Case: 22-140 Document: 16 Page: 1 Filed: 05/23/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: GOOGLE LLC,
Petitioner
______________________
2022-140
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 2:19-
cv-00361-JRG, Chief Judge J. Rodney Gilstrap.
-------------------------------------------------
In re: WAZE MOBILE LIMITED,
Petitioner
______________________
2022-141
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 2:19-
cv-00359-JRG, Chief Judge J. Rodney Gilstrap.
-------------------------------------------------
In re: SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC.,
Petitioners
______________________
2022-142
Case: 22-140 Document: 16 Page: 2 Filed: 05/23/2022
2 IN RE: GOOGLE LLC
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 2:19-
cv-00362-JRG, Chief Judge J. Rodney Gilstrap.
______________________
ON PETITION
______________________
Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
ORDER
In these consolidated cases, Google LLC, Waze Mobile
Limited, and Samsung Electronics Co., Ltd. et al. (collec-
tively, “Petitioners”) seek writs of mandamus directing the
United States District Court for the Eastern District of
Texas to transfer these cases to the United States District
Court for the Northern District of California. AGIS Soft-
ware Development, LLC (“AGIS”) opposes. For the reasons
below, we grant the petitions and direct transfer.
I
A
AGIS is a subsidiary of Florida-based AGIS Holdings,
Inc. AGIS was assigned AGIS Holdings’ patent portfolio
and incorporated in the state of Texas shortly before AGIS
started to file infringement suits in the Eastern District of
Texas in 2017. AGIS shares an office in Marshall, Texas
with another subsidiary of AGIS Holdings where AGIS
maintains copies of its patents, assignment records, prose-
cution records, license agreements, and corporate records.
No employee of AGIS or a related AGIS entity works regu-
larly from that location.
Case: 22-140 Document: 16 Page: 3 Filed: 05/23/2022
IN RE: GOOGLE LLC 3
In the complaints underlying Appeal Nos. 2022-140
and 2022-142, AGIS has accused: (1) Google’s software ap-
plications that enable users of its products to form groups,
view the locations of other users on a map, and communi-
cate together, of infringing U.S. Patents 8,213,970;
9,408,055; 9,445,251; 9,467,838; 9,749,829 (“the ’829 pa-
tent”); and 9,820,123 (“the ’123 patent”); and (2) Samsung
of infringing the ’829 and ’123 patents for selling devices
that run Google’s accused applications and that use Sam-
sung’s messaging functionality in conjunction with those
applications.
Google and Samsung moved under
28 U.S.C. § 1404(a)
to transfer AGIS’s infringement actions to the Northern
District of California. They argued that the accused soft-
ware applications at the center of the cases were designed
and developed at Google’s headquarters within the North-
ern District of California; that potential witnesses and
sources of proof were in the Northern District of California
(including Google’s source code and technical documents,
Google’s employees that were knowledgeable of the accused
products, and prior art witnesses); and that, as a matter of
judicial economy, the cases should be transferred together
to be decided by the same trial judge.
The district court denied the motions. The court noted
that the Northern District of California had a comparative
advantage in being able to compel unwilling witnesses. On
the other hand, the court determined that court congestion,
judicial economy considerations, and local interest factors
all weighed against transfer. In particular, the court
weighed against transfer the fact that AGIS had previously
litigated the asserted patents before the same trial judge
up to the pretrial conference. The remaining factors, the
court determined, favored neither of the two possible fo-
rums. On balance, the court determined that Google and
Samsung had each failed to demonstrate that the Northern
District of California was clearly more convenient and ac-
cordingly denied transfer.
Case: 22-140 Document: 16 Page: 4 Filed: 05/23/2022
4 IN RE: GOOGLE LLC
B
In the third case before us, AGIS has accused Waze (a
wholly-owned subsidiary of Google) of similarly infringing
the ’829 and ’123 patents based on the Waze Carpool mo-
bile applications. The Waze case was actually initially con-
solidated with the Samsung and Google cases. Like Google
and Samsung, Waze moved to transfer to the Northern Dis-
trict of California. Waze argued that its employees respon-
sible for the accused applications, including its Managing
Director, are in the Northern District of California (as well
as Israel and New York) and that Waze does not have any
offices or employees in the Eastern District of Texas. Waze
also identified the same prior art witnesses as identified by
Google and Samsung in Northern California. Waze added
that its documents are physically present and/or electroni-
cally accessible from Northern California.
As with Samsung’s and Google’s motions, the district
court denied Waze’s transfer request. The district court
found that the compulsory process factor favored transfer.
But, as in the Samsung and Google cases, the court
weighed against transfer its prior familiarity with AGIS’s
patents and that it could likely hold a trial sooner. The
district court found that the remaining factors were neu-
tral. On balance, the district court similarly found that
Waze had failed to show that the Northern District of Cal-
ifornia was a clearly more convenient forum for the litiga-
tion than the Eastern District of Texas. Waze, Google, and
Samsung then each filed identical petitions seeking writs
of mandamus, and we consolidated the petitions for pur-
poses of briefing and resolution.
II
A
We follow regional circuit law on transfer motions un-
der
28 U.S.C. § 1404(a). See In re TS Tech USA Corp.,
551
F.3d 1315, 1319 (Fed. Cir. 2008). In deciding whether the
Case: 22-140 Document: 16 Page: 5 Filed: 05/23/2022
IN RE: GOOGLE LLC 5
district court should have granted transfer under
§ 1404(a), we ask whether “the movant demonstrate[d]
that the transferee venue is clearly more convenient” such
that the district court’s contrary determination was a clear
abuse of discretion. In re Radmax, Ltd.,
720 F.3d 285, 288
(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc.,
545
F.3d 304, 315 (5th Cir. 2008) (en banc) (internal quotation
marks omitted)).
The Fifth Circuit has identified private and public in-
terest factors relevant to determining whether a case
should be transferred under § 1404(a). The public interest
factors are: (1) the administrative difficulties flowing from
court congestion; (2) the local interest in having disputes
regarding activities occurring principally within a particu-
lar district decided in that forum; (3) the familiarity of the
forum with the law that will govern the case; and (4) the
avoidance of unnecessary problems of conflict of laws or in
the application of foreign law. In re Juniper Networks, Inc.,
14 F.4th 1313, 1317 (Fed. Cir. 2021). The private interest
factors are: (1) the relative ease of access to sources of
proof; (2) the availability of compulsory process to secure
the attendance of non-party witnesses whose attendance
may need to be compelled by court order; (3) the relative
convenience of the two forums for potential witnesses; and
(4) all other practical problems that make the trial of a case
easy, expeditious, and inexpensive.
Id. at 1316–17.
Mindful that the district court is generally better posi-
tioned to evaluate the evidence, we review a transfer ruling
for a clear abuse of discretion. See In re Vistaprint Ltd.,
628 F.3d 1342, 1344–46 (Fed. Cir. 2010); TS Tech,
551 F.3d
at 1319 (noting that a petitioner must demonstrate that the
denial was a “clear” abuse of discretion such that refusing
transfer produced a “patently erroneous result” (quoting
Volkswagen, 545 F.3d at 310 (internal quotation marks
omitted)); see also Juniper, 14 F.4th at 1318 (explaining
that “when a district court’s denial of a motion to transfer
amounts to a clear abuse of discretion under governing
Case: 22-140 Document: 16 Page: 6 Filed: 05/23/2022
6 IN RE: GOOGLE LLC
legal standards, we have issued mandamus to overturn the
denial of transfer” and collecting cases granting manda-
mus).
Petitioners argue that the district court’s failure to find
that the convenience factors strongly favor transfer in all
three cases was a clear abuse of discretion. They contend
that Northern California is far more easily accessible for
potential witnesses and sources of proof. Petitioners also
contend that the transferee venue has a strong local inter-
est in these cases while the Eastern District has no cog-
nizable interest. In this regard, Petitioners emphasize that
AGIS’s connections to the Eastern District are entitled to
minimal consideration because they are litigation-driven.
Petitioners further contend that any judicial economy con-
siderations that favor keeping these cases in a district in
which AGIS previously litigated its patents are insufficient
to outweigh the clear convenience of the transferee forum.
AGIS responds that the district court correctly denied
transfer in all three cases. AGIS argues that its own wit-
nesses either reside in, or would prefer to travel to, the
Eastern District of Texas. AGIS further contends that the
Eastern District is more convenient for accessing AGIS’s
patent-related documents and license agreements stored at
its offices in Marshall. AGIS further asserts that the dis-
trict court was correct to not weigh the local interest factor
in favor of transfer in the cases because of AGIS’s connec-
tions to the Eastern District. AGIS also contends that the
Eastern District has a comparative advantage both with
regard to the court congestion factor and with regard to ju-
dicial economy considerations given its prior handling of
AGIS’s patent infringement suits.
B
We agree with Petitioners that the Northern District of
California is clearly the more convenient forum in the
Google and Samsung cases. Given that Google’s accused
functionality is at the center of the allegations in both
Case: 22-140 Document: 16 Page: 7 Filed: 05/23/2022
IN RE: GOOGLE LLC 7
cases, it is not surprising that witnesses reside in Northern
California—the location of Google’s headquarters where
the accused technology was developed. Google and Sam-
sung each identified at least 5 Google employees in the
transferee forum with relevant and material information.
Samsung and Google further identified five prior art wit-
nesses in the Northern District of California. Transfer
would ensure not only that the forum would be more con-
venient for the balance of the witnesses, but also that a
court could compel their testimony if necessary.
The district court weighed against transfer the pres-
ence of an AGIS consultant, Eric Armstrong, in the Eastern
District as a potential witness on whether AGIS Holdings’
own products constituted invalidating prior art. 1 But Mr.
Armstrong appears to have disclaimed material knowledge
of those products before the applicable priority dates.
Appx547–550. And even accounting for Mr. Armstrong,
Samsung and Google identified far more witnesses in
Northern California. Moreover, while AGIS notes that sev-
eral of its potential witnesses in Austin, Colorado, Virginia,
and Florida would prefer to travel to Eastern Texas, the
district court here correctly recognized that these wit-
nesses were not entitled to significant weight because these
witnesses “would require hours of travel regardless.”
Appx006.
We also agree with Petitioners that the sources of proof
factor weighs in favor of transfer. Google explains, without
dispute from AGIS, that the technical documents and
source code relating to the accused functionality “are phys-
ically present and/or electronically accessible” in the
Northern District of California. Appx229. The district
court discounted the convenience of litigating these cases
1 The district court treated the presence of AGIS’s
expert witness in the Eastern District as entitled to little
weight.
Case: 22-140 Document: 16 Page: 8 Filed: 05/23/2022
8 IN RE: GOOGLE LLC
close to that evidence on the ground that Google could pro-
duce the information electronically in the Eastern District.
See, e.g., Appx004. But “while electronic storage of docu-
ments makes them more widely accessible than was true
in the past, that does not make the sources-of-proof factor
irrelevant.” Juniper, 14 F.4th at 1321.
The district court also weighed against transfer the
fact that AGIS stores its patent-related documents and cor-
porate records at its office space in Marshall, Texas. How-
ever, it appears that the relationship between the forum
and AGIS and its materials served no meaningful purpose,
not even to secure application of Texas substantive law to
AGIS, except to attempt to establish a presence for forum
selection for patent cases. AGIS leased its office just prior
to commencing litigation in the Eastern District. And the
company’s Texas office, where it stores the above-identified
documents, does not appear to be a place of regular busi-
ness; AGIS’s principals and employees do not work from
that office. AGIS therefore has no presence in Texas that
should be given significant weight in this analysis. See In
re Verizon Bus. Network Servs. Inc.,
635 F.3d 559, 562 (Fed.
Cir. 2011) (rejecting the argument that documents that
were nothing more than artifacts of litigation were entitled
to weight). 2
Turning to the public interest factors, we agree with
Petitioners that the district court failed to give full weight
to the Northern District of California’s comparative local
interest in resolving the claims against Google and Sam-
sung. These cases are analogous to the situation in Juni-
per where the accused products were designed and
developed in the transferee forum and plaintiff’s only con-
nections to the transferor forum were largely tied to
2 The court also pointed to potential documents from
Mr. Armstrong, but that witness testified that “all docu-
ments are on AGIS, I don’t have any.” Appx462.
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IN RE: GOOGLE LLC 9
bringing patent lawsuits in that district. We explained
that because the events forming the basis for the infringe-
ment claims occurred mainly in the transferee forum, it
had a substantial local interest in resolving the dispute,
whereas plaintiff’s patent-litigation-inspired connections
to its chosen forum were “not entitled to significant weight”
and “insubstantial compared to” defendant’s relevant con-
nections to the transferee forum. 14 F.4th at 1320. Simi-
larly here, the locus of events giving rise to AGIS’s
infringement suits occurred in the transferee forum where
Google designed and developed the accused functionality.
In contrast, AGIS’s minimal presence, apparently tied to
filing suit in the Eastern District where no AGIS employees
usually work, is insufficient to establish a comparable in-
terest in the transferor forum. 3 Thus, the court clearly
abused its discretion in weighing this factor as neutral.
3 The district court also weighed against transfer
that Samsung has “direct and substantial ties to this Dis-
trict,” Appx029, and “Google has several ties to this Dis-
trict,” namely, its facilities in Flower Mound, Texas where
Google says certain devices are repaired by an independent
company. Appx009–10. The problem with this analysis is
that it relies on Google’s and Samsung’s “general presence
in the [transferor] forum, not on the locus of the events that
gave rise to the dispute.” In re Google LLC, No. 2021-171,
2021 WL 4592280, at *5 (Fed. Cir. Oct. 6, 2021). We have
held that a party’s “general presence” in a particular dis-
trict is “not enough to establish a local interest” that weighs
against another forum’s local interest tied to events giving
rise to the particular suit. Juniper, 14 F.4th at 1320; see
Google,
2021 WL 4592280, at *5. Rather, what is required
for a relevant local interest to weigh in this factor is that
there be “significant connections between a particular
venue and the events that gave rise to a suit.” In re Apple,
Case: 22-140 Document: 16 Page: 10 Filed: 05/23/2022
10 IN RE: GOOGLE LLC
As for the remaining factors, we also agree with Peti-
tioners. While a court may consider its prior familiarity
with the asserted patents in assessing judicial economy
considerations for transfer, see Vistaprint, 628 F.3d at
1344, we have at the same time made clear that just be-
cause “a patent is litigated in a particular[forum]” does not
mean “the patent owner will necessarily have a free pass
to maintain all future litigation involving that patent in
that [forum],” id. at 1347 n.3; see also Verizon,
635 F.3d at
562 (“To interpret § 1404(a) to hold that any prior suit in-
volving the same patent can override a compelling showing
of transfer would be inconsistent with the policies underly-
ing § 1404(a).”). Here, any judicial economy gained in hav-
ing the district court preside over this case based on its
prior familiarity with some of the issues, from a prior claim
construction in a different case brought by AGIS, is clearly
insufficient in this case to outweigh the other factors that
clearly favor transfer.
Furthermore, while the Eastern District appears likely
to be able to schedule a trial in these cases faster than the
Northern District of California, that seems to rest not so
much on significant differences in docket congestion but, in
significant part, on the considerable delay in resolving the
transfer motions, which resulted in progress in the cases in
the interim. That progress hardly need go to waste upon
transfer. In any event, neither the district court nor AGIS
has identified any reason why a more rapid disposition of
the cases should be assigned such significant weight here
to outweigh the clear convenience of the transferee forum.
Under these circumstances, we conclude that the dis-
trict court clearly abused its discretion, leading to a pa-
tently erroneous result, when it denied Petitioners’
Inc.,
979 F.3d 1332, 1345 (Fed. Cir. 2020) (citation omit-
ted); see Google,
2021 WL 4592280, at *5.
Case: 22-140 Document: 16 Page: 11 Filed: 05/23/2022
IN RE: GOOGLE LLC 11
motions to transfer to the clearly more convenient forum,
the Northern District of California.
C
We reach the same conclusion in Waze’s case, in which
the district court’s analysis was materially the same. Like
the Google and Samsung cases, the “center of gravity” is in
Northern California. Juniper, 14 F.4th at 1323. Waze
identified more witnesses in the Northern District of Cali-
fornia who would be less inconvenienced by a trial in that
district and/or could be compelled to testify there. The dis-
trict court also recognized that Waze had identified sources
of proof in the Northern District of California but made the
same error, described above, in discounting that conven-
ience on the ground that the information could potentially
be made electronically accessible in the Eastern District.
Judicial economy considerations also do not override the
clear convenience of the transferee venue in this case; in-
deed, they support transfer given our decision that overlap-
ping cases against Google and Samsung are to be
transferred. And Petitioners persuasively argue that econ-
omy favors all three of these cases being decided together.
Accordingly,
IT IS ORDERED THAT:
The petitions are granted. The district court’s orders
denying transfer are vacated, and the district court is di-
rected to grant Google’s, Waze’s, and Samsung’s motions to
transfer to the Northern District of California.
FOR THE COURT
May 23, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
