Case: 21-182 Document: 21 Page: 1 Filed: 10/21/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: DISH NETWORK L.L.C.,
Petitioner
______________________
2021-182
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:19-
cv-00716-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Before O’MALLEY, REYNA, and CHEN, Circuit Judges.
PER CURIAM.
ORDER
This is the second petition for a writ of mandamus filed
by DISH Network, L.L.C. challenging the denial of its mo-
tion to transfer this case brought by Broadband iTV, Inc.
(BBiTV) in the United States District Court for the West-
ern District of Texas to the United States District Court for
the District of Colorado. When DISH first sought manda-
mus, we denied that request, stating that the district court
should reconsider its decision in light of In re Samsung
Electronics Co.,
2 F.4th 1371 (Fed. Cir. 2021) and In re Ap-
ple Inc.,
979 F.3d 1332 (Fed. Cir. 2020). On
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2 IN RE: DISH NETWORK L.L.C.
reconsideration, the district court again denied transfer.
We now grant mandamus and direct the district court to
transfer the case to the District of Colorado.
I
In December 2019, BBiTV filed suit in the federal dis-
trict court in Waco, Texas, accusing DISH’s set-top boxes
and mobile device applications providing video-on-demand
functionality of infringing four patents.
DISH moved to transfer the case to the District of Col-
orado pursuant to
28 U.S.C. § 1404(a). DISH emphasized
that its employees knowledgeable about the accused func-
tionality work from its headquarters in Colorado where the
accused software functionality was primarily designed and
developed. Appx195. DISH also noted that its offices in
Austin, Texas had no connection to the infringement alle-
gations. Appx192. DISH additionally identified prior art
witnesses and two former employees in Colorado involved
in the design and development of the accused products that
could only be compelled to testify by the District of Colo-
rado. Appx197–98. DISH further argued that BBiTV is a
non-practicing entity based in Hawaii and has no connec-
tion to the Western District of Texas. Appx192.
After analyzing the public and private interest factors
that traditionally govern transfer determinations, the dis-
trict court denied the motion on April 20, 2021. The court
found that the Texas forum could likely adjudicate the case
faster and that judicial economy concerns weighed against
transfer because BBiTV had four co-pending suits accusing
other set-top box providers of infringing the same patents.
The district court found that the rest of the factors were all
neutral. On balance, the district court concluded that
DISH had failed to show that the District of Colorado was
clearly more convenient for this litigation.
On May 28, 2021, DISH petitioned this court for a writ
of mandamus that would direct the district court to grant
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IN RE: DISH NETWORK L.L.C. 3
its motion to transfer. In June 2021, while DISH’s petition
was pending, this court issued its decision in Samsung,
which rejected the same reasoning relied on in the court’s
April 20, 2021 decision as improperly diminishing the con-
venience of witnesses in the transferee venue merely be-
cause of their party status. 2 F. 4th at 1379–1380. At the
same time, Samsung held that the court had erred in find-
ing a strong public interest favored retaining the case
based on the plaintiff’s pending action accusing a different
accused product of a different defendant of infringing some
of the same patents. Id. at 1380.
On August 13, 2021, this court denied DISH’s first pe-
tition for a writ of mandamus. Although we noted several
specific errors in the court’s analysis of the convenience of
the witnesses, practical problems, and local interest factors
based on our decisions in Samsung and Apple, we stated
that “[w]e do not view issuance of mandamus as needed
here because we are confident the district court will recon-
sider its determination in light of the appropriate legal
standard and precedent on its own.” In re DISH Network
L.L.C., 856 F. App’x 310, 311 (Fed. Cir. 2021). But on Sep-
tember 3, 2021, the court again denied transfer.
The court conceded that the willing witness factor
strongly favored transfer. But it again found that both fo-
rums had “significant connections to the events that gave
rise to this lawsuit” because DISH operates one of its re-
manufacturing facilities in Western Texas where it makes,
warehouses, sells, and services the accused products and
also operates sales and distribution centers in Western
Texas for the accused products. Appx3. The court simi-
larly found that the practical problems factor continued to
weigh strongly against transfer, because the asserted pa-
tents in this case and against the other defendants “are di-
rected to the same underlying technology, which includes
all three defendants’ accused set-top boxes and that receive
on-demand content and system to deliver on-demand con-
tent to a subscriber’s device.” Appx4–5.
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4 IN RE: DISH NETWORK L.L.C.
II
Our review of transfer rulings is governed by the law
of the regional circuit, which in this case is the Fifth Cir-
cuit. See In re TS Tech USA Corp.,
551 F.3d 1315, 1319
(Fed. Cir. 2008). Under Fifth Circuit law, the governing
principles are well settled. Section 1404(a) authorizes a
court to transfer a civil action “[f]or the convenience of par-
ties and witnesses, in the interest of justice[.]” Fifth Cir-
cuit law provides that a motion to transfer should be
granted if “the movant demonstrates that the transferee
venue is clearly more convenient.” 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)).
A district court enjoys broad discretion in making a
transfer determination. See In re Vistaprint Ltd.,
628 F.3d
1342, 1344 (Fed. Cir. 2010). We have explained, however,
that our deference does not exempt transfer determina-
tions from scrutiny on mandamus. See Samsung, 2 F.4th
at 1379. When a court’s denial of a motion to transfer un-
der section 1404(a) clearly contravenes governing legal
standards, we have issued mandamus to overturn the de-
nial of transfer. See, e.g., In re Juniper Networks, Inc., No.
2021-160, __ F.4th __,
2021 WL 4343309, at *7 (Fed. Cir.
Sept. 24, 2021); Apple, 979 F.3d at 1332. We conclude that
the court clearly abused its discretion here in finding that
DISH failed to make the requisite showing for transfer of
this case to the District of Colorado.
As in Samsung, Apple, and Juniper, the center of grav-
ity of this patent infringement action is clearly in Colorado,
not in Western Texas. First, the district court itself recog-
nized that the convenience of the potential witness factor,
which this court has said “is probably the single most im-
portant factor in transfer analysis,” In re Genentech, Inc.,
566 F.3d 1338, 1343 (Fed. Cir. 2009) (quoting Neil Bros.
Ltd. v. World Wide Lines, Inc.,
425 F. Supp. 2d 325, 329
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IN RE: DISH NETWORK L.L.C. 5
(E.D.N.Y. 2006)), strongly favors Colorado over Western
Texas.
Second, the district court erred in not weighing the
sources of proof factor in favor of transfer. It is undisputed
that DISH’s documents relevant to this case are stored at
its headquarters in Colorado and that no sources of proof
are in Western Texas. The district court found this factor
was neutral solely because DISH’s documents are “stored
electronically.” Appx505. That was error. “While elec-
tronic storage of documents makes them more widely ac-
cessible than was true in the past, the fact that documents
can often be accessed remotely does not render the sources-
of-proof factor irrelevant.” Juniper,
2021 WL 4343309 at
*6; see also Volkswagen, 545 F.3d at 316 (“That access to
some sources of proof presents a lesser inconvenience now
than it might have absent recent developments does not
render this factor superfluous.”).
Third, the district court erred in not weighing the com-
pulsory process factor in favor of transfer. DISH identified
prior-art witnesses and former employees knowledgeable
about the design and development of the accused product
in the District of Colorado. By contrast, no party identified
a non-party witness in Texas. The court’s finding that this
factor was neutral was based on clear legal error. The court
improperly substituted its own assumption that prior art
witnesses were unlikely to testify in place of a specific rea-
son to believe that those identified witnesses would not tes-
tify. See In re Hulu, LLC, No. 2021-142, __ F. App’x __,
2021 WL 3278194, at *3 (Fed. Cir. Aug. 2, 2021). Moreover,
the court improperly weighed against transfer that “the
movant has not alleged or shown that any witnesses are
unwilling to testify[.]” Appx505. We have stated that
“when there is no indication that a non-party witness is
willing, the witness is presumed to be unwilling and con-
sidered under the compulsory process factor.” In re HP
Inc., No. 2018-149,
2018 WL 4692486, at *3 n.1 (Fed. Cir.
Sept. 25, 2018).
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6 IN RE: DISH NETWORK L.L.C.
Fourth, when fairly applied, the local interest factor
also favors transfer. The court acknowledged that DISH’s
“current and former employees who designed the accused
product all acted and reside in Colorado (where DISH is
headquartered).” Appx3. In concluding that this factor
was neutral, the court relied on the fact that the Western
District of Texas is the location for “one of [DISH’s] two re-
manufacturing facilities” and “sales and distribution cen-
ters.”
Id. But the court itself recognized that there was no
indication that DISH employees “working in its remanu-
facturing and call center facilities may possess software or
hardware information relevant to this case.” Appx507–08.
Thus, even if these Texas-based operations may have some
connection to the accused set-top boxes here, that connec-
tion is insubstantial compared to Colorado’s significant
connection to the design and development of the accused
features. See Juniper,
2021 WL 4343309, at *5.
Fifth, the district court erred in weighing the practical
problems factor significantly against transfer. “[W]hile we
recognize that judicial economy can serve important ends
in a transfer analysis, we have rejected as a general prop-
osition that the mere co-pendency of infringement suits in
a particular district automatically tips the balance in the
non-movant's favor.” In re NetScout Sys., Inc., 2021-173,
__ F. App’x __,
2021 WL 4771756 at *5 (Fed. Cir. Oct. 13,
2021); Samsung, 2 F.4th at 1379–80; In re Google Inc., No.
2017-107,
2017 WL 977038, at *2 (Fed. Cir. Feb. 23, 2017);
In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir. 2013)
(“To be clear, we are not suggesting that the judicial econ-
omy of having the same judge handle multiple suits involv-
ing the same patents should dominate the transfer
inquiry.”).
In Samsung, we rejected a very similar argument that
a forum where no witnesses resided, no evidence was lo-
cated, and none of the conduct giving rise to the action took
place should nonetheless adjudicate the case because the
plaintiff had co-pending cases in the same district court
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IN RE: DISH NETWORK L.L.C. 7
involving the asserted patents. We explained that the un-
derlying accused products in those cases involved “entirely
different underlying application[s],” 2 F.4th at 1379, and
the cases therefore were likely to “result in significantly
different discovery, evidence, proceedings, and trial.” Id.
at 1380 (internal quotation marks and citation omitted).
We further explained that “to the extent that there are re-
maining overlapping invalidity or infringement issues, the
MultiDistrict Litigation Procedures exist to effectuate this
sort of efficiency.” Id. (internal quotation marks and cita-
tion omitted). Thus, even if keeping the cases together
might produce “incremental gains” in judicial economy, we
concluded in Samsung that they were “simply . . . not suf-
ficient to justify overriding the inconvenience to the parties
and witnesses.” Id. at 1380.
Our decision in Samsung cannot be squared with the
district court’s denial of transfer in this case. As in Sam-
sung, several of the private-interest and public-interest
factors strongly favor transfer. Moreover, each of BBiTV’s
co-pending suits in the Western District of Texas involve
different defendants with different hardware and different
software. Thus, as in Samsung, they are therefore likely
to involve significantly different discovery and evidence.
Applying the same analysis we applied in Samsung here
requires that we conclude that any judicial economy con-
siderations in keeping this case in Texas are insufficient to
outweigh the clear benefits of transfer in light of the imbal-
ance in the parties’ respective presentations on the other
private-interest and public-interest factors.
Finally, the district court found that the court conges-
tion factor weighed against transfer because its own “de-
fault schedule would lead to a trial date much sooner” and
because “transferring this case and establishing a new
schedule with a new presiding judge would cause greater
delay.” Appx510. But in Samsung, we explained that “a
court’s general ability to set a fast-paced schedule is not
particularly relevant to this factor,” 2 F.4th at 1380
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8 IN RE: DISH NETWORK L.L.C.
(citation and quotation marks omitted), and as in that case,
neither BBiTV nor the district court point to any reason
that such pace is important enough to be assigned signifi-
cant weight in this analysis. Moreover, such “garden-vari-
ety delay associated with transfer is not to be taken into
consideration when ruling on a § 1404(a) motion to trans-
fer.” Radmax, 720 F.3d at 289.
In sum, this case is a close cousin of our decisions in
Apple, Juniper, and Samsung. As in those cases, several of
the most important factors bearing on the transfer decision
in this case strongly favor the transferee court. While
BBiTV may prefer to litigate its cases in the Western Dis-
trict of Texas, that is not enough to overcome a transfer
motion directed to a district which is the home of evidence,
witnesses, and the conduct giving rise to the action. We
therefore grant DISH’s petition and direct transfer.
Accordingly,
IT IS ORDERED THAT:
(1) The motion for leave to submit a supplemental ap-
pendix is granted.
(2) The petition is granted. The district court’s order
denying DISH’s motion to transfer is vacated, and the dis-
trict court is directed to grant the transfer motion.
(3) All other pending motions are denied as moot.
FOR THE COURT
October 21, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
