Case 1:20-cv-00393-LO-TCB Document 1237-1 Filed 05/23/22 Page 1 of 12 PageID# 32354
`Case 1:20-cv-00393-LO-TCB Document 1237-1 Filed 05/23/22 Page 1 of 12 PagelD# 32354
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`EXHIBIT A
`EXHIBIT A
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`

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`Case 1:20-cv-00393-LO-TCB Document 1237-1 Filed 05/23/22 Page 2 of 12 PageID# 32355
`Case: 22-140 Document: 16 Page: 1 Filed: 05/23/2022
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`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`
`
`In re: GOOGLE LLC,
`Petitioner
`______________________
`
`2022-140
`______________________
`
`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.
`-------------------------------------------------
`
`In re: WAZE MOBILE LIMITED,
`Petitioner
`______________________
`
`2022-141
`______________________
`
`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.
`-------------------------------------------------
`
`In re: SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioners
`______________________
`
`2022-142
`
`
`
`
`
`

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`Case 1:20-cv-00393-LO-TCB Document 1237-1 Filed 05/23/22 Page 3 of 12 PageID# 32356
`Case: 22-140 Document: 16 Page: 2 Filed: 05/23/2022
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`2
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`
`
`IN RE: GOOGLE LLC
`
`______________________
`
`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.
`LOURIE, Circuit Judge.
`
`O R D E R
`In these consolidated cases, Google LLC, Waze Mobile
`
`Limited, and Samsung Electronics Co., Ltd. et al. (collec-
`tively, “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 Soft-
`ware 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, prose-
`cution records, license agreements, and corporate records.
`No employee of AGIS or a related AGIS entity works regu-
`larly from that location.
`
`

`

`Case 1:20-cv-00393-LO-TCB Document 1237-1 Filed 05/23/22 Page 4 of 12 PageID# 32357
`Case: 22-140 Document: 16 Page: 3 Filed: 05/23/2022
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`IN RE: GOOGLE LLC
`
` 3
`
`In the complaints underlying Appeal Nos. 2022-140
`and 2022-142, AGIS has accused: (1) Google’s software ap-
`plications that enable users of its products to form groups,
`view the locations of other users on a map, and communi-
`cate together, of infringing U.S. Patents 8,213,970;
`9,408,055; 9,445,251; 9,467,838; 9,749,829 (“the ’829 pa-
`tent”); 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 Sam-
`sung’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 soft-
`ware applications at the center of the cases were designed
`and developed at Google’s headquarters within the North-
`ern 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 fo-
`rums. On balance, the court determined that Google and
`Samsung had each failed to demonstrate that the Northern
`District of California was clearly more convenient and ac-
`cordingly denied transfer.
`
`

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`4
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`
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`IN RE: GOOGLE LLC
`
`B
`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 mo-
`bile applications. The Waze case was actually initially con-
`solidated with the Samsung and Google cases. Like Google
`and Samsung, Waze moved to transfer to the Northern Dis-
`trict of California. Waze argued that its employees respon-
`sible 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 electroni-
`cally 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 neu-
`tral. On balance, the district court similarly found that
`Waze had failed to show that the Northern District of Cal-
`ifornia was a clearly more convenient forum for the litiga-
`tion 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 pur-
`poses of briefing and resolution.
`II
`A
`We follow regional circuit law on transfer motions un-
`der 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
`
`

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`Case: 22-140 Document: 16 Page: 5 Filed: 05/23/2022
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`IN RE: GOOGLE LLC
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` 5
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`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 in-
`terest 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 particu-
`lar 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 posi-
`tioned 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
`
`

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`Case: 22-140 Document: 16 Page: 6 Filed: 05/23/2022
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`
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`IN RE: GOOGLE LLC
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`legal standards, we have issued mandamus to overturn the
`denial of transfer” and collecting cases granting manda-
`mus).
`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 inter-
`est in these cases while the Eastern District has no cog-
`nizable 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 con-
`siderations that favor keeping these cases in a district in
`which AGIS previously litigated its 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 wit-
`nesses 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 dis-
`trict court was correct to not weigh the local interest factor
`in favor of transfer in the cases because of AGIS’s connec-
`tions 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 ju-
`dicial 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
`
`

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`Case: 22-140 Document: 16 Page: 7 Filed: 05/23/2022
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`IN RE: GOOGLE LLC
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`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 Sam-
`sung each identified at least 5 Google employees in the
`transferee forum with relevant and material information.
`Samsung and Google further identified five prior art wit-
`nesses in the Northern District of California. Transfer
`would ensure not only that the forum would be more con-
`venient for the balance of the witnesses, but also that a
`court could compel their testimony if necessary.
`The district court weighed against transfer the pres-
`ence 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 sev-
`eral 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 wit-
`nesses were not entitled to significant weight because these
`witnesses “would require hours of travel regardless.”
`Appx006.
`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 phys-
`ically present and/or electronically accessible” in the
`Northern District of California. Appx229. The district
`court discounted the convenience of litigating these cases
`
`1 The district court treated the presence of AGIS’s
`expert witness in the Eastern District as entitled to little
`weight.
`
`

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`
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`IN RE: GOOGLE LLC
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`close to that evidence on the ground that Google could pro-
`duce the information electronically in the Eastern District.
`See, e.g., Appx004. But “while electronic storage of docu-
`ments 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.
`The district court also weighed against transfer the
`fact that AGIS stores its patent-related documents and cor-
`porate records at its office space in Marshall, Texas. How-
`ever, 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 busi-
`ness; 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
`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 Sam-
`sung. These cases are analogous to the situation in Juni-
`per where the accused products were designed and
`developed in the transferee forum and plaintiff’s only con-
`nections to the transferor forum were largely tied to
`
`2 The court also pointed to potential documents from
`Mr. Armstrong, but that witness testified that “all docu-
`ments are on AGIS, I don’t have any.” Appx462.
`
`

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`Case: 22-140 Document: 16 Page: 9 Filed: 05/23/2022
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`IN RE: GOOGLE LLC
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` 9
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`bringing patent lawsuits in that district. We explained
`that because the events forming the basis for the infringe-
`ment 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 con-
`nections to the transferee forum. 14 F.4th at 1320. Simi-
`larly 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 in-
`terest 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 Dis-
`trict,” Appx029, and “Google has several ties to this Dis-
`trict,” 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 dis-
`trict 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,
`
`

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`IN RE: GOOGLE LLC
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`As for the remaining factors, we also agree with Peti-
`tioners. 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 be-
`cause “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 in-
`volving the same patent can override a compelling showing
`of transfer would be inconsistent with the policies underly-
`ing § 1404(a).”). Here, any judicial economy gained in hav-
`ing 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.
`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 dis-
`trict court clearly abused its discretion, leading to a pa-
`tently erroneous result, when it denied Petitioners’
`
`
`Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020) (citation omit-
`ted); see Google, 2021 WL 4592280, at *5.
`
`

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`IN RE: GOOGLE LLC
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`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 Cali-
`fornia who would be less inconvenienced by a trial in that
`district and/or could be compelled to testify there. The dis-
`trict 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 conven-
`ience 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; in-
`deed, they support transfer given our decision that overlap-
`ping cases against Google and Samsung are to be
`transferred. And Petitioners persuasively argue that econ-
`omy favors all three of these cases being decided together.
`
`Accordingly,
`
`IT IS ORDERED THAT:
`
`The petitions are granted. The district court’s orders
`denying transfer are vacated, and the district court is di-
`rected to grant Google’s, Waze’s, and Samsung’s motions to
`transfer to the Northern District of California.
`
` FOR THE COURT
`
`
`
`/s/ Peter R. Marksteiner
` Peter R. Marksteiner
` Clerk of Court
`
`May 23, 2022
` Date
`
`
`
`