Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 1 of 6
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`Exhibit A
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`Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 2 of 6
`In re: GOOGLE LLC, Petitioner In re: WAZE MOBILE..., Not Reported in Fed....
`2022 WL 1613192
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`2022 WL 1613192
`Only the Westlaw citation is currently available.
`NOTE: This order is nonprecedential.
`United States Court of Appeals, Federal Circuit.
`
`In re: GOOGLE LLC, Petitioner
`In re: WAZE MOBILE LIMITED, Petitioner
`In re: SAMSUNG ELECTRONICS CO.,
`LTD., SAMSUNG ELECTRONICS
`AMERICA, INC., Petitioners
`
`2022-140, 2022-141, 2022-142
`|
`Filed: 05/23/2022
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in No. 2:19-
`cv-00361-JRG, Chief Judge J. Rodney Gilstrap.
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in No. 2:19-
`cv-00359-JRG, Chief Judge J. Rodney Gilstrap.
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in No. 2:19-
`cv-00362-JRG, Chief Judge J. Rodney Gilstrap.
`
`ON PETITION
`
`Before LOURIE, TARANTO, and HUGHES, Circuit Judges.
`
`ORDER
`
`LOURIE, Circuit Judge.
`
`*1 In these consolidated cases, Google LLC, Waze
`Mobile Limited, and Samsung Electronics Co., Ltd. et al.
`(collectively, “Petitioners”) seek writs of mandamus directing
`the United States District Court for the Eastern District of
`Texas to transfer these cases to the United States District
`Court for the Northern District of California. AGIS Software
`Development, LLC (“AGIS”) opposes. For the reasons below,
`we grant the petitions and direct transfer.
`
`I
`
`A
`
`AGIS is a subsidiary of Florida-based AGIS Holdings, Inc.
`AGIS was assigned AGIS Holdings' patent portfolio and
`incorporated in the state of Texas shortly before AGIS started
`to file infringement suits in the Eastern District of Texas
`in 2017. AGIS shares an office in Marshall, Texas with
`another subsidiary of AGIS Holdings where AGIS maintains
`copies of its patents, assignment records, prosecution records,
`license agreements, and corporate records. No employee of
`AGIS or a related AGIS entity works regularly from that
`location.
`
`the complaints underlying Appeal Nos. 2022-140
`In
`and 2022-142, AGIS has accused: (1) Google's software
`applications that enable users of its products to form groups,
`view the locations of other users on a map, and communicate
`together, of infringing U.S. Patents 8,213,970; 9,408,055;
`9,445,251; 9,467,838; 9,749,829 (“the '829 patent”); and
`9,820,123 (“the '123 patent”); and (2) Samsung of infringing
`the '829 and '123 patents for selling devices that run Google's
`accused applications and that use Samsung's messaging
`functionality in conjunction with those applications.
`
`Google and Samsung moved under 28 U.S.C. § 1404(a)
`to transfer AGIS's infringement actions to the Northern
`District of California. They argued that the accused software
`applications at the center of the cases were designed and
`developed at Google's headquarters within the Northern
`District of California; that potential witnesses and sources of
`proof were in the Northern District of California (including
`Google's source code and technical documents, Google's
`employees that were knowledgeable of the accused products,
`and prior art witnesses); and that, as a matter of judicial
`economy, the cases should be transferred together to be
`decided by the same trial judge.
`
`The district court denied the motions. The court noted
`that the Northern District of California had a comparative
`advantage in being able to compel unwilling witnesses. On
`the other hand, the court determined that court congestion,
`judicial economy considerations, and local interest factors
`all weighed against transfer. In particular, the court weighed
`against transfer the fact that AGIS had previously litigated the
`asserted patents before the same trial judge up to the pretrial
`conference. The remaining factors, the court determined,
`favored neither of the two possible forums. On balance, the
`court determined that Google and Samsung had each failed
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 3 of 6
`In re: GOOGLE LLC, Petitioner In re: WAZE MOBILE..., Not Reported in Fed....
`2022 WL 1613192
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`to demonstrate that the Northern District of California was
`clearly more convenient and accordingly denied transfer.
`
`B
`
`*2 In the third case before us, AGIS has accused
`Waze (a wholly-owned subsidiary of Google) of similarly
`infringing the '829 and '123 patents based on the Waze
`Carpool mobile applications. The Waze case was actually
`initially consolidated with the Samsung and Google cases.
`Like Google and Samsung, Waze moved to transfer to
`the Northern District of California. Waze argued that its
`employees responsible for the accused applications, including
`its Managing Director, are in the Northern District of
`California (as well as Israel and New York) and that Waze
`does not have any offices or employees in the Eastern District
`of Texas. Waze also identified the same prior art witnesses
`as identified by Google and Samsung in Northern California.
`Waze added that its documents are physically present and/or
`electronically accessible from Northern California.
`
`As with Samsung's and Google's motions, the district court
`denied Waze's transfer request. The district court found that
`the compulsory process factor favored transfer. But, as in the
`Samsung and Google cases, the court weighed against transfer
`its prior familiarity with AGIS's patents and that it could likely
`hold a trial sooner. The district court found that the remaining
`factors were neutral. On balance, the district court similarly
`found that Waze had failed to show that the Northern District
`of California was a clearly more convenient forum for the
`litigation than the Eastern District of Texas. Waze, Google,
`and Samsung then each filed identical petitions seeking writs
`of mandamus, and we consolidated the petitions for purposes
`of briefing and resolution.
`
`II
`
`A
`
`We follow regional circuit law on transfer motions under
`28 U.S.C. § 1404(a). See In re TS Tech USA Corp., 551
`F.3d 1315, 1319 (Fed. Cir. 2008). In deciding whether the
`district court should have granted transfer under § 1404(a), we
`ask whether “the movant demonstrate[d] that the transferee
`venue is clearly more convenient” such that the district court's
`contrary determination was a clear abuse of discretion. 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)
`(en banc) (internal quotation marks omitted)).
`
`The Fifth Circuit has identified private and public interest
`factors relevant to determining whether a case should be
`transferred under § 1404(a). The public interest factors
`are: (1) the administrative difficulties flowing from court
`congestion; (2) the local interest in having disputes regarding
`activities occurring principally within a particular district
`decided in that forum; (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 or in the application
`of foreign law. In re Juniper Networks, Inc., 14 F.4th 1313,
`1317 (Fed. Cir. 2021). The private interest factors are: (1) the
`relative ease of access to sources of proof; (2) the availability
`of compulsory process to secure the attendance of non-party
`witnesses whose attendance may need to be compelled by
`court order; (3) the relative convenience of the two forums for
`potential witnesses; and (4) all other practical problems that
`make the trial of a case easy, expeditious, and inexpensive.
`Id. at 1316–17.
`
`Mindful that the district court is generally better positioned to
`evaluate the evidence, we review a transfer ruling for a clear
`abuse of discretion. See In re Vistaprint Ltd., 628 F.3d 1342,
`1344–46 (Fed. Cir. 2010); TS Tech, 551 F.3d at 1319 (noting
`that a petitioner must demonstrate that the denial was a “clear”
`abuse of discretion such that refusing transfer produced a
`“patently erroneous result” (quoting Volkswagen, 545 F.3d at
`310 (internal quotation marks omitted)); see also Juniper, 14
`F.4th at 1318 (explaining that “when a district court's denial
`of a motion to transfer amounts to a clear abuse of discretion
`under governing legal standards, we have issued mandamus to
`overturn the denial of transfer” and collecting cases granting
`mandamus).
`
`*3 Petitioners argue that the district court's failure to find
`that the convenience factors strongly favor transfer in all
`three cases was a clear abuse of discretion. They contend that
`Northern California is far more easily accessible for potential
`witnesses and sources of proof. Petitioners also contend that
`the transferee venue has a strong local interest in these cases
`while the Eastern District has no cognizable interest. In this
`regard, Petitioners emphasize that AGIS's connections to the
`Eastern District are entitled to minimal consideration because
`they are litigation-driven. Petitioners further contend that
`any judicial economy considerations that favor keeping these
`cases in a district in which AGIS previously litigated its
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 4 of 6
`In re: GOOGLE LLC, Petitioner In re: WAZE MOBILE..., Not Reported in Fed....
`2022 WL 1613192
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`patents are insufficient to outweigh the clear convenience of
`the transferee forum.
`
`AGIS responds that the district court correctly denied transfer
`in all three cases. AGIS argues that its own witnesses either
`reside in, or would prefer to travel to, the Eastern District of
`Texas. AGIS further contends that the Eastern District is more
`convenient for accessing AGIS's patent-related documents
`and license agreements stored at its offices in Marshall. AGIS
`further asserts that the district court was correct to not weigh
`the local interest factor in favor of transfer in the cases
`because of AGIS's connections to the Eastern District. AGIS
`also contends that the Eastern District has a comparative
`advantage both with regard to the court congestion factor and
`with regard to judicial economy considerations given its prior
`handling of AGIS's patent infringement suits.
`
`B
`
`We agree with Petitioners that the Northern District of
`California is clearly the more convenient forum in the
`Google and Samsung cases. Given that Google's accused
`functionality is at the center of the allegations in both
`cases, it is not surprising that witnesses reside in Northern
`California—the location of Google's headquarters where the
`accused technology was developed. Google and Samsung
`each identified at least 5 Google employees in the transferee
`forum with relevant and material information. Samsung and
`Google further identified five prior art witnesses in the
`Northern District of California. Transfer would ensure not
`only that the forum would be more convenient for the balance
`of the witnesses, but also that a court could compel their
`testimony if necessary.
`
`The district court weighed against transfer the presence
`of an AGIS consultant, Eric Armstrong, in the Eastern
`District as a potential witness on whether AGIS Holdings'
`own products constituted invalidating prior art. 1 But Mr.
`Armstrong appears to have disclaimed material knowledge of
`those products before the applicable priority dates. Appx547–
`550. And even accounting for Mr. Armstrong, Samsung and
`Google identified far more witnesses in Northern California.
`Moreover, while AGIS notes that several of its potential
`witnesses in Austin, Colorado, Virginia, and Florida would
`prefer to travel to Eastern Texas, the district court here
`correctly recognized that these witnesses were not entitled
`to significant weight because these witnesses “would require
`hours of travel regardless.” Appx006.
`
`1
`
`The district court treated the presence of AGIS's
`expert witness in the Eastern District as entitled to
`little weight.
`We also agree with Petitioners that the sources of proof factor
`weighs in favor of transfer. Google explains, without dispute
`from AGIS, that the technical documents and source code
`relating to the accused functionality “are physically present
`and/or electronically accessible” in the Northern District
`of California. Appx229. The district court discounted the
`convenience of litigating these cases close to that evidence
`on the ground that Google could produce the information
`electronically in the Eastern District. See, e.g., Appx004. But
`“while electronic storage of documents makes them more
`widely accessible than was true in the past, that does not make
`the sources-of-proof factor irrelevant.” Juniper, 14 F.4th at
`1321.
`
`*4 The district court also weighed against transfer the fact
`that AGIS stores its patent-related documents and corporate
`records at its office space in Marshall, Texas. However, it
`appears that the relationship between the forum and AGIS
`and its materials served no meaningful purpose, not even to
`secure application of Texas substantive law to AGIS, except
`to attempt to establish a presence for forum selection for
`patent cases. AGIS leased its office just prior to commencing
`litigation in the Eastern District. And the company's Texas
`office, where it stores the above-identified documents, does
`not appear to be a place of regular business; AGIS's principals
`and employees do not work from that office. AGIS therefore
`has no presence in Texas that should be given significant
`weight in this analysis. See In re Verizon Bus. Network
`Servs. Inc., 635 F.3d 559, 562 (Fed. Cir. 2011) (rejecting
`the argument that documents that were nothing more than
`artifacts of litigation were entitled to weight). 2
`
`2
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`The court also pointed to potential documents
`from Mr. Armstrong, but that witness testified that
`“all documents are on AGIS, I don't have any.”
`Appx462.
`Turning to the public interest factors, we agree with
`Petitioners that the district court failed to give full weight
`to the Northern District of California's comparative local
`interest in resolving the claims against Google and Samsung.
`These cases are analogous to the situation in Juniper
`where the accused products were designed and developed
`in the transferee forum and plaintiff's only connections to
`the transferor forum were largely tied to bringing patent
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` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 5 of 6
`In re: GOOGLE LLC, Petitioner In re: WAZE MOBILE..., Not Reported in Fed....
`2022 WL 1613192
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`lawsuits in that district. We explained that because the
`events forming the basis for the infringement claims occurred
`mainly in the transferee forum, it had a substantial local
`interest in resolving the dispute, whereas plaintiff's patent-
`litigation-inspired connections to its chosen forum were “not
`entitled to significant weight” and “insubstantial compared
`to” defendant's relevant connections to the transferee forum.
`14 F.4th at 1320. Similarly here, the locus of events
`giving rise to AGIS's infringement suits occurred in the
`transferee forum where Google designed and developed the
`accused functionality. In contrast, AGIS's minimal presence,
`apparently tied to filing suit in the Eastern District where no
`AGIS employees usually work, is insufficient to establish a
`comparable interest in the transferor forum. 3 Thus, the court
`clearly abused its discretion in weighing this factor as neutral.
`
`3
`
`The district court also weighed against transfer
`that Samsung has “direct and substantial ties to
`this District,” Appx029, and “Google has several
`ties to this District,” namely, its facilities in
`Flower Mound, Texas where Google says certain
`devices are repaired by an independent company.
`Appx009–10. The problem with this analysis is
`that it relies on Google's and Samsung's “general
`presence in the [transferor] forum, not on the locus
`of the events that gave rise to the dispute.” In re
`Google LLC, No. 2021-171, 2021 WL 4592280,
`at *5 (Fed. Cir. Oct. 6, 2021). We have held that
`a party's “general presence” in a particular district
`is “not enough to establish a local interest” that
`weighs against another forum's local interest tied
`to events giving rise to the particular suit. Juniper,
`14 F.4th at 1320; see Google, 2021 WL 4592280,
`at *5. Rather, what is required for a relevant
`local interest to weigh in this factor is that there
`be “significant connections between a particular
`venue and the events that gave rise to a suit.” In re
`Apple, Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020)
`(citation omitted); see Google, 2021 WL 4592280,
`at *5.
`As for the remaining factors, we also agree with Petitioners.
`While a court may consider its prior familiarity with the
`asserted patents in assessing judicial economy considerations
`for transfer, see Vistaprint, 628 F.3d at 1344, we have at the
`same time made clear that just because “a patent is litigated
`in a particular[forum]” does not mean “the patent owner will
`necessarily have a free pass to maintain all future litigation
`involving that patent in that [forum],” id. at 1347 n.3; see
`
`also Verizon, 635 F.3d at 562 (“To interpret § 1404(a) to hold
`that any prior suit involving the same patent can override
`a compelling showing of transfer would be inconsistent
`with the policies underlying § 1404(a).”). Here, any judicial
`economy gained in having the district court preside over this
`case based on its prior familiarity with some of the issues,
`from a prior claim construction in a different case brought by
`AGIS, is clearly insufficient in this case to outweigh the other
`factors that clearly favor transfer.
`
`*5 Furthermore, while the Eastern District appears likely
`to be able to schedule a trial in these cases faster than the
`Northern District of California, that seems to rest not so
`much on significant differences in docket congestion but, in
`significant part, on the considerable delay in resolving the
`transfer motions, which resulted in progress in the cases in the
`interim. That progress hardly need go to waste upon transfer.
`In any event, neither the district court nor AGIS has identified
`any reason why a more rapid disposition of the cases should
`be assigned such significant weight here to outweigh the clear
`convenience of the transferee forum.
`
`Under these circumstances, we conclude that the district court
`clearly abused its discretion, leading to a patently erroneous
`result, when it denied Petitioners' motions to transfer to
`the clearly more convenient forum, the Northern District of
`California.
`
`C
`
`We reach the same conclusion in Waze's case, in which
`the district court's analysis was materially the same. Like
`the Google and Samsung cases, the “center of gravity”
`is in Northern California. Juniper, 14 F.4th at 1323.
`Waze identified more witnesses in the Northern District of
`California who would be less inconvenienced by a trial in
`that district and/or could be compelled to testify there. The
`district court also recognized that Waze had identified sources
`of proof in the Northern District of California but made the
`same error, described above, in discounting that convenience
`on the ground that the information could potentially be
`made electronically accessible in the Eastern District. Judicial
`economy considerations also do not override the clear
`convenience of the transferee venue in this case; indeed,
`they support transfer given our decision that overlapping
`cases against Google and Samsung are to be transferred. And
`Petitioners persuasively argue that economy favors all three
`of these cases being decided together.
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 6:21-cv-00667-ADA Document 61-1 Filed 05/24/22 Page 6 of 6
`In re: GOOGLE LLC, Petitioner In re: WAZE MOBILE..., Not Reported in Fed....
`2022 WL 1613192
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`Accordingly,
`
`IT IS ORDERED THAT:
`
`FOR THE COURT
`
`Peter R. Marksteiner Clerk of Court
`
`The petitions are granted. The district court's orders denying
`transfer are vacated, and the district court is directed to grant
`Google's, Waze's, and Samsung's motions to transfer to the
`Northern District of California.
`
`All Citations
`
`Not Reported in Fed. Rptr., 2022 WL 1613192
`
`End of Document
`
`© 2022 Thomson Reuters. No claim to original U.S. Government Works.
`
` © 2022 Thomson Reuters. No claim to original U.S. Government Works.
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