The past year has seen an ongoing back-and-forth between the Federal Circuit and Western District of Texas Judge Alan D. Albright over his substantive handling of convenience transfer motions. Now, following a series of reversals from that appellate court, Judge Albright appears to be adjusting his approach to account for those rulings—adopting a markedly different posture from prior decisions in an April 29 order granting a transfer motion from Google in litigation filed by NPE InfoGation Corporation.

Inventor-controlled InfoGation began its campaign in 2016 with a series of Southern District of California lawsuits targeting HTC, Huawei, and ZTE over their provision of Android smartphones equipped with Google Maps, asserting a single patent (6,292,743) generally related to producing navigation guidance from turn-by-turn directions generated from natural language output. A set of settlements in October-November 2017 ended those disputes, along with a group of follow-on cases, but not before District Judge Marilyn L. Huff handed down a May 2017 order construing several terms from the ‘743 patent. Judge Huff also had the opportunity to consider the eligibility of the patent prior to those settlements, rejecting a set of Alice challenge filed by the three defendants.

InfoGation’s Litigation Directly Against Google

Meanwhile, a 2016 Google declaratory judgment action filed in the Northern District of California was dismissed the following year under the first-to-file rule. InfoGation then waited until 2020 to file the affirmative infringement suit against Google here at issue (6:20-cv-00366), alleging that the company infringed the same patent through its provision of the Google Maps API—targeting features related to route optimization and natural language route description.

Google subsequently (last August) moved to transfer the case on convenience grounds to the Southern District of California—citing the fact that InfoGation and its officers were based there, that the NPE had filed its other suits there, and that relevant third-party witnesses were located elsewhere within the state. In early December, after nearly three months had passed, the defendant filed a motion to stay pending the court’s transfer decision—moving for a hearing on that motion to stay in February 2021, at which point its motion to transfer had sat undecided for nearly six months. Weeks later, as the Markman hearing’s March 12 date loomed, Google moved to continue that hearing pending the resolution of its transfer motion—a request that Judge Albright granted on March 3, pushing the hearing back to March 24. On the eve of the scheduled hearing, with no transfer order still having issued, Google again moved for a continuance, prompting Judge Albright to move the hearing to April 14 in a March 23 order.

The String of Federal Circuit Decisions Addressing Convenience Transfers

As Google’s motion sat unresolved in the InfoGation case, a broader conflict was brewing between Judge Albright and the Federal Circuit, which in mid-2020 began issuing a series of decisions criticizing his substantive approach to convenience transfers. These include a July 2020 mandamus decision in which the appellate court ruled that Judge Albright improperly weighed the applicable factors in denying an Adobe motion seeking a convenience transfer to the Northern District of California (in In re: Adobe), holding in part that he had “failed to accord proper weight to the convenience of the transferee venue”; “that he had “failed to weigh the cost of attendance for willing witnesses factor”; and that he had erred by justifying the denial of transfer based on his district’s “perceived ability to more quickly schedule a trial”.

In November, a divided Federal Circuit then granted a mandamus petition from Apple (In re: Apple), ruling that Judge Albright improperly weighed some factors (including those addressing the “convenience for and cost of attendance of witnesses”, “practical problems”, and “court congestion”) and misapplied the law for others (including those dealing with the location of sources of proof and his district’s “local interest” in deciding the case).

Most recently, on April 20, the Federal Circuit overturned another transfer denial on mandamus, ruling in In re: TracFone Wireless II (“TracFone II”) that he had erred by treating as largely dispositive the relative distance that certain willing witnesses would have to travel to the venues in question. The Federal Circuit held that this “conclusion was clearly flawed”, resting on a “rigid and formulaic” interpretation of precedent as requiring that doubling the distance for these two witnesses doubled their inconvenience.

Appellate Reversals Impact InfoGation’s Case Against Google

Judge Albright’s April 29 decision granting Google’s motion to transfer in the InfoGation case reflects a different approach from his prior convenience transfer decisions in several respects, likely in response to those Federal Circuit reversals. This is evident in part through Judge Albright’s application of the private-interest factor concerning the “convenience for and cost of attendance of witnesses”, for which the Federal Circuit majority from In re: Apple ruled that he had misapplied the Fifth Circuit’s “100-mile rule”. Specifically, that majority held that he had overweighed the fact that the asserted patent’s inventors and patent prosecutor lived closer to the Western District of Texas than to the Northern District of California, given that travel would be required for them to reach either district—explaining that under the Federal Circuit’s 2009 In re: Genentech decision, this rule “‘should not be rigidly applied’ where ‘witnesses . . . will be required to travel a significant distance no matter where they testify’”. As noted above, the Federal Circuit again took issue with this approach in TracFone II.

Judge Albright quoted that exact language reciting the rule from Genentech in his ruling against InfoGation, finding that even though one of the NPE’s witnesses is located in South Korea, he “will be only slightly more inconvenienced traveling to Waco than he will San Diego as he will need to travel by air, secure lodging, and be away from his home in order to be present at trial in either location”. As a result, Judge Albright held that his location “does not carry much weight regarding transfer”. He had taken a contrary approach in the decision that led to In re: Apple, counting the number of additional miles that one key witness would have to travel to reach the Western District of Texas compared to the transferee venue (the Northern District of California) as a “significant fact that weighs against transfer”—an approach that he repeated in the opinion overturned in TracFone II.

Meanwhile, Judge Albright found that the location of the other witnesses at issue weighed in favor of transfer, as InfoGation’s other witnesses are all located in the Southern District of California—discounting the NPE’s counterargument that its CEO would be willing to travel to Waco if asked, finding that this offer “carries little weight” since he already resides in the transferee district. Even though one of InfoGation’s witnesses resides in Texas, Judge Albright noted that he was the only one located there, and pointed out that under Genentech, “[i]mportantly, the venue need not be convenient for all witnesses” (emphasis in original).

Additionally, while Judge Albright has previously placed significant weight on his district’s quick time to trial compared to transferee venues with respect to certain factors, he did not do so here—and, more broadly, has deemphasized time to trial in the wake of the Federal Circuit’s In re: Adobe decision. Specifically, in considering the public-interest factor considering “court congestion”, which under Genentech is determined based on “[t]he speed with which a case can come to trial and be resolved”, Judge Albright rejected InfoGation’s argument that his district’s quick time to trial should weigh against transfer. While stating that he “does not disagree” that his district is faster in this regard, he held that in this case, Judge Huff’s familiarity with certain issues (described in more detail below) tipped the scales toward transfer: “in cases that involve claim construction decisions previously litigated in other jurisdictions, judicial economy often favors transfer to a court that is already familiar with issues involved in the case”. In contrast, previous rulings have seen Judge Albright focus in detail on statistics involving relative caseloads between his and other districts as well as the median time to disposition between venues.

Judge Huff’s aforementioned familiarity with the issues in this case also played a key role in Judge Albright’s decision to grant transfer. In particular, he noted that the prior Southern District of California cases involved the same patent, and that Judge Huff had already “reviewed tutorials on the technology at issue, conducted a claim construction proceeding, and issued a claim construction order”. This pushed the private-interest factor concerning “all other practical problems that make trial of a case easy, expeditious and inexpensive” toward transfer, per Judge Albright. Though he acknowledged that the present case differed in that the prior defendants were device makers, rather than service providers like Google, Judge Albright “also recognize[d] the significant factual overlap between this case and the California Actions regarding the ‘743 Patent”. Because of that overlap, Judge Albright found that “that much of the work already performed by Judge Huff would likely need to be duplicated by this Court, which would unnecessarily consume judicial resources”.

While this result was also very different than in the decision overturned in Apple, for example, it arguably arose from the different circumstances between the two lawsuits—in Apple, there was no direct patent overlap between the West Texas action and the related California cases flagged by the defendant, while Judge Albright had already issued a claim construction order.

Further weighing toward transfer was the “local interest” factor, which for Judge Albright turned on the fact that the Southern District of California is InfoGation’s home district—a conclusion underscored by the fact that the plaintiff had filed its previous litigation there and even fought to avoid transfer out of that venue.

Lastly, Judge Albright found the remaining factors to be neutral—including the private-interest one concerning access to sources of proof, due to Google’s significant presence in both the Southern District of California and the Western District of Texas. (Here, Judge Albright reiterated his customary complaint about the Fifth Circuit’s approach on this factor being “at odds with the realities of modern patent litigation”, as developed in an “antiquated world where hauling hundreds of boxes of physical documents across the country was most impractical”—whereas most such documents today are easily available in digital form and “are equally accessible from both the transferee and transferor districts”.) He also found the private “compulsory process” factor to be neutral, as no party had identified an unwilling witness; as well as the factors concerning familiarity with the governing law and conflicts of law.

Finally, a recurring procedural dispute between Judge Albright and the Federal Circuit over the timing of transfer decisions recently came to a head in another, earlier ruling also involving defendant TracFone Wireless, which had sought mandamus review after its convenience transfer decision sat undecided for eight months. The Federal Circuit granted that defendant’s petition on March 8 in In re: TracFone Wireless I, faulting Judge Albright for proceeding with claim construction and other matters without resolving that transfer motion—ruling that “district courts must give promptly filed transfer motions ‘top priority’ before resolving the substantive issues in the case”. Later that month, Judge Albright issued a standing order establishing that he will rule on pending interdistrict transfer motions before holding a Markman hearing, though not without certain caveats.

Details on that standing order and its potential impact can be found here.