Opinions / Panel Activity

On August 4, the Federal Circuit also issued an order denying a petition for a writ of mandamus in In re Google LLC, another case we have been following because it attracted an amicus brief. As in In re Apple Inc., the court denied the petition. The court held that “Google has not made a clear and indisputable showing that transfer was required.” The court reasoned it was not “prepared on mandamus to disturb those factual findings” of the district court. Here is a summary of the case and the order. 

Google petitioned the court for a writ of mandamus to transfer this patent case from the Western District of Texas to the Northern District of California. The court, in an order authored by Judge Reyna and joined by Judges O’Malley and Chen, described the facts of the case as follows:

EcoFactor brought this suit in the Western District of Texas, Waco Division, alleging that Google’s Nest Learning Thermostat products infringe EcoFactor’s patents. Google, which is headquartered in Mountain View, California, but also has a large office in Austin, Texas, moved to transfer the infringement action to the Northern District of California pursuant to 28 U.S.C. § 1404(a). On April 16, 2021, the district court denied Google’s motion. The court found that co-pending cases brought by EcoFactor in the same judicial division involving the same patents weighed against transfer; . . . the Texas forum was fully open and equipped to safely conduct jury trials, whereas transfer might cause undue delay because the California forum was not currently open for trials due to the COVID-19 pandemic; . . . there appeared to be Google employees working from within the Western District of Texas that had material and relevant information, including the Head of Central Region Energy Partnerships for Nest; Google had not informed the court that any third party in California was unwilling to travel to Texas to testify or could not testify by video; . . . Google had not “point[ed] with particularity to any relevant physical documents,” nor “confirm[ed] the existence of any physical documents located in the [Northern District of California];” . . . and the Western District of Texas had a localized interest because “Google has had a substantial presence in Austin for nearly 14 years.”

In addressing the petition, the court first noted the heavy burden placed on a party seeking a writ of mandamus in establishing “that the right to relief is ‘clear and indisputable.’” The court reasoned that, “under Fifth Circuit law, where a decision applies transfer rules, we [the court] must deny mandamus unless it is clear ‘that the facts and circumstances are without any basis for a judgment of discretion.’” Applying this standard to the case, the court did “not find reconsideration necessary in this case, where Google has not made a clear and indisputable showing that transfer was required.” The court was not willing to disturb the factual findings of district court when they are “subject to reasonable dispute” and, as a result, denied the petition.