United States: Second Quarter 2021: Judge Albright's Transfer Orders In Review

The second quarter of 2021 was a busy quarter for transfer motions for Judge Albright. For 2Q 2021, we reviewed the transfer-related orders and procedures for Judge Albright. Here are our observations.

During 2Q 2021, the Federal Circuit weighed in five times, granting two mandamus petitions and denying three. In TracFone and in Samsung, the Federal Circuit took issue with the court's evaluation of the private-interest factors related to willing and unwilling witnesses and in Samsung also took issue with the court's evaluation of the plaintiff's venue manipulation and its assignment of "significant weight" to rapid disposition of the case. For two of the denials, Apple and Bose, the Federal Circuit relied on the court's March 23, 2021 standing order that transfer motions would be resolved before Markman hearings. For the third denial in Western Digital, the Federal Circuit did not find clear abuse of discretion, though it would have evaluated the factors differently.  

Judge Albright ruled on twenty motions to transfer during 2Q 2021, setting aside three that were denied as moot. 

For inter-district motions to transfer, Judge Albright granted five and denied eight-although three that were denied were for the same plaintiff, Ecofactor.  For intra-district motions to transfer-all to or from the Austin Division-one was granted and six were denied. However, several of the motions to transfer to the Austin Division were denied without prejudice for the party to refile the motions as trial approaches so that Judge Albright could evaluate, at that time, whether the Austin courthouse would be open in light of the previous closure due to COVID-19.

We focus here on the five inter-district motions to transfer that Judge Albright granted. One of these five was after the Federal Circuit granted TracFone's petition for mandamus to transfer the case, Precis Group, LLC v. TracFone Wireless, Inc. (6:20-CV-00303-ADA), to the Southern District of Florida. Judge Albright's transfer order in that instance was very short and merely transferred the case to the Southern District of Florida.

Judge Albright also granted Google's motion to transfer to the Southern District of California on April 29, 2021, in the matter InfoGation Corp. v. Google LLC (6:20-CV-00366-ADA). Judge Albright found that the following factors weighed in favor of transfer: cost of attendance for willing witnesses, administrative difficulties flowing from court congestion, local interest, and all other practical problems that make trial of a case easy, expeditious, and inexpensive. With all other factors being neutral, Judge Albright transferred the case. Key issues that resulted in transfer here were as follows: (1) the engineers for Google working on the accused features were in California or Washington; (2) the plaintiff brought other actions in the Southern District of California, which resulted in the court there having familiarity with the patents; and (3) the plaintiff was in San Diego.

Judge Albright granted ADTRAN, Inc.'s motion to transfer to the Northern District of Alabama on May 17, 2021, in the matter Correct Transmission LLC v. ADTRAN, Inc. (6:20-CV-669-ADA). Before granting transfer, however, Judge Albright also determined that the Western District of Texas was an improper venue because ADTRAN did not reside in the Western District of Texas. Specifically, Judge Albright rejected the plaintiff's arguments that employees that worked from home in the district established a regular place of business and rejected that a telemarketing firm in Austin and a distribution center in El Paso-both of which were third parties but worked with ADTRAN-did not create a regular place of business in the district. Judge Albright also found that venue was more convenient in the Northern District of Alabama because (1) ADTRAN's headquarters were there; (2) ADTRAN manufactured the accused products there; (3) third-party witnesses, including ADTRAN former employees, were in Alabama; and (4) the local interests favored Alabama, given ADTRAN's headquarters.

Judge Albright on May 20, 2021, in the matter Koss Corporation v. Plantronics, Inc. (6:20-CV-663-ADA). Here, despite there being parallel litigation in the Western District of Texas, the key issue resulting in transfer was that Polycom had identified four third-party witnesses that stated that they would be unwilling to travel to the Western District of Texas to testify unless compelled to do so. As such, the "availability of compulsory process" factor weighed in favor of transfer, along with relative access to sources of proof, given third-party documents also in California.

Finally, Judge Albright granted TikTok's motion to transfer to the Northern District of California on May 21, 2021, in the matter 10Tales, Inc. v. TikTok, Inc. (6:20-CV-00810-ADA). Judge Albright found transfer appropriate when (1) any physical documents that are relevant are in California; (2) there were critical third-party witnesses in California, given that the plaintiff's complaint implicated Google, Apple, and other businesses well known to have their strongest presence in California; (3) TikTok's witnesses are in California; and (4) California had a strong local interest, given that the accused products were designed, developed, and tested in the Northern District of California.

For the eight motions Judge Albright denied, we have the following general observations. First, the court followed Fifth Circuit precedent in its determination as to the weight given to the location of electronic documents, but consistently noted that the focus on physical location is "out of touch" with modern patent litigation and invited the Fifth Circuit to revisit this factor. Second, the court focused on the showing of unwillingness to testify and the practicalities of the length of trials in Judge Albright's court. Speculation, long lists of potential witnesses, and prior-art witnesses typically weigh against transfer for the compulsory-process factor.

In 2Q 2021, Judge Albright amended his standing order on venue discovery, again imposing limits on the number of discovery requests and deposition hours. A summary of the standing order is here. The court also amended Judge Albright's standing order to resolve transfer motions before Markman hearings to say that fact discovery will open one day after the originally scheduled Markman hearing date.

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