by Dennis Crouch
On September 11, 2024, the Federal Circuit issued three separate orders denying petitions for writs of mandamus related to venue transfer decisions. These cases highlight a trend that I previously recognized of the court stepping-back from its prior aggressive mandamus docket. The cases here all include the similar procedural posture where the district court ordered transfer under the convenient venue statute 1404(a), and the patentee unsuccessfully petitioned the Federal Circuit to reverse the transfer.
Documents:
- In re Anonymous Media Research Holdings, LLC, 24-139.ORDER.9-11-2024_2382597.
- In re DataNet LLC, 24-137.ORDER.9-11-2024_2382565.
- In Re David’s Dozer V-LOC System Inc, 24-135.ORDER.9-11-2024_2382544
Brief Background on 28 U.S.C. § 1404(a) Transfer of Venue: Section 1404(a) allows a district court to transfer a civil action to another district where it might have been brought “for the convenience of parties and witnesses, in the interest of justice.” Courts typically consider both private and public interest factors when evaluating transfer motions, including the relative ease of access to sources of proof, availability of compulsory process, cost of attendance for willing witnesses, and local interest in the controversy. This ‘convenient venue’ statute is in addition to the ‘proper venue’ statute found in § 1400, which severely limits where a patent case can be filed.
Nothing in either of these statutes focus on whether the original judge is one who might favor your case — but this is a vital issue and I have spoken with many defense attorneys who decided not to move for transfer because they liked the judicial draw. Some judges understand and love patent cases — working incredibly hard to make sure the case moves forward toward a speedy trial; Some judges are much more likely (based on their history) to issue a pre-trial judgment in favor of an accused infringer; Some judges have busy criminal dockets and allows the patent cases to flounder for years. I write about judges here because many venue transfer actions center on what I term “judge avoidance” as a reaction to initial “judge shopping” done by the plaintiff.
Each mandamus denial discussed below was issued by Judges Lourie, Hughes in a per curiam non-precedential order.
Case 1: In re Datanet LLC
Here, the Federal Circuit denied a petition seeking to vacate the W.D. Tex. order by Judge Garcia transferring the case against Dropbox to the N.D. Cal. The court applied the highly deferential mandamus standard from In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008), which requires a clear showing that that the circustances offered no basis for discretion by the district court. In the case, the magistrate had initially denied transfer, but the district court reversed course and ordered the case transferred — with the district court finding the magistrate had overlooked potential witnesses in California, made incorrect assumptions about activities in Texas, and given insufficient weight to the accused technology’s development location.
Alden Harris of Heim Payne & Chorush LLP argued for petitioner Datanet. Dropbox’s team was led by former Prost Clerk Julie Goldemberg of Morgan Lewis, along with Karon Fowler, Michael Lyons, Nicholas Restauri and Austin Zuck from the firm.
Case 2: In re David’s Dozer V-Loc System Inc. (Case No. 2024-135)
David’s Dozer is located in Florida City, south of Miami. The company sued John Deere in S.D.Fl., alleging patent infringement, correction of inventorship, and other claims. Deere moved to transfer the action to the Northern District of Iowa (NDIA), arguing that the accused products were designed there and it would be more convenient for relevant employees, con-tractors, and actual tractors.
The SDFL granted the transfer. Although the court acknowledged that David’s Dozer had filed suit in his home venue, it found that “the relative means of the parties favor neither forum, given David’s Dozer and Deere were corporate entities.” The Federal Circuit denied mandamus — finding no abuse of discretion in ordering the transfer after finding Iowa was clearly more convenient. The court noted that the district court reasonably found other considerations outweighed the plaintiffs’ choice to litigate at home.
Arthur Weaver, Richard Guerra, and Javier Sobrado from Brickell IP Group filed the mandamus petition for the patentee; Kirkland attorneys Jason Wilcox, Brandon Brown, and Gregg Locascio argued for Deere.
Case 3: In re Anonymous Media Research Holdings, LLC
The patent holder’s name here is “Anonymous.” In this case, the Federal Circuit again denied a petition challenging a transfer order of the case against Roku from Texas (Judge Pitman) to the Northern District of California. The court reiterated that, in general, “the plaintiff’s choice [of forum] should be respected.” However, Roku was able to show good cause for the transfer. In particular, the district court found that several factors, including local interest, cost of attendance for willing witnesses, and access to sources of proof, strongly favored transfer.
Jeffrey Lamken from MoloLamken filed the unsuccessful petition along with his team of Elizabeth Clarke, Rayiner Hashem, and Lucas Walker. Lamken’s team was hired for the Federal Circuit petition. The trial team are all from Ahmad, Zavitsanos & Mensing. Roku did not file a response to the petition. At the trial level, the company is being represented by Perkins Coie.
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These three decisions all denying mandamus petitions seeking venue transfer reversals highlight what I see as part of the new trend — particularly the court’s reluctance to intervene in these transfer decisions. This is a shift away from a the past few years when the court had a much more aggressive mandamus docket. One difference though is that those older interventions almost always ordered transfer — just as the districts court did in these cases.
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The David’s Dozer case is pretty interesting – or perhaps I just love dozers.
David’s Dozer patent (US10533300) covers a method of stabilizing skid steer vehicles used for grading earth, involving restricting the hydraulics controlling the vehicle’s boom arm to keep it in a lowered position while using GPS-guided automatic grade control. The plaintiffs claim Deere’s 333G SmartGrade Compact Track Loader infringes this patent when operating in its “Dozer Mode.”
David Armas, is “David” of David’s Dozer. He is a co-plaintiff with his company and inventor of the asserted patent. The complaint explains that he has been doing earth grading work since the 1990’s. In August 2018, Armas participated in a Roadshow where he demonstrated his V-Loc System. Representatives from Deere were present at this event. The inference in the case is that Deere took information from that roadshow and developed it into subsequent patent filings by Deere, including US11028557. The complaint argues that Armas substantially contributed to the conception and reduction to practice of significant features of the inventions claimed in these patents, and so should be listed as a joint inventor.
Chris Van Dam prosecuted the original Armas patent that is being litigated here.
Deere prosecuted its patents in-house. The docket does not explain why, but the patent lists seven inventors, two of which were added during prosecution.