District Judge Alan D. Albright has denied another motion by Apple for a convenience transfer out of the Western District of Texas to the Northern District of California. STC.UNM, the intellectual property enforcement arm of the Board of Regents of the University of New Mexico, sued Apple in West Texas after beginning this campaign three months earlier with a lawsuit in the same venue against TP-Link, filed in April 2019. The presence of that prior case may have been pivotal, at least under these circumstances, to the court's denial, in which Judge Albright also declined to rely on any arguments concerning the impact of the global COVID-19 pandemic, calling them "too speculative at this time".

The court considered eight factors under its convenience transfer analysis, finding three of them to be neutral while four of the other seven broke evenly: two weighing in favor of transfer and two weighing against transfer. The eighth factor—"all other practical problems that make trial of a case easy, expeditious and inexpensive"—tipped the balance for Judge Albright, weighing slightly against transfer to California. Although the court characterized the only other previously filed suit in this campaign as "not being as developed as the current case", Judge Albright noted that it still "involves the same patents and claims at issue, and transfer of this case 'would lead to two separate cases in two separate Courts about the same claims in the same patents, which would create a disruption in judicial economy, not to mention a possibility of obtaining inconsistent rulings'". (The court did not consider the presence of 2020 STC.UNM cases against ASUSTek and D-Link, also now before Judge Albright.)

As RPX reported in detail in early March (see "Might the Western District of Texas Become as 'Sticky' as the Eastern District?"), the parties spent a lot of energy in their briefs arguing whether two factors in particular—the ease of access to sources of proof and the cost to willing witnesses—weighed for or against transfer. They did so, at least apparently in part, because in a September 2019 order denying transfer of a Fintiv case against Apple, Judge Albright downplayed any inconvenience to party witnesses, first stating that the "convenience of party witnesses is given little weight" and shortly thereafter reiterating that "[i]n any case, courts give the convenience of party witnesses little weight". In its brief in the STC.UNM case, Apple submitted by footnote "that affording little weight to the inconvenience of party witnesses is inconsistent with the great weight of authority . . . Although the inconvenience to non-party witnesses may be afforded greater weight, it is not appropriate to afford little weight to party witness inconvenience" (citations omitted).

Here, Judge Albright found both the "ease of access" and "willing witnesses" prongs tipped toward transfer, as Apple had urged. However, with respect to two other factors—court congestion and local interest—the court went the other way. As to court congestion, Judge Albright noted that the operative scheduling order had a claim construction hearing set for April 3, 2020 and a trial set for March 2021, "only 20 months after the case was filed compared to median time of 28 months in the NDCA". (The court apparently erred in this section of its order, wrongly characterizing its conclusion as finding "that this factor weighs in favor of transfer because the 20-month time to trial of this case is significantly shorter (and approximately 30% faster) than the median of 28.4 months to trial in the NDCA" (emphasis added).)

The court noted competing arguments made at the hearing over Apple's transfer motion concerning the potential impact of the global COVID-19 pandemic: "that the virus has had a substantially greater impact and has significantly slowed down the dockets in the NDCA" versus "that the virus could also discourage air-travel from California to the WDTX". Judge Albright declined to consider the arguments in its analysis of court congestion "because they "look too far forward and speculate as to the uncertain impact of the virus".

Despite Apple's (and chipmaker Broadcom's) presence in the Northern District of California and despite a dearth of connection between plaintiff STC.UNM and the Western District of Texas, the court found that the local interest factor favors retaining the case in Texas. In so doing, Judge Albright pointed to, among other things, the fact that Apple employs a large number of people in West Texas and that, to the extent Broadcom's interest should weigh toward transfer, the interest of the Wi-Fi Alliance—an Austin-based entity, according to STC.UNM, formed to "ensure and promote compliance with" the 802.11ac Wi-Fi standard—tips the analysis the other way. The court also noted that "one of the Accused Products is being manufactured within this District".

Those accused products appear on a long list of Apple devices purportedly practicing the 802.11ac Wi-Fi standard, which STC.UNM alleges infringe three asserted data transmission patents, developed by Industrial Technology Research Institute (ITRI). STC.UNM acquired the patents in August 2018. The court did indeed hold its claim construction hearing in the Apple case on April 3 (telephonically pursuant to the court's new standing order in light of the COVID-19 outbreak); an order has yet to issue. The TP-Link has been stalled by difficulties in serving the defendants; in early January 2020, the court issued an order denying without prejudice STC.UNM's motion to effect alternative service on TP-Link's domestic subsidiary but granting the plaintiff leave to conduct limited discovery to explore the relationship between the two. The ASUSTek and D-Link cases are in the earliest stages.

RPX noted in mid-February that the Western District of Texas had overtaken the District of Delaware as the top patent venue, both of them ahead of the traditional favorite, the Eastern District of Texas. Since then Delaware has pulled back ahead when all patent plaintiffs are considered, but West Texas has kept out in front when it comes to NPE plaintiffs. Since confirmation to the bench in September 2018, Judge Albright has taken active steps to make the Western District of Texas that hotbed for patent litigation, including issuing a standing order that implements rules designed to appeal to all parties; balancing convenience factors in a way that suggests that it will be difficult for defendants to meet its "heavy burden" of showing that another venue is "clearly more convenient"; and treating early Alice motions challenging claims from asserted patents as directed to unpatentable subject matter with heavy skepticism. A fuller treatment of this last step can be read here.

In his order denying Apple's motion to transfer to California, Judge Albright did address STC.UNM's argument that, as an arm of the University of New Mexico, it enjoys "rights afforded to a sovereign" and should at least be afforded "heightened deference" in a court's transfer analysis. The court refused to do so, ruling that "[e]ven if STC.UNM enjoys sovereign immunity, this Court finds that this case may still be transferred pursuant to Apple's motion" and that the "inherent powers of a sovereign do not nullify the venue rules in a patent infringement suit once the sovereign chooses to file such a suit in federal court".

Judge Albright also granted Apple's request for an intradistrict transfer, from the Waco division to the Austin division, within the Western District of Texas. He remains the judge in the case.

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