The Federal Circuit recently issued yet another writ of mandamus against Western District of Texas Judge Alan D. Albright over his handling of a convenience transfer motion. On May 26, the court held that Judge Albright erred by denying Apple’s motion to transfer a case filed against it by BillJCo LLC, concluding that despite his revised arguments citing prior mandamus rulings against him, he had made a similar set of legal errors in his application of the relevant factors (2022-0137). That case has now been transferred to the Northern District of California (5:22-cv-03201) in the wake of that ruling. This is just the latest such decision by the Federal Circuit, which last year reversed Judge Albright on convenience transfers a total of 18 times, including nine in the fourth quarter alone. While that wave has slowed to a steady trickle, this most recent opinion—the second such reversal by the Federal Circuit this year—suggests that Judge Albright’s approach is still not to the court’s liking.

In May 2021, inventor-controlled plaintiff BillJCo filed the litigation below against Apple (6:21-cv-00528) in the Western District, alongside Eastern District of Texas complaints against Cisco (2:21-cv-00181), and HP Enterprise (HPE) (Aruba Networks) (2:21-cv-00183). The cases allege infringement of six patents (all asserted against Apple, and the same set of three against the other two) through the provision of products implementing Bluetooth LE beacon technology. In September, Apple moved to transfer the case to the Northern District of California on convenience grounds, arguing that each of the private- and public-interest factors underpinning the Section 1404 analysis favored transfer.

The District Court Decision Denying Transfer

Judge Albright denied the motion in February 2022 (amending that order days later, in early March, to correct a minor error in its final sentence). While the decision does not fully depart from his prior approach, Judge Albright’s application of some factors does reflect some of the Federal Circuit’s pushback—though, as detailed below, this was not enough to escape mandamus reversal.

Among the factors showing such a revamped approach was the private-interest factor concerning relative ease of access to sources of proof, which Judge Albright found to weigh just slightly in favor of transfer. He found that while not much physical evidence was located in California, electronic documents were—though he gave that fact less weight because any greater ease of access compared to the Western District was allegedly a question of “lag”, which would be minimal. Judge Albright also agreed that it weighed toward transfer that the Bluetooth Special Interest Group, the relevant standards development organization, was located in Washington. However, he found the factor did “not heavily” weigh toward transfer because BillJCo’s offices were in Flower Mound, Texas—which is located in the Eastern District but is “not far from Waco”.

Also favoring transfer, per Judge Albright, was the private factor concerning the cost of attendance for willing witnesses. While he declined to discount the convenience to Bill Johnson, BillJCo’s sole employee, in traveling the 100 miles from the plaintiff’s Flower Mound headquarters, he found that the greater number of Apple witnesses tipped the scales toward transfer. Despite the plaintiff’s argument that Apple tended not to call fact witnesses in recent patent trials, and its assertion that some listed witnesses were duplicative, Judge Albright declined to interpret those facts as weighing against transfer—invoking Federal Circuit guidance warning him not to “substitute[] . . . [his] own assumption that . . . witnesses are unlikely to testify in place of specific reasons to believe that the . . . witnesses would be relevant” (specifically, citing that court’s November 2021 In re: Atlassian decision). That said, Judge Albright also found that this factor does “not heavily” weigh toward transfer because Apple’s “burgeoning Austin campus attenuates the inconvenience that a Waco trial visits upon Apple’s NDCA-based personnel”.

Notably, Judge Albright’s conclusions as to those factors were both quite different from some of his prior decisions in which the Federal Circuit repeatedly held that he had underweighed the convenience for and/or cost of attendance of witnesses (in Samsung, In re: DISH, In re: Juniper, In re: Google, and another In re: Samsung decision involving another plaintiff) and discounted sources of proof in the transferee district (In re: Juniper, In re: Google).

Additionally, Judge Albright found the factor concerning “all other practical problems that make trial of a case easy, expeditious and inexpensive” to be neutral, declining to find that BillJCo’s willingness to litigate its other cases in another venue (the Eastern District) should weigh toward transfer, characterizing this as similar to the argument that Apple should be precluded from seeking transfer for its willingness “to defend other cases” in the Western District. Judge Albright also decided not to consider the potential transfer of the BillJCo cases to California as favoring transfer on judicial economy grounds, noting that District Judge Rodney Gilstrap had declined to transfer the cases there in February—and that any potential for mandamus review of those denials was still hypothetical.

However, Judge Albright found that the “availability of compulsory process” factor, which concerns a court’s need to secure the testimony of an unwilling nonparty witness, to weigh against transfer. Here, he cited the Federal Circuit’s prior mandamus caselaw as establishing that a showing of unwillingness is not required for each nonparty witness (as it held in its August 2021 In re: Hulu decision against him), and that “when there is no indication that a non-party witness is willing, the witness is presumed to be unwilling and considered under the compulsory process factor” (quoting its September 2018 In re: HP decision”). While Judge Albright found that certain witnesses offered by the parties who served on opposing sides from one another in a relevant negotiation “neutralize one another”, he found that one of the inventors of the asserted patents, Jason Johnson, “breaks the tie here”. In particular, he found that “there is no indication that BillJCo can compel [Johnson] to testify”, but asserted that “[t]his Court can”—which, per his analysis, tipped that factor against transfer.

With respect to the public interest factors, Judge Albright began with the one concerning relative court congestion, holding that his district’s faster time to trial weighed toward transfer. An earlier version of this argument, based on the district’s early scheduling of such trials, has been a recurring point of contention for the Federal Circuit, which held in its precedential In re: Juniper I decision that Judge Albright could not rely on aggressive scheduling orders versus actual statistics on court congestion. Here, though, he explicitly cited that holding in citing data offered by the plaintiff on actual time to trial: per BillJCo, the average time to trial in the Northern District of California is 45.2 months, compared to 25.9 for the Western District.

Another explicit acknowledgment of the Federal Circuit’s mandamus rulings came in Judge Albright’s consideration of the “local interest” factor. In particular, he cited that court’s November 2020 ruling from In re: Apple that there must be “significant connections between a particular venue and the events that gave rise to a suit”, as opposed to a general connection. Here, he found it to be important that the plaintiff’s headquarters are located in Flower Mound, “just over 100 miles from Waco”, finding that this was such an event: “But for that conduct, BillJCo’s patents would not have issued and this Action would not exist. That development is a significant event giving rise to this Action”. While the “scales would be balanced” if the only other relevant events included Apple’s R&D work on the accused technology in California, Judge Albright found that Apple’s “substantial general presence in this District” through its Austin campus tipped those scales toward transfer. This conclusion, argued Judge Albright, is consistent with Juniper I, which he characterized as only requiring a court to disregard a company’s presence for being “recent and ephemeral”.

After finding the other factors to be neutral (those concerning familiarity with the law and conflict of laws), Judge Albright denied transfer, having determined that more factors weighed toward transfer. Apple filed a petition for mandamus review the following month.

The Federal Circuit’s Mandamus Decision

Despite Judge Albright’s attempts to adapt his positions to current caselaw, the Federal Circuit nonetheless granted Apple’s petition—ruling that he “clearly abused [his] discretion in concluding that the private and public factors did not favor transfer here”.

The appellate court took particular issue with Judge Albright’s treatment of the private-interest unwilling witness factor, objecting on two key points. First, contrary to his finding that there was no indication that he could compel Jason Johnson to testify, the Federal Circuit found that “BillJCo has all along indicated that [he] is willing to testify in the Western District of Texas, rendering it error to give such weight to the court’s ability to compel his testimony”. Second, the Federal Circuit found that Judge Albright overemphasized that witness’s presence in Waco when compared to the “record as a whole, given the numerous potential witnesses Apple identified in Northern California. Under these circumstances”, the court concluded, “the private transfer factors clearly favor transfer”.

Turning to the public-interest factors, the Federal Circuit ruled that “none of these considerations is sufficient to override the striking imbalance in favor of transfer on the private interest factors”. More specifically, the court objected to Judge Albright’s handling of the “local interest” factor, again identifying two errors. First, the court held that it was wrong to give “equal consideration” to the presence of BillJCo’s office in (relatively) nearby Flower Mound: since this was located in another venue, the Eastern District of Texas, the office “gives plaintiff’s chosen forum no comparable local interest”. Second, the Federal Circuit determined that Judge Albright “assigned too much weight to Apple’s ‘substantial general presence in this District’” as a result of essentially ignoring the 2020 In re: Apple requirement that connections to a venue be tied to “the events that gave rise to a suit” (a requirement that he cited elsewhere in his decision, as noted above). Finding no “indication that Apple’s in-district offices had any involvement in the research, design, or development of the accused technology”, the Federal Circuit held that Judge Albright had committed a “clear abuse of discretion” by relying on the Austin offices for this factor—as a result, tipping it back toward transfer.

As for court congestion, the Federal Circuit was not swayed by Judge Albright’s focus on actual time to trial statistics as opposed to his aggressive scheduling practices, briefly holding that “precedent does not permit giving such speculation about whether a court can reach trial faster more weight than all the remaining factors” (citing its 2009 In re: Genentech decision)—apparently treating generalized patent trial statistics as speculation in this context.

For more on this ongoing tussle between the Federal Circuit and Judge Albright, see “Federal Circuit’s Wave of Judge Albright Transfer Reversals Keeps Rolling” (October 2021) and “Federal Circuit Orders More Transfers out of West Texas, Repeats Criticism of Weight Given to “Court Congestion” (November 2021).