White & Case Technology Newsflash
Since Judge Alan D. Albright took the bench in the Western District of Texas in September 2018, the number of patent litigation cases in that district has risen exponentially.
In the first half of 2020, the Western District of Texas surpassed the District of Delaware as having the most active patent litigations.1 This rise is due in part to Judge Albright's experience with patent litigation prior to taking the bench, his reputation in moving cases to trial more quickly than other districts, his comprehensive local rules governing patent litigation, and his reputation for denying motions to transfer pursuant to 28 U.S.C. § 1404(a). A recently filed amicus brief filed in one such case criticized Judge Albright's practices in denying motions for transfer. See In re Apple Inc., No. 2020-127, 2020 U.S. App. LEXIS 18899 (Fed. Cir. June 16, 2020).
That trend might be changing. On July 28, 2020, the Court of Appeals for the Federal Circuit ("Federal Circuit") issued an opinion directing Judge Albright to transfer a case involving Adobe to the Northern District of California pursuant to § 1404(a), providing some guidance for movants in future motions to transfer. See In re Adobe Inc., No. 2020-126, 2020 U.S. App. LEXIS 23803 (Fed. Cir. July 28, 2020).2
Background: SynKloud Technologies, LLC filed a patent infringement action against Adobe Inc. in the Western District of Texas asserting infringement of six patents. Adobe filed a motion to transfer to the Northern District of California, arguing it would be a more convenient venue under § 1404(a). While recognizing the Northern District of California "might be more convenient," Judge Albright denied Adobe's motion.3 In reaching this conclusion, Judge Albright acknowledged that the factors of "ease of access to sources of proof," "compulsory process," and "local interest" slightly favored transfer, while the factor of court congestion weighed in favor of retaining the litigation.4 His analysis of court congestion focused in particular on his experience in setting schedules and lack of difficulty in setting a trial within an anticipated window.5
On appeal, the Federal Circuit disagreed with the district court's transfer decision, citing several errors:
- The failure to accord proper weight to the convenience of the transferee venue—"when fairly weighed . . . compulsory process and sources of proof factors together tip 'significantly in' favor of transferring the case";6
- The failure to weigh the "cost of attendance for willing witnesses"7 factor in its discussion despite it favoring transfer. The presence of a significant number of Adobe employee witnesses and some of SynKloud's employees in Northern California made it more convenient;
- The mis-focus under the analysis of the congestion factor on the ability to set a schedule as opposed to analyzing "whether a trial may be speedier in another court because of its less crowded docket."8 The Federal Circuit found no appreciable difference in docket congestion between the forums to warrant consideration under this factor; and
- The ultimate weighing of the various factors "where 'several relevant factors weigh in favor of transfer and others are neutral, the speed of the transferee district court should not alone outweigh all of those factors.'"9
The Adobe decision provides two main takeaways regarding motions to transfer:
- Movants should focus on demonstrating that a majority of witnesses are in the desired transferee forum and are subject to that forum's compulsory process, as this will be given significant weight. Movants should ensure they analyze not just the locations of their own witnesses, but also the locations of opposing party's witnesses and potential third party witnesses, such as inventors of the asserted patents; an
- Any analysis of court congestion should focus on whether a trial is likely to actually be speedier in another court because of its less crowded docket, and not just whether the court sets a schedule with a faster time to trial. Parties should also understand that court congestion in the transferee forum alone might not be enough if the other factors weigh in favor of transfer.
1 Pedram Sameni, Patexia Insight 85: Patent Litigation Up 27% in Q2 of 2020, Patexia, July 23, 2020, https://www.patexia.com/feed/patexia-insight-85-patent-litigation-up-27-in-q2-of-2020-20200722
2 In a related case where defendant Dropbox had filed a similar petition, and in light of the court’s intervening decision in Adobe, the court declined to find Dropbox had no other adequate means to attain the relief it desires without Dropbox first moving the district court for reconsideration of its orders denying Dropbox’s motion for transfer. See In re Dropbox, Inc., No. 2020 -130, 2020 U.S. App. LEXIS 23806 (Fed. Cir. July 28, 2020).
3 Id. at *5.
4 Id. at *3-4.
5 Id. at *5
6 Id. at *7
8 Id. at *9
9 Id. at *8