Just a few years ago, the Federal Circuit was locked in a frenzied back-and-forth with Western District of Texas Judge Alan D. Albright over his restrictive handling of convenience transfers. Starting in 2020, the court reversed him repeatedly on that issue in response to mandamus petitions, identifying a series of recurring legal errors in his substantive handling of the applicable transfer factors and faulting his tendency to sit on transfer motions for months on end. While that mandamus wave became a trickle by 2023 as Judge Albright began to adjust his approach, the Federal Circuit has continued to scrutinize his rulings on this issue—doubling down on its active posture last year with the apparent support of the Fifth Circuit. A recent pair of mandamus rulings applying that latest precedent against DoDots Licensing Solutions LLC—one granting Samsung’s request for a writ ordering transfer by Judge Albright to the Northern District of California, and the other denying the patent owner’s request to undo his transfer of a parallel case against Apple to the same venue—confirms that the Federal Circuit is still watching closely.

DoDots, which has disclosed Strategic Intellectual Solutions, Inc. as its parent, began its campaign with a 2018 suit against Lenovo in Delaware; that case was dismissed in January 2022, shortly after the Federal Circuit affirmed a set of unsuccessful IPRs against the asserted patents. The plaintiff then filed the West Texas litigation below against Apple and Samsung in May 2022, this time with fresh litigation funding in hand. Both companies, targeted over the provision of various smartphones, were sued alongside retailer Best Buy, claims against which were later (in July 2023) severed and stayed under the customer suit exception. In January 2023, both sets of defendants filed motions to transfer to the Northern District of California on convenience grounds.

The month after the defendants filed those transfer motions, the Federal Circuit issued its precedential decision in In re: Google. The ruling interpreted, for the first time, an October 2022 precedential opinion from the Fifth Circuit—the regional circuit that sets the law governing convenience transfers in Texas cases—that some had interpreted as requiring that the Federal Circuit show more deference to district judges’ discretion. In that opinion, In re: Planned Parenthood, the Fifth Circuit emphasized that “district courts have broad discretion in deciding motions to transfer”, and that under its Volkswagen I opinion, such transfer rulings may be overturned “only for clear abuses of discretion that produce patently erroneous results”. Per the Fifth Circuit, “[t]he standard for reversing that holding is high”.

However, the Federal Circuit concluded in Google that Planned Parenthood does not undercut its current approach. In Google, the court held that a clear showing that a venue is more convenient takes precedence over the district judge’s discretion. Even more significantly, the Federal Circuit determined that NPEs do not have an interest in getting cases to trial quickly—and that a district judge lacks the discretion to give undue weight to his district’s time to trial. Judge Albright has since applied that ruling as required, though not without offering criticisms—also filling the gaps with his own attempts to reconcile Fifth and Federal Circuit law.

Both the Google and Planned Parenthood decisions factored heavily into Judge Albright’s early-August rulings on the Apple and Samsung motions—though, as noted above, with very different results.

With respect to Samsung’s motion, the court agreed with Samsung that the factor contemplating the availability of compulsory process to secure the testimony of third-party witnesses—teams from Google and Samsung that developed the accused functionality and are based in the Northern District of California or Korea—favored transfer. However, Judge Albright held that the Western District of Texas would be more convenient for the witnesses, tipping that factor against transfer because employees of the Korean Samsung defendant (Samsung Electronics Co., Ltd.) who are based in that country would be only slightly more inconvenienced traveling to Texas than to California. He also held that the “practical problems” factor weighed against transfer because “judicial efficiency” would be improved by keeping the case in the same district as the copending Apple and Best Buy litigation. Finding all other factors neutral—determining, as required under Google, that DoDots’ NPE status meant that the court could not give relative court congestion any weight—Judge Albright held that the balance weighed against transfer. Samsung filed its mandamus petition challenging that ruling in September 2023.

In contrast, the court held that Apple had shown that the Northern District of California “is a clearly more convenient forum”. Judge Albright found in particular that the factor contemplating witness convenience weighed in favor of transfer, as Apple had shown that there were “a few relevant witnesses in or near” the Northern District, whereas DoDots had identified none in West Texas that were likely to testify. The factor related to ease of access to sources of proof also weighed toward transfer, he found, given that the relevant document custodians for certain relevant electronic evidence—Apple employees with appropriate credentials—were all based in the Northern District (that focus on custodians having been contemplated in Google). The court also found that the local interest factor weighed toward transfer because more of the development and marketing of the accused technology had occurred in the transferee venue. Judge Albright additionally found the compulsory process factor to weigh only slightly toward transfer, holding under Planned Parenthood that because none of the relevant witnesses had been shown to be unwilling, the court must give this factor less weight. However, Judge Albright found that the “practical problems” factor weighed against transfer due to the presence of the copending Samsung and Best Buy claims, similar to his holding in the Samsung suit, determining that the other factors were neutral. DoDots filed its own mandamus ruling contesting that decision in October.

Then came the Fifth Circuit’s In re: TikTok ruling, which reversed a transfer denial by Judge Albright in a copyright case, based on some of the same reasons cited by the Federal Circuit in patent matters. Some aspects of the holding dealt with circumstances already foreclosed by the Federal Circuit for patent cases—in particular, Judge Albright’s familiar tendency to delay his rulings on transfer motions while moving forward on other substantive matters. Similar to the Federal Circuit’s prior rebukes, the Fifth Circuit held that Judge Albright had abused his discretion on that basis by relying on post-motion events and case progress, respectively, for the practical problems and court congestion factors.

Additionally, the Fifth Circuit held that for the factor contemplating relative ease of access to sources of proof, which had not been specifically addressed in the Federal Circuit’s Google decision, the latter court’s approach is preferred: Similar to Federal Circuit rulings, the Fifth Circuit underscored the relative ease of access between the two venues and reminded Judge Albright that he must consider document custodians. The failure to follow a relative approach was also at issue in the Fifth Circuit’s ruling on the cost of attendance for willing witnesses factor, ruling that Judge Albright was wrong to discount defense witnesses in that case based on their location in China without further elaboration—holding that he should have done so under the court’s 100-mile rule—and finding that the presence of just one plaintiff witness in West Texas “cannot overcome the immense inconvenience that the majority of relevant witnesses would face if this case were to be tried in Texas”. However, for the factor concerning the availability of compulsory process, the Fifth Circuit may have bolstered Judge Albright’s approach, under which he has required transfer movants to prove that witnesses are unwilling to testify; and not that of the Federal Circuit, which has found that this factor may favor transfer even without a showing of unwillingness. Planned Parenthood essentially adopted Judge Albright’s approach, holding that this factor “receives less weight when it has not been alleged or shown that any witness would be unwilling to testify”; and TikTok affirmed that holding without further comment.

The Federal Circuit invoked the TikTok ruling in its two rulings on the Samsung and Apple petitions, both issued on December 14. In the six-page Samsung decision (In re: Samsung), the court found that Judge Albright had abused his discretion for the cost of attendance factor by underweighing the additional inconvenience of requiring Samsung’s Korea-based employees to travel to Texas. The Federal Circuit found that the circumstances were similar to TikTok: “As in TikTok, the presence of some Samsung employees in Eastern Texas, who have no technical knowledge of the accused functionality here, ‘cannot overcome the immense inconvenience that the majority of relevant witnesses would face if this case were to be tried in’ WDTX”. Additionally, the Federal Circuit found that Judge Albright had abused his discretion for the court congestion factor by finding that “judicial efficiency” would be improved by keeping the DoDots cases together in his district, noting that “[c]uriously”, he had granted transfer of the Apple case that same day. These factors tipped the decision toward transfer. The Federal Circuit also agreed with Judge Albright on compulsory process (finding that his conclusion that this factor favored transfer was “amply supported by the record”) and local interest (agreeing as well with his finding that this factor favored transfer), also finding no abuse of discretion through the factors he found to be neutral.

For its decision in the Apple case (In re: DoDots Licensing Solutions), the Federal Circuit affirmed Judge Albright’s ruling even more succinctly. The appeals court invoked TikTok for the sources of proof factor, though it did so in affirming Judge Albright’s finding that this factor favored transfer: As he had apparently skewed closer to the Federal Circuit’s prior approach here, properly contemplating the relative ease of access to electronic evidence based in part of the location of relevant custodians, the court found that his conclusion on this factor was consistent with TikTok. The Federal Circuit also found that it “was not error, let alone, a clear abuse of discretion”, that Judge Albright found that the willing witness factor weighed toward transfer, determining that he was correct to find that the Apple employees identified by DoDots “had limited or no knowledge of the accused functionality”, and that the Apple witnesses located in or near the Northern District of California had “relevant and material information”. The Federal Circuit also briefly dispensed with the plaintiff’s argument as to the compulsory process factor, finding that “DoDots has not made a persuasive case that the district court erred” in finding that the factor weighed slightly toward transfer.

Following those decisions, litigation has resumed in the Northern District of California before District Judge Jacqueline Scott Corley as to Samsung (a docket apparently having yet to be opened for Apple). In that case, on January 2, Samsung filed a motion to stay pending the outcome of IPRs that it filed against the three asserted patents (one petition each) in March 2023, which the Patent Trial and Appeal Board (PTAB) instituted in October. The following month, Apple also filed its own trio of IPR petitions against the patents-in-campaign, which the PTAB has yet to decide whether to institute as of the date of this report.

For more on the TikTok ruling, see “Fifth Circuit Venue Decision Reversing Judge Albright Could Bolster Federal Circuit’s Active Approach” (November 2023). Additional background on the Google and Planned Parenthood opinions, and on the broader back-and-forth between the Federal Circuit and Judge Albright, can also be found here.