Western District of Texas Alan D. Albright has frequently tangled with the Federal Circuit over his handling of convenience transfers during his time on the bench, resulting in an ongoing series of mandamus reversals that peaked in 2021 but have since largely subsided. Despite those prior rebukes, Judge Albright has continued to follow a broadly similar approach to certain aspects of the transfer analysis—including his ongoing tendency to discount inconvenience to willing witnesses. A notable example came earlier this year, when Judge Albright—in a just-unsealed decision denying an Apple transfer motion in litigation from Proxense, LLC—held that inconvenience to a defendant’s witness traveling from outside the district is mitigated when the witness can perform their work duties from a local office.

Such transfer orders tend to be a fact-intensive affair in Judge Albright’s courtroom. As a result of his back-and-forth with the Federal Circuit, Judge Albright instituted a lengthy, early phase of patent litigation under which any motion for a convenience transfer triggers a period of venue-related discovery, after which briefs are to be filed on the transfer issue based on what that discovery revealed. Judge Albright has shown, in recent orders denying transfer, that he will subject the facts uncovered during venue-related discovery to intense scrutiny, particularly discounting the persuasiveness of declarations submitted from defendant-side venue-related declarants.

Willing Witness Convenience

That was again the case here, in particular for Judge Albright’s analysis of the transfer factor concerning cost and convenience for willing witnesses. He approached Apple’s list of potential witnesses and supporting evidence with apparent skepticism—finding that while the defendant had pointed to more witnesses than Proxense, it had provided “less indicia” that those witnesses were directly relevant or likely to appear at trial. That skepticism appears to have led Judge Albright to conclude that any identified witnesses not satisfactorily shown to be essential are only being included to increase the number of witnesses in the transferee venue: Despite Apple’s discussion of those witnesses’ backgrounds as potentially relevant to the accused features, Judge Albright found that the defendant had not “delineate[d] which witnesses are vital, and which are being used as an attempt to bolster Apple’s argument”. To the contrary, Judge Albright indicated that in his view, “[t]his analysis should not be just stacking the scale with as many potentially frivolous witnesses as is possible to venue shop for either party”, holding instead that the “question can be simply framed as ‘what is the cost of attendance for willing witnesses that are likely to appear at trial?’”

Judge Albright’s analysis also addressed his purported difficulty in properly applying the 100-mile rule, which under Fifth Circuit law treats the inconvenience to willing witnesses that must travel more than 100 miles as increasing proportionally with additional distance. Specifically, he argued that it is “unclear” when to apply that rule as interpreted by the Federal Circuit, observing that the latter appellate court has held (in its 2020 In re: Apple decision) that the rule should not be applied “rigidly” where witnesses would have to travel a great distance to either venue. He also noted that the Federal Circuit has held that the analysis should focus on the “cost and inconvenience” of requiring witnesses to travel to a “distant forum and to be away from their homes and work for an extended period of time” (as it held in its 2021 In re: Google decision) but that where a significant distance must be traveled to either forums, slight differences in inconvenience “should not weigh heavily on the outcome of this factor (citing In re: Apple).

Here, in discounting the inconvenience to certain Apple witnesses based in the Northern District of California, Judge Albright held that inconvenience to willing witnesses is lessened when the defendant has offices in the transferor district. While Apple argued that the Federal Circuit’s 2023 In re: Samsung decision barred the court from weighing “a defendant’s presence in the transferor district . . . unless record evidence establishes that particular employees possess material and relevant information”, Judge Albright held that “[t]his stretches the rulings that are quoted in those cases”. Rather, he distinguished Samsung as being focused on non-technical employees, whereas under In re: Google he argues that the relevant inquiry is where these (ostensibly technical) Apple witnesses “can conduct their work”, which he characterized as “directly related to the cost of their attendance”. As such, Judge Albright held that “having a reliable location to work from nearby a prospective venue would help mitigate the cost of attendance for witnesses”, finding that employees would likely be able to access their documents electronically from personal computers or “shared means”, which “reduces the cost imposed on their work productivity”.

Moreover, with respect to the 2021 Google decision’s contemplation of the inconvenience for witnesses of being away from home, Judge Albright discounted this inconvenience and remarked that “common sense again rears its head”—holding that a witness for a major corporation is likely to be called away from their family for several days to prepare for a patent infringement trial regardless of whether the trial is being held at a local court or in a venue that requires travel. “While this may be mitigated by a trial closer to home, this Court finds it unlikely that the discrepancy is so great that the trial witnesses are only likely to lose time with family when traveling”.

Despite that “reality”, Judge Albright found that because Apple had “not presented strong indications” of why each of its Cupertino-based witnesses “are likely to appear at trial”, he determined that this “severely reduces the weight” given to those witnesses. After then finding that the different witnesses offered by Proxense presented a net neutral, Judge Albright concluded by finding that because relevant witnesses were found in both venues and that the balance was “nearly equal”, this factor is neutral.

Ease of Access to Sources of Proof

Judge Albright has also attempted to fill identified gaps between Fifth Circuit and Federal Circuit caselaw for certain factors—here including the factor contemplating the physical location of sources of proof. As he has done in a variety of other recent decisions, Judge Albright cited the Fifth Circuit’s holding, from its October 2022 In re: Planned Parenthood decision, that this factor is neutral where electronic evidence is equally accessible in either forum (an apparent endorsement of his prior approach), but noted that the Federal Circuit held in its April 2022 In re: Apple decision that it is wrong to find this factor neutral on that basis alone, and in its 2021 Google decision that the location of physical evidence is still relevant. As a result, similar to his approach in those prior cases, Judge Albright held that “[t]o the extent that these two holdings can be reconciled, the Court concludes that the location of physical evidence is more important to this analysis than the location of where electronic documents are typically accessed. However, the Court still considers physical locations of document electronic documents [sic] in its analysis of this factor”.

Much of the evidence cited by the parties is redacted here, but the portion of the decision that is publicly accessible indicates that Judge Albright—after discounting all evidence electronically available from a shared location, and finding that Apple had not shown any evidence on the accused products’ development was physically stored in California—found this factor to be neutral.

Compulsory Process

For certain other factors, Judge Albright has applied Planned Parenthood directly, including the factor related to the availability of compulsory process to secure witnesses’ attendance—for which Judge Albright here noted, as he has done previously, that the Fifth Circuit held in that case that this factor receives less weight when no showing has been made that a witness is unwilling to testify. Applying that standard in the present case, Judge Albright found that because neither party had made a showing that any witness is unwilling to testify, this factor is neutral—after briefly expressing skepticism toward the “multiple potential prior art inventors that Apple picked out and that conveniently live within the subpoena power in NDCA”.

All Other Practical Problems

As for the factor where a court considers “all other practical problems that make trial of a case easy, expeditious and inexpensive”, Judge Albright found that the balance tips clearly in favor of transfer because the court “has expended significant time and resources with related patents and cases”. Judge Albright also held that this determination is consistent with Federal Circuit guidance that gains in judicial economy cannot override considerations of witness convenience, because he had already found that factor to be neutral in this case (as detailed above).

Court Congestion

Judge Albright next addressed the factor concerning court congestion, under which the court weighs the relative docket congestion of the two venues by assessing time to trial. The Federal Circuit has repeatedly corrected how Judge Albright has assessed time-to-trial stats, but it was that court’s 2023 decision in In re: Google that has been a particular source of frustration for him on this issue. In Google, the court held that NPEs lack an interest in quick trials and that as a result, courts may not weigh the relative congestion of the two venues when considering transfer motions against a plaintiff that “is not engaged in product competition in the marketplace”.

As a result, Judge Albright found this factor neutral in “attempting to apply governing precedent”, given that NPE Proxense sells no products. However, he echoed prior rulings (e.g., here) in which he argued that this Federal Circuit precedent conflicts with Fifth Circuit caselaw—in particular, that circuit’s Planned Parenthood decision, which provides that “it was not an abuse of discretion for the district court to weigh court congestion against transfer based on just two rationales: 1) that its docket was less congested than the transferee venue’s; and 2) that the case ‘appear[ed] to be timely proceeding to trial’ before the transferor venue”. Since Proxense’s arguments were based solely on the “public interest in speedy resolution of disputes”, and because it did not allege that it “competes with Apple in the marketplace”, Judge Albright found that this conflict is “dispositive”—but held that nonetheless, he is bound to “follow this apparent contradiction. Accordingly, non-practicing entities in patent cases will be prejudiced relative to other plaintiffs. Court congestion will be awarded no weight in their cases”. Judge Albright thus found that factor to be neutral in this case.

As he did in another decision late last year, Judge Albright also strongly suggested that the plaintiff could potentially resolve this alleged conflict by filing a mandamus petition:

Should a petition for mandamus be filed, Proxense may raise any arguments to clear up any misapprehensions in Fifth Circuit and Federal Circuit precedent regarding the differential treatment of certain plaintiffs. If this ruling is brought to appeal, and the Federal Circuit finds that non-practicing entities are not subject to this prejudice, but that in the alternative the district courts are best situated to evaluate their own docket efficiency, as the Fifth Circuit held in In re Clarke, then this Court believes that the demonstrated docket efficiency of the Western District and of this Court in particular weighs against transfer.

Local Interest

Judge Albright also found that the factor contemplating the district’s local interest in resolving the dispute “leans in favor of transfer” because “it appears that more of the events at the center of this litigation occurred in NDCA”, finding that “[t]he research and development centralization of the accused features in NDCA drives this factor in favor of transfer relative to the initial alleged acts of infringement in WDTX”.

Transfer Denied

The court briefly found that the remaining factors—concerning familiarity with the governing law and conflict of laws—were also neutral.

Judge Albright then concluded by denying transfer, based on the totality of the factors—“practical problems” tipping against transfer”, “local interest” weighing toward transfer, and the others being neutral—and the surrounding circumstances.

For more on another characteristically fact-intensive transfer decision recently issued by Judge Albright, see “Judge Albright Strikes ‘Key New Evidence’, Denies Convenience Transfer” (February 2025).