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:

1. 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,
2. 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.