Western District of Texas Judge Alan D. Albright may no longer be the nation’s top district court patent judge as of Q1 2023, but his back-and-forth with the Federal Circuit, which has repeatedly reversed him on the issue of convenience transfer motions, remains. Some had expected the Fifth Circuit’s October 2022 In re: Planned Parenthood ruling to tip that back-and-forth in Judge Albright’s direction, since that decision appeared to require more deference to district judges on venue. This February, though, the Federal Circuit held otherwise, doubling down on its prior approach in In re: Google. Judge Albright has now acknowledged the binding impact of that holding, though not without offering a passing criticism. In refusing to reverse a prior order granting transfer of a Motion Offense, LLC case against Alphabet (Google), Judge Albright remarked that the Federal Circuit’s determination in Google that NPEs lack an interest in getting cases to trial quickly “appears to be made out of whole cloth”.

Motion Offense, LLC has filed yet another case against Dropbox (6:23-cv-00303), asserting the latest member to issue in the large filesharing family of patents at issue in multiple prior suits. One of those, filed by Dropbox against Motion Offense in August 2019 in the District of Delaware, was transferred to the Western District of Texas, where Judge Alan D. Albright is preparing to try the case to a jury on May 15. The court is in receipt of multiple motions (e.g., dispositive, in limine, etc.), having this past week docketed a memorandum explaining the reasoning behind its June 2, 2021 claim construction order.

The Federal Circuit has for the first time interpreted a closely watched decision on venue from the Fifth Circuit, the regional circuit that determines the applicable law governing convenience transfers in Texas patent cases. That October 2022 ruling, In re: Planned Parenthood, appeared to depart from the Federal Circuit’s prior take on issues central to the analysis of such transfer motions, including the location of evidence, the cost of attendance for witnesses, and the district judge’s overarching discretion over such matters. However, the Federal Circuit’s precedential In re: Google opinion, issued on February 1, argues 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. The opinion reversed another transfer denial from Western District of Texas Judge Alan D. Albright, and comes months after Judge Albright began attempting to fill the gap with his own reading of Planned Parenthood.

When district courts decide patent matters, they must typically look to the Federal Circuit: as the appellate court with exclusive jurisdiction over patent litigation, its precedential decisions bind the lower courts on patent-related issues. However, convenience transfers present an interesting wrinkle: since they are governed by a venue statute not specific to patent cases, the Federal Circuit must apply the law of the applicable regional circuit court when resolving disputes over such motions. As a result, for appeals of convenience transfer decisions from the Western District of Texas, it is the law of the Fifth Circuit—albeit, as interpreted by the Federal Circuit—that applies. It is for this reason that a new precedential venue ruling from the Fifth Circuit, In re: Planned Parenthood, could force the Federal Circuit to rethink its approach to a variety of issues, including district judge discretion, the location of evidence, and the cost of attendance for witnesses, that have been at the center of the latter court’s series of mandamus rulings involving Waco District Judge Alan D. Albright. The impact of that decision is now being debated by two parties in his court, Motion Offense LLC and Google, while two other plaintiffs linked to Motion Offense have hit the defendant with new complaints of their own.

Last October, in response to a petition for a writ of mandamus filed by Alphabet (Google), the Federal Circuit ordered District Judge Alan D. Albright to transfer a case filed by Jenam Tech, LLC from West Texas to Northern California. The next day, the court did so, transferring that case, as well as a second one between the same parties to the Northern District of California, which has since consolidated the two actions under a single case number (4:21-cv-07994). A likely direct consequence of that transfer is the stay that District Judge Jon S. Tigar imposed in that consolidated case in late March, to allow certain Patent Trial and Appeal Board (PTAB) proceedings to run their courses. Jenam Tech has since filed four new cases against Google in the same district (5:22-cv-02836, 5:22-cv-02837, 3:22-cv-02838, 3:22-cv-02839), over more recent patents in the same family, pleading that “Jenam will promptly move to stay . . . under the terms governing the stay currently in place in the two consolidated related cases”.

Digital Cache, LLC has filed another round in its campaign over digital storage patents acquired from Intellectual Ventures LLC (IV) in May 2020. The latest defendants are Acer (6:22-cv-00182), ASUSTek (6:22-cv-00183), Fujitsu (6:22-cv-00184), and HP (6:22-cv-00180), each sued in the Western District of Texas; and Lenovo (1:22-cv-00225), sued in the District of Delaware. Infringement allegations target the provision of computers with solid-state drives (SSDs) that support the TRIM command and garbage collection features, with Lenovo further alleged to infringe through the provision of desktops with hard disk drives (HDDs) that include air recirculation filters.

In the span of a single week, the Federal Circuit has reversed two more decisions from District Judge Alan D. Albright that denied convenience transfers, granting mandamus for the defendants in two separate cases: one filed by Jenam Tech, LLC against Google and the other filed by Correct Transmission LLC against Juniper Networks. These latest rulings continue a wave of mandamus writs issued in the past few weeks by the Federal Circuit against Judge Albright, the latest skirmish in a long-running battle over his handling of transfer motions that began in mid-2020. While Judge Albright briefly appeared to begin following the court’s guidance earlier this year, these subsequent appellate reversals indicate that the Western District of Texas judge may not intend to change course after all.

In June, the USPTO issued another patent in a family that Motion Offense, LLC and related entities have been asserting in litigation. Roughly one month later, the plaintiff has sued Dropbox (6:21-cv-00758) in an original complaint and Alphabet (Google) in an amended complaint, over that new patent, both complaints filed in the Western District of Texas. File sharing features within the Dropbox platform—including Dropbox Plus, Dropbox Professional, Dropbox Business Standard, and Dropbox Business Advanced—are the accused products in the new case, which joins litigation between Motion Offense and Dropbox already underway in West Texas.

Giga-Byte Technology (6:21-cv-00719), Hon Hai Precision Industry (Sharp) (6:21-cv-00733), and Micro-Star International (6:21-cv-00732) are the latest defendants to be added to the sole litigation campaign that Digital Cache, LLC launched in February 2021. The plaintiff asserts a single patent received from Intellectual Ventures LLC (IV), generally related to “overwriting nonvolatile memory data”, with the defendants targeted over laptops with solid-state drives (SSDs)—manufactured by Kingston Technologies (Micro-Star), Samsung (Sharp), and Transcend Information (Giga-Byte)—that support the TRIM command and garbage collection features.

In June, Digital Cache, LLC added suits against ADATA Technology (6:21-cv-00584), NetApp (1:21-cv-00926), Panasonic (6:21-cv-00676), and Pure Storage (1:21-cv-00927) to the campaign that it began this past February. Asserted across this litigation are four data management patents, received in a portfolio of over 40 from Intellectual Ventures LLC (IV) in May 2020, with each of the ten defendants accused of infringing one of the four, a patent broadly directed to overwriting nonvolatile memory data.