Judge Albright Denies Google’s Motion To Transfer To Northern District of California and Excludes Unreliable Venue Witnesses’ Declarations

Rafqa Star, LLC v. Google, Inc., 6:22-cv-01207-ADA (W.D. Tex. 2023) is a case brought by Plaintiff Rafqa Star, LLC (Rafqa) alleging that Defendant Google LLC’s (Google) Navigate with Live View feature of Google Maps, along with “associated hardware and/or software” that “work in conjunction with” the Navigate with Live View feature of Google Maps, infringe U.S. Patent No. 11,145,215 (’215 Patent). The ’215 Patent is directed to methods, systems, and computer program products for providing feedback to a user of a portable electronic in motion.

Google moved to transfer venue from the Western District of Texas (the District”) to the Northern District of California (N.D. Cal.) for convenience, and on August 17, 2023, Judge Albright denied Google’s motion.

28 U.S.C. § 1404(a) provides in part that “[f]or the convenience of parties and witnesses, . . . a district court may transfer any civil action to any other district or division where it might have been brought.” Section 1404(a) places discretion in the district court to adjudicate motions for transfer according to an “individualized, case-by-case consideration of convenience and fairness.”

In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of the regional circuit. In the Fifth Circuit, “the preliminary question under § 1404(a) is whether a civil action ‘might have been brought’ in the [transfer] destination venue.” If yes, then the determination of “convenience” turns on several public and private interest factors, none of which is of dispositive weight.

First, the Court analyzed the declarations of (1) counsel for Google and (2) a Google Senior Staff Software Engineer and Technical Lead and Manager of the AR Experiences team who works on Navigate with Live View. Upon reviewing the declarations, “the Court noticed many discrepancies and vague assertions that appeared to be unreliable.”

The Google counsel’s declaration concerned an Engineering Program Manager at Google who Rafqa had first identified as a current Google employee with relevant knowledge in the District. Rafqa submitted a printout of the Google Engineering Program Manager’s LinkedIn profile dated April 23, 2023, indicating their location in Austin, Texas. Two months later, Google’s counsel filed a declaration relying on the LinkedIn profile of the Google Engineering Program Manager showing a “San Francisco Bay Area” location as of June 20, 2023. When the Court identified the discrepancy, Google submitted a declaration from the Google Engineering Program Manager that in October 2022 they “moved from Austin, Texas to Park City, Utah[, and] [s]ince then, I have worked remotely from Park City, Utah.”

The Google Engineer’s declaration concerned the location of relevant Google employees working on the accused technology. The Court found the declaration was ambiguous about the location of the employees as it identified the names of people who “report to” Google’s offices in the N.D. Cal. but that “‘[r]eports to’ does not necessarily mean ‘physically based at,’ ‘working from a physical office at,’ ‘located at,’ or even ‘present at.’ It has a range of meanings, primarily denoting hierarchical structures of authority and accountability.” The declaration failed to identify the location of the Google employees.

On July 25, 2023, the Court held an in-person hearing where both declarants testified as to the declarations and discrepancies so the Court could assess the credibility of both witnesses. In the August 17, 2023 order, the Court found them to be unreliable and struck both declarations.

Second, the Court noted that neither party contests that venue could be proper in the N.D. Cal. The Court found that venue would have been proper in the N.D. Cal. had the suit originally been filed there.

Third, the Court analyzed the private and public interest factors to determine whether the N.D. Cal. is a clearly more convenient forum than the Western District of Texas.

The private interest factors include: (1) the cost of attendance for willing witnesses; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the relative ease of access to sources of proof; and (4) all other practical problems that make trial of a case easy, expeditious, and inexpensive.

The public interest factors include: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (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 of the application of foreign law.

The Court first examined the private interest factors, beginning with the convenience of the witnesses, which the Court indicated is the most important factor in the convenience transfer analysis. Based on the declaration of the Senior Staff Software Engineer, Google contended that there are eleven witnesses with knowledge of the accused functionality in the N.D. Cal., but only identified seven who “report to” Google’s offices in the N.D. Cal. aside from the Engineer, and only the Engineer was identified as being located in the N.D. Cal. The Court excluded this information as unreliable.

The Court noted that it was “[m]ore troubling” that “Google[] attempts to limit the scope of relevant information to the AR walking navigation feature of Google Maps (ARWN) and to exclude AR Core and Street View.” Google claimed AR Core is “irrelevant” and refused to provide information on it during discovery and at the hearing the declarant testified that AR Core was not part of “navigate with live view” and is an “independent” product. The Court found these arguments to be “baseless” and lacking credibility, after the Senior Staff Software Engineer admitted that ARWN “depends on” AR Core’s basic features and capabilities and Google’s own documents state the ARWN feature on Google Maps requires AR Core to work. The Court also noted that Rafqa’s infringement contentions cited documents stating the accused devices “must be compatible” with AR Core to work and identified Street View as a core component of ARWN.

Regarding the declaration of the Google counsel, the Court found the circumstances surrounding the location of the Google Engineering Program Manager “suspicious” and that “Google incorrectly and misleadingly suggested that [the Google Engineering Program Manager] was located in the N.D. Cal.” At the hearing, the Google counsel admitted they did not investigate the Google Engineering Program Manager’s location despite the discrepancy because it was unnecessary because they believed the Google Engineering Program Manager did not have relevant information. The Court noted that the declaration, drafted by the Google counsel, did not say that the Google Engineering Program Manager lacks relevant knowledge and that “Google is not entitled to that inference.”

Rafqa identified that its sole member and manager, its patent prosecution counsel, and five of Google’s employees reside in Texas. The Court found that Rafqa identified at least seven willing witnesses for whom the W.D. Tex. would be more convenient than the N.D. Cal. and, because both of Google’s declarants were struck for lack of credibility, there was only one relevant witness located in the N.D. Cal. The Court found that the convenience of the witnesses weighs against transfer.

Google argued that the availability of compulsory process to secure the attendance of witnesses favored transfer because “two key prior artists, one key prior art company [Apple, Inc.], and one witness with potential knowledge about the licensing of the ’215 Patent are located in N.D. Cal.” Other than the manager of Oso IP, LLC, an entity with allegedly potential ties to Rafqa, the Court found the Google counsel did no investigation into the current location of the two prior artists and merely relied on the locations listed on the face of the application and patent. The Court only weighed the manager of Oso IP, LLC, and Apple’s location in N.D. Cal., the latter of which Rafqa did not dispute, in favor of transfer. Rafqa identified two former Google employees located in W.D. Tex. Although Google argued the employees were not relevant because neither worked on the accused product, the Court found Google has erroneously narrowed the scope of relevant accused technology in this case and found them relevant and located in W.D. Tex. With both Google and Rafqa identifying two relevant third-party witnesses that could be compelled, the Court found the availability of compulsory process to secure the attendance of witnesses factor was neutral.

Regarding the relative ease of access to sources of proof, the Court found that most of the relevant evidence was electronic and equally accessible in either forum. The Court also found that Google had not shown that there were more sources of proof in the N.D. Cal. because the evidence they relied on was contained in the Google Engineer’s stricken declaration. In contrast, Rafqa identified five Google employee witnesses in W.D. Tex. with relevant information. The Court concluded that this factor slightly weighs against granting transfer.

Regarding all other practical problems that make trial of a case easy, expeditious, and inexpensive, Google stated that neither the District nor N.D. Cal. had experience with the ’215 Patent, Rafqa had not filed any other suits in the District, and the case was still in the early stages of litigation. The Court agreed with the parties that this factor was neutral.

Next, the Court considered the public interest factors. Regarding administrative difficulties flowing from court congestion, the Court noted that the Federal Circuit recently determined that “it was a clear abuse of discretion [for this Court] to accord this factor any weight” where “[i]t appears undisputed that [the patentee] is not engaged in product competition in the marketplace and is not threatened in the market in a way that, in other patent cases, might add urgency to case resolution and give some significance to the time-to-trial difference,” quoting In re Google LLC, 58 F.4th 1379, 1383 (Fed. Cir. 2023). The Court found that “[b]ecause there is no evidence that Rafqa is engaged in ‘product competition in the marketplace,’ the Court finds that this factor is neutral even though the Court would have typically weighed this factor at least slightly against transfer.”

Regarding local interest in having localized interests decided at home, the Court found this factor was neutral because there are more relevant Google employees located in the District than in the N.D. Cal., work on the accused product occurs across the country, the Google Engineer admitted that a Google employee participated in testing the accused product in Austin, and Rafqa’s sole place of business was in Texas.

The parties and the Court agreed that the remaining factors were neutral.

In conclusion, the Court found that Google had not shown a single factor weighed in favor of transfer and therefore Google had failed to meet its burden to show that the N.D. Cal. was a clearly more convenient venue.