Federal Circuit Decides Three Mandamus Challenges: Sending a Waco Patent Case Filed Against Hulu to California, But Keeping Patent Cases Filed Against Apple and Google in Waco

It’s moving day for Hulu with the Federal Circuit directing Judge Albright (Waco) to transfer a patent case against Hulu to the Central District of California. The In re Hulu, LLC 2021-142 opinion (Fed. Cir. Aug. 2, 2021) is another in a growing list of successful mandamus challenges seeking to stream cases out of Waco. This opinion may be the one to watch though, as it provides some of the broadest rationale. The opinion weighted the convenience of California-based party-related witnesses and prior art witnesses, regardless of whether the witnesses were shown as unwilling to testify in Texas, and noted that there were no potential witnesses in Waco. The opinion also discounted Waco’s ability to set an earlier trial date. A tabular point-counter-point summary of the findings is included below, followed by a list of the notable mandamus challenges seeking transfer out of Waco. 

Transfer Analysis

 

Two other transfer hopefuls, Apple and Google, were not so lucky. The In re Apple Inc. 2021-147 opinion (Fed. Cir. Aug. 4, 2021) found that Judge Albright’s decision denying transfer “[t]o be sure . . . was not free of error” and found that the decision improperly diminished the importance of the convenience of witnesses merely because they were employees of the parties.” Similarly, the In re Google LLC, 2021-144 opinion (Fed. Cir. Aug. 4, 2021) stated that “we may have our doubts as to whether Western Texas is just as convenient as Northern California for prospective evidence and witnesses.” Nevertheless, both opinions found that the movants failed to show entitlement to mandamus relief, while observing that potential witnesses resided in the Waco District.    

For those of you interested in the timing of these things: the Hulu and Apple mandamus opinions issued eight months after the initial opening briefs were filed in the district court. The Google mandamus opinion took a bit longer, issuing about 14 months after the initial transfer motion was filed. Judge Albright took four to five months to decide Hulu and Apple’s motions, and about 11 months to decide Google’s. Finally, the transfer motions here did not slow down the claim construction process, and a Markman hearing was held in each case either while the transfer motion was pending or right after the transfer motion was decided. For the Hulu case though, the hearing minutes noted that “[a]fter the claims terms were done parties announced that there is a motion to transfer that is pending and ripe for a ruling. The Court told parties that an order on that motion will be done asap. In the future the Court is working on a plan so that those motions will be ruled on before the Markman Hearing occurs.” A couple months later, Judge Albright issued an “Amended Standing Order Regarding Motion For Inter-District Transfer” (June 8, 2021) requiring transfer movants to “provide the Court with a status report with respect to whether the motion(s) has been fully briefed and ready for resolution no later than six weeks prior to the date of the Markman hearing” and stating that “the Court will either promptly enter an order resolving the pending motion(s) prior to the Markman hearing or it will postpone the Markman hearing until it has had the opportunity to do so.” 

Notable other mandamus challenges to Waco’s denial of transfer motions in patent cases are listed below:  

Granted

Denied