This past December, the suit that USTA Technology, LLC filed in the Western District of Texas against Alphabet (Google) in November 2022 was dismissed with prejudice from its transferee district, the Northern District of California. Before granting Google its requested convenience transfer, District Judge Xavier Rodriguez denied the plaintiff’s motion for leave to conduct venue-related discovery, noting that “[a]n exhaustive search of Google’s activity, personnel, and suppliers in the Western District of Texas for the purpose of determining the relative convenience is not an efficient use of judicial resources”. For its five-pack of new cases, one filed against each of ASUSTek (4:24-cv-00512), AT&T (AT&T Mobility) (4:24-cv-00513), Lenovo (4:24-cv-00515), LG Electronics (LGE) (4:24-cv-00516), and Samsung (4:24-cv-00517) over the same patent, USTA Technology has turned to the Eastern District of Texas.

The sole asserted patent (RE47,720) belongs to a family of five. It issued to USTA Technology in November 2019 with an estimated priority date in October 2002. With it, the plaintiff targets a wide range of devices, ranging from networking devices (e.g., extenders, gateways, and routers) to mobile devices (e.g., laptops, smartphones, and tablets). At issue are the products’ compliance with the “wideband channel access features of the 802.11ac standard”. Before winning its transfer out of the Western District of Texas to the Northern District of California, Google filed an amended answer, adding a “Standards-Essential Patents” affirmative defense, pleading:

To the extent the ‘720 patent should have been disclosed as essential to a wireless network standard, including but not limited to any of the IEEE 802.11 standards, any damages should be limited in accordance with Plaintiff’s obligation to license the patents at fair, reasonable, and non-discriminatory rates, and Plaintiff’s claims are further barred under unclean hands or other equitable principles due to any failure to disclose the ‘720 patent and/or its predecessor U.S. Patent No. 7,483,711 to the relevant standard-setting organizations.

Google filed its motion to transfer the USTA Technology case against it in April 2023, in response to which USTA Technology sought an extension of the time to respond, citing the need to conduct venue-related discovery. Judge Rodriguez denied that motion, in part, setting out the following plan:

Plaintiff shall file a motion seeking leave to conduct venue discovery no later than May 12, 2023, or seek an extension of time to do so. In that motion, Plaintiff should clearly state the information that it intends to seek through its proposed discovery requests and explain how those requests bear on Defendant's transfer motion. Following the filing of Plaintiff's motion, the parties shall meet and confer to determine whether any agreements can be reached as to the necessity, scope, and timing of venue discovery.

Should that meet-and-confer not end in “complete agreement”, full briefing of the motion for leave to conduct the venue-related discovery would proceed. USTA Technology filed its motion for such discovery (under seal), which Judge Rodriguez denied, with the above note that “an exhaustive search of Google’s activity, personnel, and suppliers in the Western District of Texas for the purpose of determining the relative convenience is not an efficient use of judicial resources”, the court further noting that “because there is no reason to believe that the information Plaintiff seeks would affect the Court’s venue analysis—or any indication of fraud or misconduct in the representations offered in the affidavits submitted by Google personnel or by Defense counsel at the hearing—such discovery is unwarranted in this case”. (Google had opposed the motion for leave to conduct discovery with declarations from multiple Google witnesses attesting that no Texas employees worked on the accused Wi-Fi technology and that Google’s related chip suppliers reside in California.)

Judge Rodriguez then transferred the case, in July 2023. The suit against Google landed before Judge Rodriguez after a July 2022 general order in the Western District of Texas had patent cases filed in the Waco Division, where District Judge Alan D. Albright alone sits, distributed across a larger set of judges in the district, including Judge Rodriguez. Chief Judge Alia Moses appeared motivated to stop the concentration of patent cases in West Texas (and in the country) before Judge Albright. That July 2022 judge assignment order had that effect, and Judge Moses recently updated that order to enhance that effect, blocking “legacy cases” from being assigned to a prior judge by requiring “[p]arties seeking to consolidate patent cases contending all cases are related” to “file a motion with sufficient legal and factual justification in the court and with the judge presiding over the case sought to be removed”.

In Judge Albright’s courtroom, the filing of a motion for a transfer for convenience triggers an entirely new phase of patent litigation, conducted at the outset concerning venue over the course of several weeks and after which an entire briefing schedule, based on that venue-related discovery, is imposed. The contrasting approach taken by Judge Rodriguez in response to Google’s motion for a convenience transfer and USTA Technology’s request to conduct venue-related discovery further demonstrates the importance of judge assignment in the Western District of Texas.

The original development work for the ‘720 patent’s family was conducted at Raytheon BBN Technologies (prior to its acquisition by Raytheon in 2009, before which it was known as Bolt Beranek and Newman), which assigned the patent in a portfolio of 12 to Mirai Ventures, LLC in May 2017. Mirai Ventures—a Texas entity formed by Texas attorney Patrick E. Caldwell in September 2014—assigned nine of those assets to USTA Technology in January 2018. Mirai Ventures also assigned three of its former Ratheon assets to InnoBrilliance, LLC in April 2018. While USPTO assignment records have yet to reflect an assignment of the three assets away from InnoBrilliance, Nodal Technologies LLC, an NPE associated with patent monetization professional Jeffrey M. Gross, litigated two of those patents against Deutsche Telekom (T-Mobile) and Ericsson in its own campaign, running from May 2022 through March 2024. See “Two Former BBN Technologies Patents Asserted in Eastern District of Texas” (May 2022) for more on that campaign.

USTA Technology was formed in Delaware on January 19, 2018, with little to no information on its personnel or management publicly available. In court disclosures, the NPE states that it has no parent corporation and that no publicly held corporation owns 10% or more of its stock. While a connection remains unclear, USTA Technology provides a Longview, Texas address that has been associated with California monetization firm Oso IP, LLC and its many litigating entities, including Azure Networks, LLC; Balther Technologies, LLC; Jenam Tech, LLC; Power Mesh Networks, LLC; Stragent, LLC; and more.

After USTA Technology’s case against Google was transferred to the Northern District of California, which imposes on litigants heightened disclosure requirements, the plaintiff filed a certificate of interested parties, indicating “that as of [that] date, there is no conflict or interest (other than the named parties) to report”. The new USTA Technology cases have been assigned to District Judge Sean D. Jordan. Devlin Law Firm LLC provides representation. 6/7, Eastern District of Texas.