Context: Judge Alan D. Albright of the United States District Court for the Western District of Texas is no stranger to the United States Court of Appeals for the Federal Circuit (April 6, 2024 ip fray article), and earlier this month the appeals court affirmed (by means of a mandamus denial) his denial of a motion by Google to transfer venue to the Northern District of California in a case brought by patentee and former operating company Proxense (PDF). The Federal Circuit’s reasoning was based on holistically weighing at the various factors that can weigh for or against transfer, and recognized the importance of judicial economy, given that Judge Albright was already familiar with the patents (including that he had conducted claim construction) from a Proxense v. Samsung case that settled in 2023 right before trial.
What’s new: In a parallel Proxense v. Microsoft case, Judge Albright has also declined to order a transfer to another venue (in that case, the Western District of Washington). While the convenience for witnesses may have been gradually less strong in this case than in the Google case, judicial economy disfavored a transfer.
Direct impact: Microsoft could theoretically file a petition for writ of mandamus with the Federal Circuit, but considering the basis on which the Federal Circuit denied Google’s petition, that step may not be the very best next step.
Wider ramifications: The venue fights in these Google and Microsoft cases are now precedent with a view to other procedural disputes of this kind, particularly in cases where a federal judge is already familiar with at least some of the patents-in-suit to the extent of having construed disputed terms of the patent claims-in-suit and having adjudicated a summary judgment motion.
In its April 4, 2024 denial of Google’s mandamus petition, the Federal Circuit wrote:
“Judicial economy can serve important ends in a transfer analysis. See In re Vistaprint Ltd., 628 F.3d 1342, 1346 (Fed. Cir. 2010). Here, the district court reasonably found that judicial economy considerations disfavor transfer in light of the trial court’s familiarity with the patents and technology from its substantial involvement with prior litigation.”
In summarizing the parties’ positions, the Federal Circuit wrote:
“Proxense noted that the trial judge spent substantial time with prior litigation involving two of the asserted patents, including having conducted claim construction and resolved summary judgment motions before the case settled on the eve of trial. Appx010. See Proxense, LLC v. Samsung Elecs. Co., No. 21-cv-00210-ADA (W.D. Tex.).”
Judge Albright denied Microsoft’s motion two weeks later, and the public version of that order became available yesterday (Friday, April 26, 2024):
Unlike in the Google case where Judge Albright even found that the single most important witness was based in the Western District of Texas, other factors than judicial economy were more of a wash in the Microsoft case, with the willing witness factor even weighing (albeit not heavily) in favor of a transfer to Seattle.
Microsoft argued that judicial economy was neutral, but Judge Albright doesn’t view it that way. On this subject, his order does agree with Microsoft that there mere fact that another case involving some of the same patents is currently pending in the district (the Google case) should not “automatically tip the balance.” Of course, something that doesn’t automatically have a certain effect may still be relevant, but it’s not what ends the debate.
Arguments concerning patents asserted against Microsoft, but not previously against Samsung, got no traction with Judge Albright. He focused on the overlap and reached the conclusion that judicial economy counseled against a transfer:
“As stated in this Court’s order denying Google’s motion to transfer, however, the Court conducted claim construction on 12 claims on two of the patents-in-suit here and considered multiple summary judgment motions, Daubert motions, and motions in limine in the prior Proxense-Samsung litigation. Upon review of that order, the Federal Circuit stated, ‘the district court reasonably found that judicial economy considerations disfavor transfer in light of the trial court’s familiarity with the patents and technology from its substantial involvement with prior litigation.’ In re Google LLC, No. 2024-117, 2024 WL 1460003 (Fed. Cir. Apr. 4, 2024). Since this motion was filed, the Court has conducted claim construction in the Google case. Although Microsoft argues that the ‘infringement analysis in Samsung is unlikely to overlap with the facts here,’ it cannot plausibly maintain that judicial economy would be best served by sending this case to a new court, where a new judge would have to get up to speed on patents and technologies this Court is intimately familiar with. The Court finds this factor disfavors transfer.”
So, Microsoft’s motion was adversely impacted by the Federal Circuit’s denial of Google’s petition in two ways:
- The Federal Circuit’s reasoning, including (but not limited to) its recognition of the importance of judicial economy, supports Judge Albright’s reasoning that there wasn’t a strong case for a transfer (and arguably a stronger one against).
- While the co-pendency of the Google case with an overlap in the patents-in-suit is not single-handedly dispositive, it is yet another reason to find that judicial economy weighs in favor of keeping those cases in the Western District of Texas.
This is how the overall picture is summed up toward the end of the order:
“The Court finds that two private interest factors—practical problems that make trial of a case easy, expeditious, and inexpensive, and access to sources of proof—weighs against transfer because the co-pendant case and this Court’s experience and effort expended in the same patents. The Court also finds that the willing witnesses factor weighs slightly in favor of transfer. The remaining private interest factors are neutral. Further, each public interest factor is neutral. Despite the importance of the willing witness factor, the evidence and argument advanced by Microsoft failed to show that the WDWA is clearly more convenient.”
There is also a Proxense v. Apple case in the same district. But it was filed only about six weeks ago (March 23, 2024 ip fray article) and, therefore, not considered in the venue dispute between Proxense and Microsoft.