Case: 24-117 Document: 9 Page: 1 Filed: 04/04/2024
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re GOOGLE LLC,
Petitioner
______________________
2024-117
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:23-
cv-00320-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before MOORE, Chief Judge, TARANTO and CHEN, Circuit
Judges.
MOORE, Chief Judge.
ORDER
Google LLC petitions for a writ of mandamus directing
the United States District Court for the Western District of
Texas to vacate its order denying transfer and transfer to
the United States District Court for the Northern District
of California. We deny the petition.
Proxense, LLC filed suit in the Western District of
Texas against Google alleging infringement of six patents
related to using biometrics and personal digital keys as
passwords. Google moved, pursuant to 28 U.S.C. § 1404(a),
Case: 24-117 Document: 9 Page: 2 Filed: 04/04/2024
2 IN RE GOOGLE LLC
to transfer the case to the Northern District of California,
arguing that its employees knowledgeable about the ac-
cused products primarily work in that district and that the
majority of relevant documents concerning the products
were created and maintained in the Northern District of
California.
In its response, Proxense argued that the Western Dis-
trict of Texas would be convenient for potential witnesses
and that judicial economy favored denying the motion.
Proxense noted that the trial judge spent substantial time
with prior litigation involving two of the asserted patents,
including having conducted claim construction and re-
solved summary judgment motions before the case settled
on the eve of trial. Appx010. See Proxense, LLC v. Sam-
sung Elecs. Co., No. 21-cv-00210-ADA (W.D. Tex.). Prox-
ense further noted that it filed a co-pending suit in the
Western District of Texas alleging infringement of the
same six patents.
After analyzing the transfer factors, the district court
denied the motion, determining Google failed to carry its
burden to show that the Northern District of California
was clearly more convenient. The court noted the presence
of potential Google employee witnesses in the Western Dis-
trict of Texas, including a software engineering manager
who described himself as leading the engineering team for
one of the accused products. Appx005. It further found
that the court’s “prior knowledge of the patents-in-suit and
the time, effort, resources devoted to the earlier case will
likely reduce costs and judicial resources.” Appx010.
Mandamus is “reserved for extraordinary situations,”
Gulfstream Aerospace Corp. v. Mayacamas Corp., 485 U.S.
271, 289 (1988) (citation omitted). We review denials of
transfer on mandamus under the relevant regional circuit’s
law, here the United States Court of Appeals for the Fifth
Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319
(Fed. Cir. 2008). We ask only whether the decision was
Case: 24-117 Document: 9 Page: 3 Filed: 04/04/2024
IN RE GOOGLE LLC 3
such a “clear abuse of discretion” that it produced a “pa-
tently erroneous result.” Id. (citation and internal quota-
tion marks omitted). Under that standard, we must deny
mandamus unless it is clear “that the facts and circum-
stances are without any basis for a judgment of discretion.”
In re Volkswagen of Am., Inc., 545 F.3d 304, 312 n.7 (5th
Cir. 2008) (en banc). Google fails to make that showing.
Judicial economy can serve important ends in a trans-
fer analysis. See In re Vistaprint Ltd., 628 F.3d 1342, 1346
(Fed. Cir. 2010). Here, the district court reasonably found
that judicial economy considerations disfavor transfer in
light of the trial court’s familiarity with the patents and
technology from its substantial involvement with prior lit-
igation. The district court examined the evidence of all
other factors for what it showed about the comparative as-
sessment of the two forums at issue, and it found that
Google had not shown transfer to be favored on any factor.
In this analysis, the court specifically found, among other
things, that potential witnesses reside in the Western Dis-
trict of Texas, including a Google employee that the court
found to be “the most important witness because of his
knowledge of the accused functionalities,” Appx007; that
there is a local interest in that district because “much of
the direction and leadership in design and implementation
occurred” there, Appx012; that likely relevant sources of
proof are accessible from both districts; and that no third-
party potential witness had been shown to reside in the
California forum. Google has not established any clear ba-
sis to disturb those findings, which plausibly support deny-
ing transfer under the circumstances of this case.
Accordingly,
Case: 24-117 Document: 9 Page: 4 Filed: 04/04/2024
4 IN RE GOOGLE LLC
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
April 4, 2024
Date