It's moving day again, with the Federal Circuit directing Judge Albright (Waco) to transfer a patent case against Hulu to the Central District of California. The In re Hulu, LLC 2021-142 opinion (Fed. Cir. Aug. 2, 2021) is another in a growing list of successful mandamus challenges seeking to stream cases out of Waco. This opinion may be the one to watch, though, as it provides one of the broadest rationales. The opinion weighted the convenience of party-related witnesses and prior art witnesses in the proposed transfer forum, regardless of whether the witness was shown as unwilling to testify in Texas. The opinion also discounted Waco's ability to set an earlier trial date.  A tabular point-counterpoint summary of the findings is included below, followed by a list of the notable mandamus challenges seeking transfer out of Waco. 

Transfer Analysis

Factor District Court Federal Circuit
The Relative Ease of Access to Sources of Proof

Factor weighs slightly in favor of transfer because bulk of documents/sources of proof are in California. But there was no showing with specificity of the evidence that could not be obtained in the alternate forum. Also, "the Court believes that the factor itself is at odds with the realities of modern patent litigation . . .

relevant documents are typically located on a server" accessible anywhere.		 Factor was not specifically addressed by mandamus opinion.
The Availability of Compulsory Process to Secure the Attendance of Witnesses Factor weighs against transfer. Minimal weight is given to prior art witnesses in California, because those "witnesses are generally unlikely to testify at trial." Also, with one exception, Hulu did not show that California-based third party witnesses were unwilling to travel to Waco to testify. Factor favors transfer. The "vast majority of witnesses to be analyzed under this factor would be subject to the compulsory process of the Central District of California."  District court overlooked multiple third party witnesses located in California. Also, it was improper to discount location of prior art witnesses here, where the identified prior art "was specifically mentioned in the asserted patents themselves, heightening their potential relevance." Also, it was improper to require a showing that witnesses are unwilling to travel to Texas to testify.
The Cost of Attendance for Willing Witnesses This, the most important factor, weighs against transfer. Hulu's California witnesses are given less weight since they are party witnesses who can be compelled to testify in Waco.  Also, Hulu's failure to identify specific third party witnesses in California weighed against transfer. Factor favors transfer. The "overwhelming number of potential witnesses" are located in California. No potential witnesses are located within the Waco District.  Improper to entirely discount inconvenience to party witnesses.
Other Factors That Make Trial Easy, Expeditious, and Inexpensive Factor is neutral. Court generally discounted arguments related to any delay/non-delay stemming from a transfer, California courts' familiarity with Hulu's streaming technology, the presence of other related suits in Waco, the likelihood of California granting a stay pending IPR proceedings compared to the argued "0%" chance of a stay in Waco, and the uncertainty of when jury trials are likely to begin again in California following pandemic-closures. Factor was not specifically addressed by mandamus opinion.
Administrative Difficulties Factor weighs against transfer. The "facts indicate a greater efficiency of bringing cases, especially patent cases, to trial in the Western District of Texas than in the Central District of California." Factor is neutral. A "court's general ability to set a fast-paced schedule is not particularly relevant to the court congestion factor." (citing In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020)).
Local Interests Factor weighs slightly in favor of transfer. Hulu is a California company and its sale of the accused product does not otherwise create a local interest in Waco. Hulu, however, does have some employees in Waco's District. The mandamus opinion noted in a footnote that "local interests are not a fiction" and to "the extent that the district court discounted the local interest factor based on this reasoning, this was also an error."
Familiarity of the Forum with the Law That Will Govern the Case and Avoiding Conflict of Laws and the Application of Foreign Laws Factors Factors are neutral. Parties agreed the factors are neutral. Factors were not specifically addressed by mandamus opinion.

Other notable mandamus challenges to Waco's denial of transfer motions in patent cases are listed below:  

Granted

Case Name Docket No. Order Date Relief Requested

IN RE: HULU, LLC

 21-142 8/02/2021 Mandamus for transfer to C.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: UBER TECHNOLOGIES, INC. 21-150 7/8/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: SAMSUNG ELECTRONICS CO., LTD. 21-139 6/30/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: TRACFONE WIRELESS, INC. 21-136 4/20/2021 Mandamus for transfer to S.D. Fla. under 28 U.S.C. § 1404(a)
IN RE: TRACFONE WIRELESS, INC. 21-118 3/2/2021 Mandamus to stay proceedings until order issued on pending motion to transfer
IN RE: SK HYNIX INC. 21-113 1/22/2021 Mandamus to stay proceedings until order issued on pending motion to transfer
IN RE: INTEL CORPORATION 21-105 12/23/2020 Mandamus to vacate order transferring case back to Waco from Austin under Rule 77(b) and inherent authority for docket management
IN RE: APPLE INC. 20-135 11/9/2020 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: NITRO FLUIDS L.L.C. 20-142 10/28/2020 Mandamus for transfer to S.D. Tex. under 28 U.S.C. § 1404(a)
IN RE: ADOBE INC. 20-126 4/28/2020 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)

Denied

Case Name Docket No. Order Date Relief Requested
IN RE: GOOGLE 21-144 8/4/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: APPLE INC. 21-147 8/4/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: TCO AS 21-158 7/13/2021 Mandamus to transfer to S.D. Tex. under 28 U.S.C. § 1404(a)
IN RE: BOSE CORPORATION 21-145 5/25/2021 Mandamus to stay all non-venue-related proceedings until order issued on pending motion to dismiss or transfer
IN RE: WESTERN DIGITAL TECHS, INC. 21-137 5/10/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: APPLE INC. 21-135 4/9/2021 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: NITRO FLUIDS L.L.C. 21-130 3/29/2021 Mandamus for transfer to S.D. Tex. under 28 U.S.C. § 1404(a)
IN RE: TRUE CHEMICAL SOLUTIONS, LLC 21-131 3/23/2021 Mandamus to reverse intra-division transfer from Austin to Waco under 28 U.S.C. § 1404(a)
IN RE: ADTRAN, INC. 21-115 3/19/2021 Mandamus to stay all deadlines unrelated to venue until order issued on pending motion to transfer
IN RE: SK HYNIX INC. 21-114 2/25/2021 Mandamus for transfer to C.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: INTEL CORPORATION 21-111 1/21/2021 Mandamus to vacate re-transfer back to Waco from Austin under 28 U.S.C. § 1404(a)
IN RE: APPLE INC. 20-127 6/16/2020 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: DROPBOX, INC. 20-132 6/1/2020 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: DROPBOX, INC. 20-130 5/29/2020 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)
IN RE: APPLE INC. 20-104 12/20/2019 Mandamus for transfer to N.D. Cal. under 28 U.S.C. § 1404(a)

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