Case: 21-178 Document: 17 Page: 1 Filed: 11/15/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: GOOGLE LLC,
Petitioner
______________________
2021-178
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00804-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Before DYK, PROST, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
The United States District Court for the Western Dis-
trict of Texas denied Google LLC’s motion to transfer the
case to the United States District Court for the Northern
District of California based on its expected time to trial de-
spite the court itself finding that the transferee venue was
otherwise more convenient. Because that determination
amounts to a clear abuse of discretion, we grant mandamus
directing the district court to transfer.
Case: 21-178 Document: 17 Page: 2 Filed: 11/15/2021
2 IN RE: GOOGLE LLC
I
In September 2020, Express Mobile, Inc. filed this suit
against Google in the Western District of Texas, accusing
certain functionalities in Google Ads, Google Slides, and
Google Docs of infringing five of Express Mobile’s patents.
Google moved to transfer the case under 28 U.S.C.
§ 1404(a), arguing that the Northern District of California
was a more convenient forum. Google emphasized that its
employees who are knowledgeable about the accused func-
tionalities are located in the Northern District of California
and New York. Although Google maintains offices in Aus-
tin, Texas, Google stated that its employees from those of-
fices had not worked on the design or development of the
accused functionalities. Google also argued that Express
Mobile is a non-practicing entity headquartered in the
Northern District of California with no ties to the Western
District of Texas. Google further argued that judicial econ-
omy considerations favored transfer because Express Mo-
bile had asserted the same patents in multiple suits filed
in the Northern District of California. In light of this infor-
mation, Google asked the district court to transfer its case
to the Northern District of California.
After analyzing the private and public interest factors
that traditionally govern transfer determinations, the dis-
trict court denied Google’s motion, finding that these fac-
tors did not favor transfer to the Northern District of
California. In particular, the court agreed that the North-
ern District of California was more convenient for potential
party witnesses, had more of a local interest in the case,
and had an advantage over the Western District of Texas
in being able to compel non-party witnesses. But the dis-
trict court found that the Western District of Texas could
likely adjudicate the case faster. The court determined that
the remaining four factors were neutral. On balance, the
court concluded that Google had not shown that the trans-
feree venue was clearly more convenient.
Case: 21-178 Document: 17 Page: 3 Filed: 11/15/2021
IN RE: GOOGLE LLC 3
Google then filed this petition. We have jurisdiction un-
der 28 U.S.C. §§ 1651 and 1295.
II
Under the well-established standard for obtaining
mandamus relief, the petitioner must: (1) show that it has
a clear and indisputable legal right; (2) show that it does
not have any other avenue to obtain relief; and (3) convince
the court that “the writ is appropriate under the circum-
stances.” Cheney v. U.S. Dist. Ct.,
542 U.S. 367, 380–81
(2004). For transfers under § 1404(a), this test “essentially
reduces to the first factor” because “the possibility of an ap-
peal in the transferee forum following a final judgment . . .
is not an adequate alternative,” and “an erroneous transfer
may result in judicially sanctioned irreparable procedural
injury.” In re Apple Inc.,
979 F.3d 1332, 1336–37 (Fed. Cir.
2020) (citations omitted). Accordingly, the issue on appeal
is whether Google has shown a clear and indisputable right
to issuance of the writ.
Motions to transfer are decided by weighing private
and public interest factors to compare the relative conven-
ience of the venues. The private interest factors are “(1) the
relative ease of access to sources of proof; (2) the availabil-
ity of compulsory process to secure the attendance of non-
party witnesses whose attendance may need to be com-
pelled by court order; (3) the relative convenience of the
two forums for potential witnesses; and (4) all other prac-
tical problems that make the trial of a case easy, expedi-
tious, and inexpensive.” In re Juniper Networks, Inc.,
14
F.4th 1313, 1316–17 (Fed. Cir. 2021). 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.”
Id. at 1317. We review
Case: 21-178 Document: 17 Page: 4 Filed: 11/15/2021
4 IN RE: GOOGLE LLC
transfer determinations in cases arising on mandamus
from district courts in the Fifth Circuit for a clear abuse of
discretion. In re TS Tech USA Corp.,
551 F.3d 1315, 1318–
19 (Fed. Cir. 2008).
A
The district court found that several of the public and
private interest factors favored transfer. Those determina-
tions were amply supported by the record.
The court correctly concluded that the compulsory pro-
cess factor favors transfer. Most importantly, two former
Express Mobile employees who are named inventors of the
asserted patents reside in the Northern District of Califor-
nia. By contrast, the court found no non-party witnesses in
the Western District of Texas who would be likely to testify
at trial, Express Mobile having only pointed to companies
that were “sources of alleged prior art” and had offices in
the Western District of Texas. The court thus correctly
found that the compulsory process factor at least slightly
favors transfer. See In re Pandora Media, LLC, No. 2021-
172,
2021 WL 4772805, at *3 (Fed. Cir. Oct. 13, 2021) (find-
ing this factor favored transfer because the petitioner iden-
tified potential third-party witnesses residing in the
Northern District of California and neither party identified
third-party witnesses subject to the subpoena power of the
Western District of Texas).
The court also correctly weighed the willing witness
factor in favor of transfer. The court noted that the North-
ern District of California would be more convenient for
Google employees knowledgable about the design and de-
velopment of the accused functionalities as well as Express
Mobile’s founder and CFO. The district court also correctly
decided not to give significant weight to witnesses in New
York who would spend considerable time and expense trav-
eling to either venue. See Apple, 979 F.3d at 1342. Finally,
the court correctly gave no weight to Google employees in
Austin, Texas that Express Mobile attempted to link to the
Case: 21-178 Document: 17 Page: 5 Filed: 11/15/2021
IN RE: GOOGLE LLC 5
accused products based solely on their online profiles and
with no further explanation or detail.
The district court was also correct in finding that the
local interest factor favors the transferee venue. It is un-
disputed that Google researched, designed, and developed
the accused functionalities in the Northern District of Cal-
ifornia and that no underlying events giving rise to this
suit occurred in the Western District of Texas. Appx19.
“That is sufficient to give the transferee venue a greater
localized interest in the dispute, which favors transfer.” Ju-
niper, 14 F.4th at 1319–20 (citing In re Samsung Elecs. Co.,
2 F.4th 1371, 1380 (Fed. Cir. 2021) and In re Acer Am.
Corp.,
626 F.3d 1252, 1256 (Fed. Cir. 2010)). Moreover, the
transferee venue is home to Express Mobile, three named
inventors, and two patent prosecuting attorneys.
B
Though the district court weighed the above factors
correctly, it erred in finding that the sources of proof and
practical problems factors were neutral.
Express Mobile appears to keep its relevant documents
in the transferee venue. More imporantly, Google attested
that relevant documents were created and maintained by
Google in the Northern District of California. Appx546. Cit-
ing one of its own prior decisions, the district court con-
cluded that this factor was neutral only by discounting
those Google documents because “where documents are
maintained is not equivalent to where they are stored.”
Appx7 (citing Jenam Tech, LLC v. Google LLC, No. 6-20-
CV-00453-ADA,
2021 WL 2870694, at *4 (W.D. Tex. July
8, 2021), vacated by In re Google LLC, No. 2021-171,
2021
WL 4592280 (Fed. Cir. Oct. 6, 2021)). This factor concerns
“ease of access to sources of proof,” In re Radmax, Ltd.,
720
F.3d 285, 288 (5th Cir. 2013) (emphasis added). The district
court erred by analyzing only the location of servers where
documents are stored, rather than also considering the lo-
cation of document custodians and location where
Case: 21-178 Document: 17 Page: 6 Filed: 11/15/2021
6 IN RE: GOOGLE LLC
documents are created and maintained, which may bear on
the ease of retrieval. This factor appears to slightly favor
transfer.
The district court erred in weighing the practical prob-
lems factor as neutral. Considerations of judicial economy
are generally based on the situation at the time the suit
was filed. In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir.
2013). Judicial economy arising from multiple lawsuits
filed on the same day in the same venue may be relevant,
id., but such co-pending suits are not to be over-weighed if
they are also the subject of motions to transfer, In re Google
Inc., No. 2017-107,
2017 WL 977038, at *2 (Fed. Cir. Feb.
23, 2017). Until Express Mobile filed this suit, only the
Northern District of California had been home to cases in-
volving the same asserted patents, breeding decisions and
familiarity with the issues. Moreover, as of the time the
district court denied Google’s motion, all of Express Mo-
bile’s co-pending actions in the Western District of Texas—
filed the same day as the Google action—were subject to a
motion to transfer venue (three to the Northern District of
California and one to the Austin division of the Western
District of Texas). The district court has since transferred
two of these cases to the Northern District of California.
This factor may not weigh heavily, see In re NetScout Sys.,
Inc., No. 2021-173,
2021 WL 4771756, at *5 (Fed. Cir. Oct.
13, 2021) (discounting co-pending lawsuits that involve the
same patents but different defendants and different ac-
cused products), but any judicial economy considerations in
having one trial judge handle lawsuits involving the same
patents and technology do favor the Northern District of
California.
C
Finally, the district court erred in weighing the court
congestion factor “heavily against transfer.” Appx19. The
court based its finding on data showing a modestly faster
time to trial in its patent cases compared to the average
Case: 21-178 Document: 17 Page: 7 Filed: 11/15/2021
IN RE: GOOGLE LLC 7
time to trial in the Northern District of California, and the
fact that it has continued to hold jury trials in the Western
District of Texas during the COVID-19 pandemic. Appx18–
19.
The district court did not adequately justify the heavy
weight it assigned to this factor. We have held that when
other relevant factors weigh in favor of transfer or are neu-
tral, “then the speed of the transferee district court should
not alone outweigh all of those other factors.” In re Genen-
tech, Inc.,
566 F.3d 1338, 1347 (Fed. Cir. 2009). And where,
as here, the district court has relied only on time to trial to
support its conclusion as to court congestion, we have char-
acterized this factor as “speculative.”
Id. (citation omitted);
see also Apple, 979 F.3d at 1344 n.5. However, the time to
trial statistics provided in this case, unsupported by addi-
tional facts such as the number of cases per judge and the
speed and availability of other case dispositions, cannot
alone weigh “heavily against transfer.” This factor is
plainly insufficient to warrant keeping this case in the
Texas forum given the striking imbalance favoring transfer
based on the other convenience factors.
Accordingly,
IT IS ORDERED THAT:
(1) The petition is granted. The district court’s order
denying Google’s motion to transfer is vacated, and the dis-
trict court is directed to grant the transfer motion.
(2) Express Mobile’s motion for leave to file a supple-
mental appendix is denied.
FOR THE COURT
November 15, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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