Patent Specific Hearings/Motions - Page 3

Western District of Texas (Waco) Cont'd

Future Link Systems, LLC v. Advanced Micro Devices, Inc. The U.S. District Court for the Western District of Texas in Waco granted defendants’ Opposed Motion For Intra-District Transfer To The Austin Division under 28 U.S.C.§ 1404(a), finding that the defendant had shown that the Austin division is clearly more convenient than the Waco division. As part of its analysis, the Court found the court congestion factor to be neutral noting that even “though the Austin division is not holding trial due to the pandemic, [defendant] suggests that trials will have resumed there by this case’s trial date on October 10, 2022.”   (Case No. 6:20-cv-01176; October 12, 2021).

Ikorongo Texas LLC et al v. LG Electronics, Inc. et al. The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendants had not met their heavy burden to demonstrate that the Northern District of California is a “clearly more convenient” venue than the Western District of Texas. The Court found, in part, that the access to proof and the cost of attendance for willing witnesses weighed in favor or only slightly in favor of transfer while other practical problems that make trial of a case easy, expeditious and inexpensive, and administrative difficulties weighed against transfer with the other factors being neutral. With respect to the administrative difficulties public-interest factor, for which the plaintiffs argued that “the Northern District of California will suffer from more congestion than usual given the continued suspension of in-person proceedings due to the current COVID-19 pandemic”,  the Court pointed to a number of facts such as a January 2022 trial date and the Waco Division’s own patent-specific Order Governing Proceedings ensuring efficient administration of patent cases as indicating “a greater efficiency of bringing cases, especially patent cases, to trial in the Western District of Texas than in the Northern District of California.” On September 23, 2021, the Court denied plaintiff’s Motion To Stay Pending Petition For Writ Of Certiorari from the Federal Circuit's Dispositive Court Order granting the Petition for Writ of Mandamus. The Clerk of the Court was ordered to transfer the case to the U.S. District Court for the Northern District of California, pursuant to the Federal Circuit’s Order. (Case No. 6:20-cv-00257; March 1, 2021 and September 23, 2021).

Ikorongo Texas LLC et al v. Lyft, Inc.  – The U.S. District Court for the Western District of Texas in Waco denied defendant's Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant had not met its heavy burden to demonstrate that the Northern District of California is a “clearly more convenient” venue than the Western District of Texas. The Court found, in part, that the access to proof and the cost of attendance for willing witnesses weighed in favor or only slightly in favor of transfer while other practical problems that make trial of a case easy, expeditious and inexpensive, and administrative difficulties weighed against transfer with the other factors being neutral. With respect to the administrative difficulties public-interest factor, for which the plaintiffs argued that “the Northern District of California will suffer from more congestion than usual given the continued suspension of in-person proceedings due to the current COVID-19 pandemic”,  the Court pointed to a number of facts such as a January 2022 trial date and the Waco Division’s own patent-specific Order Governing Proceedings ensuring efficient administration of patent cases as indicating “a greater efficiency of bringing cases, especially patent cases, to trial in the Western District of Texas than in the Northern District of California.” On September 1, 2021, the Court granted defendant’s Emergency Motion for Reconsideration of This Court’s Order Denying Transfer, in light of the Federal Circuit’s guidance, ordering that the case be transferred to the Northern District of California. (Case No. 6:20-cv-00258; March 1, 2021 and September 1, 2021).

Ikorongo Texas LLC et al v. Samsung Electronics Co., Ltd. et al. The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendants had not met their heavy burden to demonstrate that the Northern District of California is a “clearly more convenient” venue than the Western District of Texas. The Court found, in part, that the access to proof and the cost of attendance for willing witnesses weighed in favor or only slightly in favor of transfer while other practical problems that make trial of a case easy, expeditious and inexpensive, and administrative difficulties weighed against transfer with the other factors being neutral. With respect to the administrative difficulties public-interest factor, for which the plaintiffs argued that “the Northern District of California will suffer from more congestion than usual given the continued suspension of in-person proceedings due to the current COVID-19 pandemic”,  the Court pointed to a number of facts such as a January 2022 trial date and the Waco Division’s own patent-specific Order Governing Proceedings ensuring efficient administration of patent cases as indicating “a greater efficiency of bringing cases, especially patent cases, to trial in the Western District of Texas than in the Northern District of California.” On September 23, 2021, the Court denied plaintiff’s Motion To Stay Pending Petition For Writ Of Certiorari from the Federal Circuit's Dispositive Court Order granting the Petition for Writ of Mandamus. The Clerk of the Court was ordered to transfer the case to the U.S. District Court for the Northern District of California, pursuant to the Federal Circuit’s Order. (Case No. 6:20-cv-00259; March 1, 2021 and September 23, 2021).

Ikorongo Texas LLC et al v. Uber Technologies, Inc. - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendants had not “clearly demonstrated” that the Northern District of California is “clearly more convenient”. With respect to the administrative difficulties public-interest factor, for which the plaintiff argued that the factor “favors retention because this Court has a substantially faster time to trial compared to the NDCA, and the NDCA has experienced extended delays due to the Covid-19 pandemic”,  the Court pointed to a number of facts such as 25% faster time-to-trial over NDCA and the Waco Division’s own patent-specific Order Governing Proceedings ensuring efficient administration of patent cases as indicating “a greater efficiency of bringing cases, especially patent cases, to trial in the WDTX over the NDCA.” (Case No. 6:20-cv-00843; May 26, 2021).

Jenam Tech, LLC v. Google LLC  - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant did not meet its “significant burden” to demonstrate that the NDCA is “clearly more convenient.” As part of its analysis of the convenience of witnesses factor, the Court considered the lower inconvenience that would be felt by a witness from Georgia traveling 900 miles to Waco as opposed to 2,600 miles to California. The Court refused to discount the witness under the convenience factor because he had not agreed to appear at trial willingly, since his “objections to appearance at trial are due to the COVID-19 pandemic, and [] he has agreed to appear at trial when conditions change.” On October 7, 2021, pursuant to the Federal Circuit’s Order granting defendant’s petition for writ of mandamus, the Court ordered that the case be transferred to the  United States District Court for the Northern District of California.. (Case No. 6:20-cv-00453; July 8, 2021 and October 7, 2021).

KOSS Corporation v. Skullcandy, Inc. The U.S. District Court for the Western District of Texas in Waco granted defendants’ Motion To Dismiss For Improper Venue under Rule 12(b)(3), finding that plaintiff failed to establish that venue is proper in the District because it cannot show that the defendant resides or has a regular and established place of business in Texas. As part of its analysis, the Court found that plaintiff did not establish that defendant has a regular and established place of business in the District through employees working from home, because although defendant did have employees who worked from home during the COVID-19 pandemic, none of its employees that work from home live in the state of Texas. (Case No. 6:20-cv-00664; March 31, 2021).

Kuster v. Western Digital Technologies, Inc.  – The U.S. District Court for the Western District of Texas in Waco denied defendant's Motion To Transfer Venue from the Western District of Texas to the Northern District of California pursuant to 28 U.S.C.§ 1404(a), finding that the defendant had not demonstrated that the Norther District of California is a “clearly more convenient” venue than the Western District of Texas. As part of its analysis of the relevant factors, the Court considered the defendant’s concerns regarding safety and travel precautions due to the COVID-19 pandemic. While sympathizing with defendant’s concerns, the Court noted that these same concerns apply across the board to the plaintiff, who would be traveling from Switzerland, and the third parties located in Texas. The Court further noted that it would be unrealistic to attempt to predict what the status of travel and the public health risk may be in November 2021, when the case is scheduled for trial, and if conditions improve or at least remain the same, the Western District of Texas is one of the few in the country to have successfully held a patent trial in the MV3 Partners LLC v. Roku matter, with witnesses and attorneys traveling from other states, including California. (Case No. 6:20-cv-00563; February 9, 2021).

Monolithic Power Systems, Inc. et al v. Meraki Integrated Circuit (Shenzhen) Technology, Ltd. et al. - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the defendant failed to meet its “significant burden” to demonstrate showing that the Northern District of California is “clearly more convenient” than the Western District of Texas. As part of its analysis, the Court found that factors based on the COVID-19 pandemic do not weigh either for or against transfer when analyzing the cost of attendance for willing witnesses because they “look too far forward and speculate as to the uncertain impact of the virus.” In finding that the administrative difficulties flowing from court congestion factor weighed “heavily” against transfer considering the relative court congestion in the Northern District of California, the Court pointed to the plaintiff’s cited evidence that the Northern District of California has 12,000 pending cases versus 7,800 for the Western District of Texas and noted that defendant did not deny the case could be heard faster in Texas.  The Court also noted that since the COVID-19 pandemic began in March 2020, the Western District of Texas conducted at least seven jury trials, six of which were patent jury trials with five patent jury trials held in the Waco courthouse in 2021 alone. (Case No. 6:20-cv-00876; August 13, 2021).

EROAD Ltd., et al v. PerDiemCo LLC – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all Markman hearings scheduled between April 9, 2020 and May 1, 2020 shall inform the court by April 13, 2020 whether the wish to maintain their current hearing date or postpone it to the week of May 11, 2020.  The court will still provide its preliminary constructions by 5 p.m. the day before the Markman hearing is currently scheduled, even if the parties choose to postpone.  IF the parties postpone the hearing, they should meet-and-confer within 48 hours of receiving the court’s preliminary constructions to determine which claim terms still need to be raised at the Markman hearing and file a joint notice describing the accepted claim constructions and those they wish to hold arguments on.  (Case No. 6-19-cv-00026, presiding before District Judge Alan D. Albright; April 9, 2020).

Far North Patents, LLC v. ADVA Optical Networking SE – The U.S. District Court for the Western District of Texas in Waco sua sponte ordered all scheduled civil hearings to be conducted telephonically. With respect to Markman hearings, parties who wish to use PowerPoint presentation slides during the hearing are ordered to email said slides to the court within six (6) hours of receiving preliminary constructions from the court. With respect to non-Markman hearings, parties are ordered to email to the court the slides they wish to use at least two (2) hours before the hearing. This order was issued in accordance with Chief District Judge Orlando Luis Garcia’s Amended Order Regarding Court Operations Under the Exigent Circumstances Created by the COVID-19 Pandemic dated March 24, 2020. (Case No. 6:20-cv-00218; March 24, 2020).

The Standing Order has been docketed in the following patent cases before U.S. District Court for the Western District of Texas in Waco:

  • Brian Blazer v. Lowe's Companies, Inc., Case No. 6:20-cv-00276, presiding before District Judge Alan D. Albright; March 24, 2020;

  • Far North Patents, LLC v. Microchip Technology Inc., Case No. 6:20-cv-00221, presiding before District Judge Alan D. Albright; March 24, 2020;
  • Far North Patents, LLC v. NXP USA, Inc., et al., Case No. 1:20-cv-00397 (Waco), presiding before District Judge Alan D. Albright; March 24, 2020;
  • Ikorongo Texas LLC v. Bumble Trading Inc., Case No. 6:20-cv-00256, presiding before District Judge Alan D. Albright; March 24, 2020.

  • Sable Networks, Inc., et al. v. Cisco Systems, Inc., Case No. 6:20-cv-00288, presiding before District Judge Alan D. Albright; March 24, 2020;

  • VOIP-PAL.COM, INC. v. Facebook, Inc., et al., Case No. 6:20-cv-00267, presiding before District Judge Alan D. Albright; March 24, 2020.

Open Text Corporation v. Alfresco Software, Ltd. et al. The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Central District of California, finding that only two factors favored transfer and defendants had filed to prove that the Central District of California is a clearly more convenient venue than the Western District of Texas.  As part of its analysis, the Court found the administrative difficulties flowing from court congestion factor weighed slightly in favor of transfer because the time to trial is set for three months earlier in the California cases, but found “it to be of lesser weight because of this Court’s ability to get cases to trial quickly and the backlog caused by CDCA closures due to the COVID-19 pandemic.”  In particular, the Court noted that the trial backlog in CDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 could make the time to trial in the CDCA longer than anticipated.” The Court further noted that, in contrast, it had “conducted its first patent jury trial during the COVID-19 pandemic in October 2020, and has since conducted at least seven jury trials, six of which are patent jury trials . . . [and] in the first half of 2021 alone [it] had already conducted five patent jury trials in the Waco courthouse.” (Case No. 6:20-cv-00920; September 30, 2021).

Ravgen, Inc. v. Quest Diagnostics Incorporated - The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Central District of California, finding that the defendant failed to meet its “significant burden” to demonstrate that the Central District of California is “clearly more convenient” than the Western District of Texas. In finding the administrative difficulties flowing from court congestion public-interest factor weighed strongly against transfer, the Court noted that “the median time to trial for patents cases in this Court (the Waco Division) is over 10 months shorter than the 33.6-month median time to trial for patent cases in the CDCA,” while further noting that “the trial backlog in the CDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 would make the time to trial for patent cases, and all cases in general, even longer.” It contrasted this to the Western District of Texas which conducted its first patent jury trial during the COVID-19 pandemic in October 2020, and has since conducted at least seven jury trials, six of which are patent jury trials including five patent jury trials in the Waco courthouse in the first half of 2021 alone. (Case No. 6:20-cv-00972; August 20, 2021).

STC.UNM v. Apple Inc. – The U.S. District Court for the Western District of Texas in Waco denied Apple’s motion to transfer the case to the Northern District of California but granted its alternative motion to transfer the case to the Austin Division of the Western District of Texas. Notably, the court found “any arguments relying on the impact of the COVID-19 virus too speculative at this time to weigh either for or against transfer. It was noted that the virus has had a substantially greater impact and has significantly slowed down the dockets in the NDCA, while conversely it was noted that the virus could also discourage air-travel from California to the WDTX. Because these factors look too far forward and speculate as to the uncertain impact of the virus, the Court declines to find that they weigh either for or against transfer when analyzing this factor.” (Case No. 6:19-cv-00428; April 1, 2020).

Super Interconnect Technologies LLC v. Google LLC The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas to the Northern District of California, finding that the balance of the Volkswagen test weighs against transfer with no factors favoring transfer, two factors weighing against and the other remaining factors found to be neutral. As part of its analysis, the Court considered the average time to trial and found that the difference between the Western District of Texas and Northern Districts of California could be much longer than 12 months.  The Court pointed out that “the trial backlog in NDCA caused by courthouse closures due to the COVID-19 pandemic beginning in March 2020 would make the time to trial for patent cases, and all cases in general, even longer.” The Court noted that, in contrast, it “conducted its first patent jury trial during the COVID-19 pandemic in October 2020, and has since conducted at least seven jury trials, six of which are patent jury trials . . . [and] in the first half of 2021 alone [it] had already conducted five patent jury trials in the Waco courthouse.” On November 5, 2021, the Court issued an Amended Order Granting Defendant’s Motion To Transfer, granting the motion to transfer and vacating the prior denial after the Federal Circuit provided new and additional guidance regarding certain factors relevant to the motion. The Court found that three of the eight factors were neutral, two factors weigh against transfer, three factors weigh in favor of transfer, and that “an in-depth look at the analysis of the factors above shows that the NDCA is a clearly more convenient venue.” In analyzing the “court congestion” factor, the Court considered the same time to trial comparison as previously finding again that the factor weighs against transfer, but taking direction from the Federal Circuit, the Court gave the factor less weight. (Case No. 6:21-cv-00259; September 15, 2021 and November 5, 2021).

Technologies LLC v. Semiconductor Manufacturing International Corporation et al. The U.S. District Court for the Western District of Texas in Waco denied, without prejudice, defendants’ Motion For Intra-district Transfer Of Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division.  Defendants were instructed to re-file the motion “as trial approaches so the Court can evaluate if transfer is proper under §1404 and whether the Austin Courthouse will be open in time for this trial.” (Case No. 6:19-cv-00719; March 29, 2021).

Unification Technologies LLC v. Micron Technology, Inc. et al.– The U.S. District Court for the Western District of Texas in Waco denied, without prejudice, defendants’ Motion For Intra-district Transfer Of Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division.  Defendants were instructed to re-file the motion “as trial approaches so the Court can evaluate if transfer is proper under §1404 and whether the Austin Courthouse will be open in time for this trial.” (Case No. 6:20-cv-00500; May 6, 2021).

USC IP Partnership, LP v. Facebook, Inc. The U.S. District Court for the Western District of Texas in Waco denied defendants’ Motion To Transfer Venue under 28 U.S.C.§ 1404(a) from the Western District of Texas in Waco to the Austin Division, finding that defendant has not met its significant burden to demonstrate that the Austin Division is a “clearly more convenient” venue than the Waco Division with the localized interests factor weighing only slightly in favor of transfer and all other factors neutral. In finding that the local interest factor weighed slightly in favor of transfer to the Austin Division, the Court considered that a number of employees were working out of the Austin offices of defendant due to the COVID-19 pandemic and although some of those employees may be working remotely, the majority of the employees presumably still reside in or around the Austin Division.  (Case No. 6:20-cv-00555; March 8, 2021).

District of Utah (Central Division—Salt Lake City)

Senior District Judge Dee Benson

CAO Group v. GE Lighting, et. al. – The U.S. District Court for the District of Utah’s Central Division in Salt Lake City issued an Amended Order denying Plaintiff’s Motion to Reopen the Case and Lift Stay on the written submissions alone, “[g]iven the unique circumstances and social gathering restrictions brought about by the current global pandemic.” The court went further and dismissed the action in its entirety, without prejudice, due to lack of venue under the United States Supreme Court’s TC Heartland decision. (Case No. 2:11-cv-00426; May 12, 2020).

Attachement:
CAO Group v. GE Lighting, et. al. Amended Order - May 12, 2020

Magistrate Judge Cecilia M. Romero

ClearPlay, Inc. v. DISH Network, LLC et al– The U.S. District Court for the District of Utah’s Central Division granted defendants Motion To Stay pending reexamination proceedings in the United States Patent and Trademark Office (USPTO). In weighing the relevant factors, the Court indicated that it was “mindful of the age of this case and the recent delays” resulting from the COVID-19 pandemic but concluded that the status of the case factor warranted a stay since substantial proceedings were yet to be completed, including expert discovery, dispositive motions, and trial. (Case No. 2:14-cv-00191, presiding before District Judge David Nuffer; June 18, 2021).