dropping the ‘deceptive intent’ aspect)”

          I think you mean a written description connection back, and yes, that was what had me concerned as well with an inventorship fix. However, as I just posted a few minutes ago, I actually did a parent in this gargantuan chain that is present in real life and discussed the situation with the attorney in an interview already (I vaguely think I recall) and there will not be an inventorship fix in this instance iirc.


            Given as this is highly fact dependent, not sure I see the value in your provisions of simplified hypotheticals.

            Maybe run a comparison and focus on the subject matter that is not present in the family that is present in the current application? This would also give you direct indications of the claimed matter to the “In-Part” portion or earlier.

            That would drive your dates more so than dabbling with named inventors anyway.

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