by Dennis Crouch
The Federal Circuit has granted a large number of mandamus petitions in order to move cases out of Judge Alan Albright’s W.D.Tex. courtroom based upon the inconvenience felt by large multinational defendants. On December 14, 2023, the appellate court once again took the extraordinary step, this time on behalf of Samsung, of granting a petition for a writ of mandamus, ordering the infringement lawsuit to be transferred to the Northern District of California. In re Samsung Elecs. Co., Ltd., No. 2023-146 (Fed. Cir. Dec. 14, 2023).
For convenience transfer motions under 28 U.S.C. 1404(a), the Federal Circuit follows the law of the particular regional circuit court of appeals. Because most of these cases stem from Texas, this means the Fifth Circuit who recently established further precedent the copyright case In re TikTok, Inc., 85 F.4th 352 (5th Cir. 2023).
The Fifth Circuit in In re TikTok granted TikTok’s petition for a writ of mandamus, directing the Western District of Texas to transfer a copyright infringement case brought against TikTok by a Chinese company to the Northern District of California. The court applied the test for mandamus review of improper venue decisions established in In Re Volkswagen, requiring the movant to show the transferee venue is “clearly more convenient.” After analyzing each of the eight court created private and public interest factors that govern transfer, the Fifth Circuit concluded that the district court’s denial of transfer amounted to a clear abuse of discretion leading to a patently erroneous result.
Specifically, in TikTok, the Fifth Circuit found the district court erred in weighing the witness convenience and ease of access to proof factors against transfer, since the key evidence and witnesses were predominately located in China and California. It also critiqued the district court’s reliance on post-motion case progress to deny transfer as an abuse of discretion, where the court itself was responsible for delay in deciding the transfer motion. Since multiple factors favored transfer and none favored the plaintiff’s chosen venue, the Fifth Circuit granted mandamus directing the Western District of Texas to transfer the case.
In Samsung, the Federal Circuit followed-in-suit and ordered Samsung’s case to be transferred. One key factor in the case has to do with travel time from potential Korean witnesses, and the Federal Circuit concluded that the NDCA was much more convenient as a travel destination from Korea:
The Fifth Circuit recently rejected similar reasoning in In re TikTok . . . . Because most of the potential witnesses here are in Korea and NDCA, transfer would greatly reduce the time and inconvenience of travel. As in TikTok, the presence of some [party] employees in Eastern Texas . . . ‘cannot overcome the immense inconvenience that the majority of relevant witnesses would face if this case were to be tried in’ WDTX.
Samsung at 4. The court here does not provide its factual basis for explaining why traveling from Korea to NDCal is immensely more inconvenient than Korea to Texas, and has previously rejected the use of travel distance as a key factor — especially in situations like patent cases that will typically involve an extended trial.
Judge Albright had also noted that party witnesses were willing to travel to Texas — even if located in Korea or California. On Mandamus, the Federal Circuit that “[t]he Fifth Circuit recently rejected similar reasoning” in TikTok.
This decision continues a trend of the Federal Circuit relying on mandamus to repeatedly overturn Judge Albright’s refusal to transfer cases out of his WDTX courtroom. Both the outcome and the tone of In re Samsung signals that the Federal Circuit remains skeptical of plaintiff-preferred venues that lack meaningful connections to patent disputes.
I wouldn’t want a pregnant person I cared about anywhere near Texas.
If Emperor Tang regains power, it might not even be prudent to be anywhere in these not very United States.
Flying from Korea to San Francisco v Korea to Waco is self-evidently a far different proposition.
“A meaningful connection” has some legal meaning beyond what a plaintiff desires & therefore cannot logically apply to every Federal courthouse in the USA, even though the patent right is a federal right.
Wrong. Because patents grant the right to sue in any federal court, patent owners have the right to walk into any courthouse in the nation to receive immediate payment.
28 USC 1400 “(b)Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”
And, On May 22, 2017, the United States Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC issued a decision limiting venue in patent cases to districts in which the defendant is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business.
[When one makes a statement on a patent blog presenting it as a statement as to what the law is, rather than as an expression of personal opinion as to what one thinks it ought to be, it endangers someone taking it as valid legal advice.]
Paul,
ANYONE taking the writings of the mere litigator NS II as any form of valid legal advice deserves what they get.
Just look at the “brain trust” of the above: you have marty and NS II, throwing in non-patent law musings and trying to be coy.
It’s like multiplying with fractions for those two.
Did you really think someone would get confused and demand “immediate payment” at an arbitrary courthouse?
NS II,
Paul is officially a litigator.
When one makes a statement on a patent blog presenting it as a statement as to what the law is, rather than as an expression of personal opinion as to what one thinks it ought to be, it endangers someone taking it as valid legal advice.
This is why we need a new species of punctuation in English-language orthography: the sarcasm mark. It would work like quotation marks (surrounding a line of words) and signal that the text thus enclosed is meant to be read tongue-in-cheek.
NSII did not intend that anyone should take 7.1 in earnest.
Hidden link and Noah “debunking” anything…
(and yes, Greg “can’t see my posts,” so he does not see the “new species”…)
Psst! Don’t tell anyone, but because our 401ks include the stocks of many large companies, we must of course do their bidding.
— The CAFC
Is America a great country, or what.
inconvenience felt by large multinational defendants
This is all just another version of the Federal Circuit protecting big over small.
If Facebook or Google or Tik Tok or Microsoft or Samsung are being sued somewhere they don’t want to be sued, they’ll say they have 10 or 20 or 50 or 100 employees that can testify regarding the lawsuit and NDCal is the most convenient place for them to do so.
All a large defendant has to do to get a case moved is to identify some large numbers of witnesses (i.e., their employees) having a location that is more convenient to their preferred jurisdiction.
Are you seriously arguing that the many defendant companies on the Waco Texas patent suit docket do their new product development or manufacturing [the relevant infringement witnesses], or have their technical experts [their invalidity defense witnesses] living in remote little Waco Texas?
Also, as noted here before several times, Congress enacted years ago a special patent suit venue statue that favors defendants, not patent owners.
As for the separate question of why many defendant companies prefer N.D. CA venue, one reason asserted is that the local rules for that court require an early preliminary claim chart showing to the court of why at least one claim of the patent is arguably infringed by at least one defendant product before the defendant is financially burdened by massive unrestricted document discovery demands. [If that is not a factor or difference, I hope to see a factual response.]
Are you seriously arguing that the many defendant companies on the Waco Texas patent suit docket do their new product development or manufacturing [the relevant infringement witnesses], or have their technical experts [their invalidity defense witnesses] living in remote little Waco Texas?
Did you bother to read what I wrote? I don’t think so because this comment addresses nothing of what I said. The WDTex also includes Austin, which happens to have a huge concentration of high-tech workers.
Also, as noted here before several times, Congress enacted years ago a special patent suit venue statue that favors defendants, not patent owners.
That is not the issue. The companies that get sued do have a presence in the WDTex. Rather, the issue is that of the Federal Circuit ignoring the standard of review and inserting its judgement over the judgment of the district court.
As for the separate question of why many defendant companies prefer N.D. CA venue, one reason asserted is that the local rules for that court require an early preliminary claim chart showing to the court of why at least one claim of the patent is arguably infringed by at least one defendant product before the defendant is financially burdened by massive unrestricted document discovery demands. [If that is not a factor or difference, I hope to see a factual response.]
Oh please, that is a trivial inconvenience for a plaintiff. Frankly, I cannot recently recall seeing a complaint that didn’t have a claim chart within (or referenced). Its not that hard to create one. It is basically like a 102 rejection in reverse — and that is something examiners do day in and day out.
Defendants want to go to NDCal because the judges there think everything is unpatentable and will proceed to use that other “weird trick” the Federal Circuit has allowed by allowing patents to be invalidated without evidence using 12b6 motions to dismiss. If you get through that gauntlet, expect your trial to get delayed over what it would be.
(Slight) correction: everything (other than the local’s) is unpatentable.
Re: “The Fifth Circuit recently rejected similar [venue mandamus transfer resistance] reasoning in In re TikTok . . . . Because most of the potential witnesses here are in Korea and NDCA, transfer would greatly reduce the time and inconvenience of travel.”
It’s not just the reduced travel distance from Korea that makes N.D. CA more convenient a forum than Waco Texas. “Transfer” inconvenience is also the absence of any direct flight to and from Waco, requiring transfers.
…but remote presence (as was common via COVID) is a lesson lost, eh?
OT, but it appears that some patent owners may now get fast injunctions in Europe that they could not get at all now in the U.S.:
link to ipwatchdog.com
“the extraordinary step”
Not really.
There is something “extraordinary” about Wedt Texas, though.
Are any of the witnesses or attorneys of the defendant female? That alone would be enough to justify transfer out of that utter s—t hole state.
You do realize that your mindless request for gender evaluation absent any sense of merit is the very type of ISM that your Sprint Left nature mouths as needing correction, eh?
I bet you do not recognize the sheer hypocrisy.
Billy has irreversible MAGA disease. Gross.
I am certainly not the one with a disease, Malcolm.
Maybe you should see someone about that one-bucketing OMB-TDS thing.
You do have a disease, but one of its symptoms is your inability to recognize it. Fortunately, it is only contagious to those that take you seriously.
There you go again with your projecting.
I am more than certain of the two of us, you have both the inability to recognize that you accuse others of that which you are, and that no one (other than perhaps other litigators) takes you seriously.
I have to wonder if you have any understanding of innovation and innovation protection laws at all.
Your persuasion style, if one were to call it that, requires the listener to already believe what you are selling. Therefore, I suspect that you find yourself wondering about much in this world.
Not at all – but you be you, because it works sooo well for you.
One of your (many) mistakes is that you think that your view of correct and needs be “persuaded.”
Your habit of jumping in on the wrong side so many times makes that “confidence” of yours delish for the Fe.
correction:
“your view of correct” is to read “your view is correct”
[and to be clear, your view is in in error, and I have no duty to persuade you at all – making fun of you is just so much more fun]
“has irreversible MAGA disease”
What is also fun here is that I am not “MAGA,” have never voted for Trump, and never would.
Malcolm of course knows this – but his Sprint Left, One-bucketing cognitive dissonance simply does not allow anything to be “correct” that does not exactly align with his own world view.
The generative aspect of his cognitive dissonance – LONG established – is that as a patent attorney, he works to establish a personal property right and his ideology/religion is totally against personal property.
It’s purely 1984 for him to attempt to label others with his own afflictions.
“ What is also fun here is that I am not “MAGA,” have never voted for Trump, and never would. But if I was a citizen who could vote, I would definitely vote for any third party spoiler candidate that would help get Trump elected. Or I just wouldn’t vote at all. Anything is better than a commie Democrat is what I’m saying.”
Fixed for accuracy.
Please Pardon Potential re(P)eat due to filter…
Your comment[s are] is awaiting moderation.
December 19, 2023 at 2:02 pm and 2:03 pm
Your one-bucketing (and as usual it is incorrect on so many levels) is noted.
You use that word, “accuracy,” but I do not think that you know what that word means.
Here (though) is something that YOU can “fix for accuracy” (seeing as you have refused to share where you stand):
Which side of the Israel/Hamas conflict do you support?
I know, I know, the Sprint Left crowd is rent asunder with this topic, and you may be placing many of your (otherwise) Sprint Left brethren into that ‘@wful’ One-Bucket, but come now Malcolm, this is a simple question to answer.
Why have you not answered?
What is your answer?
Will we all be greeted with that sound of crickets, yet again?
Easy A(nswer): yes, the crickets again.
“that lack meaningful connections to patent disputes.”
Nice MISinformation.
It is not a lack of meaningful connections, given that the patent right is a Federal right.
Convenience, or perhaps more accurately, a comparative convenience evaluation is simply not the same thing as the narrative’s “lack meaningful connection.”
I know that complex thinking is not your strong suit, but perhaps status as a “Federal right” does not create a meaningful connection.
Just helping you connect the dots.
You are doing that projection thing again.
Meaningful connection and the relative nature of convenience are quite evidently two very different things, which is the immediate point at hand.
But what would one expect from a mere litigator, eh?
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