In Re SAMSUNG ELECTRONICS CO., LTD. ( 2021 )

Case: 21-139 Document: 33 Page: 1 Filed: 06/30/2021
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: SAMSUNG ELECTRONICS CO., LTD.,
SAMSUNG ELECTRONICS AMERICA, INC., LG
ELECTRONICS INC., LG ELECTRONICS USA, INC.,
Petitioners
______________________
2021-139, 2021-140
______________________
On Petitions for Writs of Mandamus to the United
States District Court for the Western District of Texas in
Nos. 6:20-cv-00257-ADA, 6:20-cv-00259-ADA, Judge Alan
D. Albright.
______________________
ON PETITION
______________________
BRADLEY GARCIA, O'Melveny & Myers LLP, Washing-
ton, DC, for petitioners. Also represented by DAVID
ALMELING, DANIEL SILVERMAN, DARIN W. SNYDER, San
Francisco, CA; NICHOLAS WHILT, Los Angeles, CA.
KARL RUPP, Nix Patterson, LLP, Dallas, TX, for re-
spondents Ikorongo Texas LLC, Ikorongo Technology LLC.
Also represented by DEREK TOD GILLILAND, Sorey Law
Firm, Longview, TX; HOWARD N. WISNIA, Wisnia PC, San
Diego, CA.
JOSHUA S. LANDAU, Computer & Communications In-
dustry Association, Washington, DC, for amicus curiae
Computer & Communications Industry Association.
Case: 21-139 Document: 33 Page: 2 Filed: 06/30/2021
2 IN RE: SAMSUNG ELECTRONICS CO., LTD.
______________________
Before LOURIE, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge.
ORDER
In these patent infringement suits, which have been
consolidated for purposes of these mandamus petitions,
Samsung Electronics Co., Ltd. et al. (collectively, “Sam-
sung”) and LG Electronics Inc. et al. (collectively, “LG”)
seek writs of mandamus ordering the United States Dis-
trict Court for the Western District of Texas to transfer the
underlying actions to the United States District Court for
the Northern District of California. For the following rea-
sons, we grant the writs of mandamus.
BACKGROUND
A.
Ikorongo Texas LLC (“Ikorongo Texas”) filed the initial
complaints in these cases against Samsung and LG in the
Western District of Texas on March 31, 2020—a month af-
ter Ikorongo Texas was formed as a Texas limited liability
company. Although Ikorongo Texas claims to be unrelated
to Ikorongo Technology LLC (“Ikorongo Tech”), a North
Carolina limited liability company, the operative com-
plaints indicate that Ikorongo Texas and Ikorongo Tech are
run out of the same Chapel Hill, North Carolina office. Ad-
ditionally, as of March 20, 2020, the same five individuals
“own[ed] all of the issued and outstanding membership in-
terests” in both Ikorongo entities. Assignments of Patent
Rights at 4, Ikorongo Texas LLC v. LG Elecs. Inc., No. 6:20-
cv-00257-ADA (W.D. Tex. Jan. 5, 2021), ECF Nos. 57-4, 57-
5 (exhibits to Ikorongo entities’ brief in opposition to LG’s
motion to transfer).
Ikorongo Tech owns the four patents that are asserted
in the suits. Approximately ten days before the initial
Case: 21-139 Document: 33 Page: 3 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 3
complaints were filed in these cases, Ikorongo Tech as-
signed to Ikorongo Texas exclusive rights to sue for in-
fringement and collect past and future damages for those
patents within certain specified parts of the state of Texas,
including certain counties in the Western District of Texas,
while retaining the rights to the patents in the rest of coun-
try.
The day after the initial complaints were filed, Ikor-
ongo Texas and Ikorongo Tech filed first amended com-
plaints, this time naming both Ikorongo Tech and Ikorongo
Texas as co-plaintiffs, noting that “[t]ogether Ikorongo TX
and Ikorongo Tech own the entire right, title and interest
in the Asserted Patents, including the right to sue for past,
present and future infringement and damages thereof,
throughout the entire United States and world.”
The amended complaints assert generally that Sam-
sung and LG had infringed at least one claim of the as-
serted patents by making, using, testing, selling, offering
for sale, or importing into the United States devices that
perform certain functionality. The complaints do not dis-
tinguish between infringement in the Western District of
Texas and infringement elsewhere in the United States. It
appears undisputed that Ikorongo Texas and Ikorongo
Tech’s infringement contentions are directed at functional-
ity in third-party applications (Google Maps, Google+,
Google Play Music, YouTube Music, and AT&T Secure
Family) that run on the accused mobile products sold by
Samsung and LG.
B.
In September 2020, Samsung and LG separately
moved under 28 U.S.C. § 1404(a) to transfer the suits to the
Northern District of California. They argued that three of
the five accused third-party applications were developed in
Northern California where those third parties conduct sig-
nificant business activities and that no application was de-
veloped or researched in Western Texas. Samsung and LG
Case: 21-139 Document: 33 Page: 4 Filed: 06/30/2021
4 IN RE: SAMSUNG ELECTRONICS CO., LTD.
further argued that potential witnesses and sources of
proof were in the Northern District of California, including
two of the named inventors, and that no source of proof or
potential witness was in the Western District of Texas.
On March 1, 2021, the district court denied LG’s and
Samsung’s motions. The court first concluded that LG and
Samsung failed to establish the threshold requirement
that the complaints “might have been brought” in the
Northern District of California. § 1404(a). The court
acknowledged that there was no dispute that the defend-
ants would be subject to venue in the Northern District of
California based on Ikorongo Tech’s allegations. However,
because Ikorongo Texas’s rights under the asserted patents
could not have been infringed in the Northern District of
California, the court held that venue over the entirety of
the actions was improper under 28 U.S.C. § 1400(b).
Alternatively, the court analyzed the traditional pub-
lic- and private-interest factors. As to the private-interest
factors, the district court acknowledged that “the location
of the documents relevant in [these] case[s] tilts [the
sources of proof] factor towards transfer,” citing LG and
Samsung’s argument that “the greatest volume of evidence
is with key third parties located in the Northern District of
California,” including “technical documents and source
code,” and that Ikorongo Texas and Ikorongo Tech failed to
identify any sources of proof in the Western District of
Texas.
With regard to potential witnesses, the district court
noted that Samsung and LG had identified potential wit-
nesses in Northern California and no potential witness in
or near the Western District of Texas. However, the dis-
trict court weighed the willing witness factor “only very
slightly in favor of transfer” and the compulsory process
factor “neutral.” The court explained that it “gives the con-
venience of party witnesses little weight” generally. And
while recognizing that “the Northern District of California
Case: 21-139 Document: 33 Page: 5 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 5
is the more convenient forum for a high percentage” of
third-party employees “who may be relevant witnesses,”
the court stated generally its view that “only a few party
witnesses and even fewer non-party witnesses will likely
testify at trial,” and weighed against transfer plaintiffs’
willingness to cover the expenses of third parties.
As to the local interest factor, the district court noted
and rejected Samsung and LG’s argument that the North-
ern District of California had a greater local interest in this
case because the third-party applications were developed
there, at least LG integrated the accused applications in
the proposed transferee district, and no party had any
meaningful connection to the Western District of Texas.
The district court explained that “it is generally a fiction
that patent cases give rise to local controversy or interest”
and “Ikorongo Texas’s claims do specifically relate to in-
fringement in this District.”
The district court weighed the “practical problems” fac-
tor against transfer. The court noted that Ikorongo Texas
and Ikorongo Tech had separately filed suit against Bum-
ble Trading, LLC in the Western District of Texas “for in-
fringing on patents asserted in this action, and Bumble
withdrew its motion to transfer.” The court explained that
“judicial economy and the possibility of inconsistent rulings
causes the Court to find this factor weighs against transfer,
given that at least one of the co-pending cases will remain
in this District.” In addition, the court added that it could
likely hold a trial sooner than the Northern District of Cal-
ifornia, citing in part its patent-specific Order Governing
Proceedings that “ensures efficient administration[.]” The
court therefore concluded that defendants had not met
their burden to demonstrate cause for transfer.
These petitions followed, which were consolidated in
our court, and raise the same two challenges: First,
whether the district court erred in concluding that venue
in the Northern District of California under § 1400(b) is
Case: 21-139 Document: 33 Page: 6 Filed: 06/30/2021
6 IN RE: SAMSUNG ELECTRONICS CO., LTD.
improper; and second, whether the district court clearly
erred in its assessment of the traditional transfer factors
and in its ultimate conclusion that the transferee venue
was not clearly more convenient for trial.
DISCUSSION
We “may issue all writs necessary or appropriate in aid
of [our] jurisdiction[] and agreeable to the usages and prin-
ciples of law” under the All Writs Act. 28 U.S.C. § 1651(a).
Three conditions must be met before a writ may issue:
(1) the petitioner “[must] have no other adequate means to
attain . . . relief,” (2) the petitioner must show that the
right to mandamus is “clear and indisputable,” and (3) the
court “must be satisfied that the writ is appropriate under
the circumstances.” Cheney v. U.S. Dist. Ct. for D.C., 542
U.S. 367, 380–81 (2004) (first alteration in original) (inter-
nal quotation marks and citations omitted).
We apply the law of the regional circuit—in this case
the Fifth Circuit—in mandamus review of a district court’s
ruling on a motion to transfer pursuant to § 1404(a). In re
Apple, Inc., 979 F.3d 1332, 1336 (Fed. Cir. 2020) (citing In
re Barnes & Noble, Inc., 743 F.3d 1381, 1383 (Fed. Cir.
2014)). We thus review a district court’s decision to deny
transfer for an abuse of discretion. See In re TS Tech USA
Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (applying Fifth
Circuit law). “A district court would necessarily abuse its
discretion if it based its ruling on an erroneous view of the
law or on a clearly erroneous assessment of the evidence.”
Cooter & Gell v. Hartmarx Corp., 496 U.S. 384, 405 (1990).
Errors of judgment in weighing relevant factors are also a
ground for finding an abuse of discretion. See TS Tech, 551
F.3d at 1320. We may grant mandamus when the denial
of transfer was a clear abuse of discretion under governing
legal standards. See In re Genentech, Inc., 566 F.3d 1338,
1348 (Fed. Cir. 2009) (also applying Fifth Circuit law); TS
Tech, 551 F.3d at 1318–19.
Case: 21-139 Document: 33 Page: 7 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 7
A.
Under § 1404(a), “[f]or the convenience of parties and
witnesses, in the interest of justice, a district court may
transfer any civil action to any other district or division
where it might have been brought or to any district or divi-
sion to which all parties have consented.” A case may be
transferred under § 1404(a) only to a court that has venue
over the civil action. See In re SK hynix Inc., 847 F. App’x
847 (Fed. Cir. 2021). Whether the two cases could be trans-
ferred under § 1404(a) turns on whether venue in the
Northern District of California would have been proper un-
der § 1400(b) had these cases been filed in that district.
That statutory provision provides, in relevant part, that
“[a]ny civil action for patent infringement may be brought
. . . where the defendant has committed acts of infringe-
ment and has a regular and established place of business.” 1
As an initial matter, we reject Ikorongo Texas and Ikor-
ongo Tech’s argument that the initial complaint filed only
by Ikorongo Texas governs this inquiry. Once the respond-
ents filed their amended complaints, the original com-
plaints were “dead letter[s]” and “no longer perform[ed]
any function in the case[s].” ConnectU LLC v. Zuckerberg,
522 F.3d 82, 91 (1st Cir. 2008) (internal quotation marks
and citations omitted). That understanding has been
1 There is no dispute here that the “established place
of business” requirement is satisfied in both cases. LG
Electronics U.S.A, Inc. has offices in Santa Clara and San
Francisco, California, where it has about 120 employees.
Samsung Electronics America, Inc. has offices in the
Northern District of California from which more than 300
employees work. And Samsung Electronics Co., Ltd., and
LG Electronics Inc. are also subject to venue in Northern
California given their status as foreign corporations. See
In re HTC Corp., 889 F.3d 1349, 1359 (Fed. Cir. 2018) (for-
eign corporations are subject to venue in any district).
Case: 21-139 Document: 33 Page: 8 Filed: 06/30/2021
8 IN RE: SAMSUNG ELECTRONICS CO., LTD.
uniformly applied in a variety of contexts, including for
purposes of venue. See, e.g., Eason v. Holt, 73 F.3d 600,
603 (5th Cir. 1996) (“The amended complaint . . . super-
sede[s] the original complaint[.]”); Fawzy v. Wauquiez
Boats SNC, 873 F.3d 451, 455 (4th Cir. 2017); Fullerton v.
Maynard, 943 F.2d 57, 1991 WL 166400, at *2 (10th Cir.
Aug. 29, 1991) (“Because the amended complaint super-
sedes the original complaint, proper venue . . . must be es-
tablished from facts alleged in the amended complaint.”).
Contrary to Ikorongo Texas and Ikorongo Tech’s con-
tention, Hoffman v. Blaski, 363 U.S. 335 (1960), does not
support a different rule for transfer under § 1404(a). Hoff-
man indicated that the “where it might have been brought”
language of § 1404(a) “directs the attention of the judge
who is considering a transfer to the situation which existed
when suit was instituted,” but it did so in the context of
holding a defendant could not expand jurisdiction through
acts of waiver. Id. at 343 (internal quotation marks and
citation omitted). The Court interpreted the statute to bar
a defendant from creating venue in a new district “between
the bringing of the action and the filing of a motion to
transfer it”—for example, by moving residence or begin-
ning to transact business. Id. at 342. Hoffman did not in-
volve the circumstances here, and did not involve or
address the filing of an amended complaint. We are una-
ware of any instance, and none has been called to our at-
tention, in which a court has denied transfer based on the
original complaint despite an amended complaint estab-
lishing proper venue.
We therefore look to the amended complaints to deter-
mine whether venue would have been proper had these
suits initially been filed in Northern California. Although
the district court correctly focused on those complaints, it
erred when analyzing whether venue was proper.
The district court reasoned that the plaintiffs’ agree-
ment “allows Ikorongo Texas to protect its rights to the
Case: 21-139 Document: 33 Page: 9 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 9
patent within the prescribed geographic region,” including
the right to sue for infringement. The district court further
explained that the proper inquiry was “where [defendants]
committed any alleged acts of infringement as to Ikorongo
Texas,” because “[a]ny alleged infringement by Samsung
[and LG] could have only occurred within the geographic
locations described in the specialized part.” Because “Ikor-
ongo Texas’s current action could [not] have initially been
brought in the Northern District of California,” the court
found that the transfer motions had to be denied. This con-
clusion was erroneous because the district court disre-
garded the pre-litigation acts by Ikorongo Tech and
Ikorongo Texas aimed at manipulating venue.
Typically, “venue must be proper for each claim,” Beat-
tie v. United States, 756 F.2d 91, 101 (D.C. Cir. 1984) (citing
15 Charles Alan Wright, Alan R. Miller & Edward H.
Cooper, Federal Practice and Procedure § 3808 (1976)). On
the face of the complaint, the Northern District of Califor-
nia could not be a proper venue for Ikorongo Texas’s claims
because no act of infringement of Ikorongo Texas’s rights
took place there. But in ascertaining proper venue, we are
not bound by a plaintiff’s efforts to manipulate venue.
In the context of jurisdiction, 28 U.S.C. § 1359 pro-
vides: “A district court shall not have jurisdiction of a civil
action in which any party, by assignment or otherwise, has
been improperly or collusively made or joined to invoke the
jurisdiction of such court.” Under this statute (and its pre-
decessors), in cases similar to this one, the Supreme Court
and other courts have rejected litigants’ attempts to ma-
nipulate jurisdiction, disregarding property transfers
among entities under common ownership designed to cre-
ate jurisdiction. See, e.g., Hertz Corp. v. Friend, 559 U.S.
77, 97 (2010) (urging courts to disregard a party’s “at-
tempts at manipulation” of jurisdiction); Kramer v. Carib-
bean Mills, Inc., 394 U.S. 823, 824, 827–28 (1969) (rejecting
diversity jurisdiction predicated on a pretextual, collusive
transfer of an agreement, because the transferee had been
Case: 21-139 Document: 33 Page: 10 Filed: 06/30/2021
10 IN RE: SAMSUNG ELECTRONICS CO., LTD.
previously unconnected to the matter and simultaneously
reassigned 95% of his interest in the cause of action back
to the transferor); Miller & Lux, Inc. v. E. Side Canal &
Irrigation Co., 211 U.S. 293, 305–06 (1908) (holding that a
California corporation could not “collusively” create federal
diversity jurisdiction by forming a new Nevada corporation
and transferring thereto the property at issue in the litiga-
tion); Lehigh Mining & Mfg. Co. v. Kelly, 160 U.S. 327, 339–
40 (1895) (holding that a Virginia corporation could not cre-
ate diversity jurisdiction by organizing a Pennsylvania cor-
poration for no other purpose than to receive the lands at
issue and create a federal case); McSparran v. Weist, 402
F.2d 867, 875–76 (3d Cir. 1968) (en banc) (expounding
plaintiff’s burden to demonstrate that a transaction pur-
portedly creating diversity jurisdiction is “real,” with “sig-
nificance beyond establishment of diversity jurisdiction”);
Greater Dev. Co. of Conn., Inc. v. Amelung, 471 F.2d 338,
339 (1st Cir. 1973) (limiting diversity jurisdiction based on
a transfer of corporate citizenship to cases in which “a cor-
poration conducting an on-going business transfers all its
assets and its business to another corporation, and the
transferor is dissolved”); see also O’Brien v. AVCO Corp.,
425 F.2d 1030, 1033–34 (2d Cir. 1969).
Although there is not an analogous statute for venue,
in similar situations, the Supreme Court and this court
have repeatedly assessed the propriety of venue by disre-
garding manipulative activities of the parties. In Van
Dusen v. Barrack, 376 U.S. 612 (1964), for example, the Su-
preme Court addressed whether § 1404(a) allowed “parties
opposed to transfer, by means of their own acts or omis-
sions, to prevent a transfer otherwise proper and war-
ranted by convenience and justice.” Id. at 623. The Court
rejected that interpretation and explained as follows:
§ 1404(a) should be construed to prevent parties
who are opposed to a change of venue from defeat-
ing a transfer which, but for their own deliberate
acts or omissions, would be proper, convenient and
Case: 21-139 Document: 33 Page: 11 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 11
just. The power to defeat a transfer to the conven-
ient federal forum should derive from rights and
privileges conferred by federal law and not from the
deliberate conduct of a party favoring trial in an in-
convenient forum.
Id. at 624.
We have similarly rejected parties’ attempts to manip-
ulate venue. In In re Microsoft Corp., 630 F.3d 1361 (Fed.
Cir. 2011), the plaintiff, a Texas corporation, maintained
an office in the Eastern District of Texas, where it kept its
documents. While the plaintiff operated from the United
Kingdom and had no employees anywhere in the United
States, it pointed to its presence in Texas to argue that the
Eastern District of Texas would be a convenient forum. Id.at 1362–64. We disagreed, holding that the plaintiff’s in-
corporation, office, and documents in Texas “were recent,
ephemeral, and a construct for litigation and appeared to
exist for no other purpose than to manipulate venue . . . in
anticipation of litigation.” Id. at 1365; see also In re Zim-
mer Holdings, Inc., 609 F.3d 1378, 1381 (Fed. Cir. 2010)
(citation omitted) (finding that transfer of documents to a
Texas office space was “recent, ephemeral, and an artifact
of litigation,” and therefore “entitled to no weight in the
court’s venue analysis”); In re Hoffmann-La Roche Inc., 587
F.3d 1333, 1337 (Fed. Cir. 2009) (characterizing pre-litiga-
tion transfer of documents as “a fiction which appears to
have been created to manipulate the propriety of venue”
and concluding that the denial of transfer “ha[d] no legally
rational basis” as a result).
Although our previous cases addressing venue manip-
ulation by plaintiffs involved “the convenience of parties
and witnesses, in the interest of justice” factor, longstand-
ing principles against manipulation are no less applicable
to the requirement that an action “might have been
brought” in the transferee district.
Case: 21-139 Document: 33 Page: 12 Filed: 06/30/2021
12 IN RE: SAMSUNG ELECTRONICS CO., LTD.
These cases present just such a manipulation under
§ 1404(a). Ikorongo Texas was created and assigned its
targeted geographic rights in counties in the Western Dis-
trict of Texas in the month leading up to these suits. The
same group of five individuals owns all membership inter-
ests in both Ikorongo entities. Ikorongo Texas and Ikor-
ongo Tech share the same office in North Carolina, and the
same person signed the relevant agreement documents on
behalf of both companies. Nothing would prevent the Ikor-
ongo entities from undoing the assignment if they so de-
sired. Moreover, it does not appear that Ikorongo Texas
conducts any other business—rather, it seems to exist for
the sole purpose of limiting venue to the Western District
of Texas.
This case is quite similar to Miller & Lux, a jurisdiction
case arising under the version of 28 U.S.C. § 1359 then in
force. There, a California corporation sought to sue an-
other California corporation. See 211 U.S. at 298. To cre-
ate diversity jurisdiction, the plaintiff California
corporation organized an eponymous Nevada corporation;
the two corporations had the same directors, and all of the
stock in the Nevada corporation was issued to its California
counterpart. Id. at 299–300. The California corporation
transferred to the Nevada corporation “the property rights
which the California corporation had asserted,” on which
basis the Nevada corporation invoked diversity jurisdiction
in the Southern District of California. Id. at 296, 306. The
California transferor, meanwhile, was never dissolved, and
could therefore control the Nevada corporation’s suit and
reacquire any potential gains awarded in the litigation. Id.
at 300, 305. The Supreme Court rejected this attempt to
“collusively” create jurisdiction. Id. at 306.
Thus—here as in Miller & Lux—the presence of Ikor-
ongo Texas is plainly recent, ephemeral, and artificial—
just the sort of maneuver in anticipation of litigation that
has been routinely rejected. In the venue analysis, there-
fore, we need not consider separately Ikorongo Texas’s
Case: 21-139 Document: 33 Page: 13 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 13
geographically bounded claims. And disregarding this ma-
nipulation, Ikorongo Tech could have filed suit in the
Northern District of California.
Under the proper construction of § 1404(a), then, these
cases “might have been brought” in the Northern District
of California.
B.
We now turn to Samsung and LG’s arguments concern-
ing the merits of their transfer motions. In general, we give
substantial deference to how a district court balances con-
veniences and fairness factors that favor transfer against
practical and public concerns if the cases were transferred.
However, we have explained that “a clear abuse of discre-
tion in balancing convenience against judicial economy un-
der § 1404 is not outside the scope of correctible error on
mandamus review.” In re Vistaprint Ltd., 628 F.3d 1342,
1346 (Fed. Cir. 2010); In re Google Inc., No. 2017-107, 2017
WL 977038 at *2 (Fed. Cir. Feb. 23, 2017); In re Apple, Inc.,
581 F. App’x 886, 889–90 (Fed. Cir. 2014). Here, we find
that the court’s conclusions were such an abuse.
To begin with, the district court here clearly assigned
too little weight to the relative convenience of the Northern
District of California. Given the relevant events and cir-
cumstances giving rise to these infringement claims, it is
unsurprising that many identified sources of proof and
likely witnesses are in Northern California and none in the
Western District of Texas. Indeed, petitioners submitted
undisputed affidavits identifying over a dozen third-party
individuals with relevant and material information as re-
siding in Northern California. Moreover, at least two of the
inventors also reside in Northern California. In addition,
LG indicated that its relevant party witnesses also reside
in the Northern District of California. By contrast, not a
single witness has been identified as residing in or near the
Western District of Texas.
Case: 21-139 Document: 33 Page: 14 Filed: 06/30/2021
14 IN RE: SAMSUNG ELECTRONICS CO., LTD.
In weighing the willing witness factor only slightly fa-
voring transfer to the Northern District of California, the
district court provided no sound basis to diminish these
conveniences. It gave no weight to the presence of possible
party witnesses in Northern California despite this court
holding that the district court must consider those individ-
uals. See In re Apple Inc., 818 F. App’x 1001, 1003 (Fed.
Cir. 2020). The court also erroneously discounted the con-
venience of third-party witnesses by presuming that “only
a few . . . non-party witnesses will likely testify at trial.”
Even if not all witnesses testify, with nothing on the other
side of the ledger, the factor strongly favors transfer. More-
over, because these potential witnesses reside in Northern
California, transfer ensures that the transferee court could
compel these individuals to appear.
At the same time, the district court overstated the con-
cern about waste of judicial resources and risk of incon-
sistent results in light of plaintiffs’ separate infringement
suit against Bumble in the Western District of Texas. Only
two of the patents in these cases overlap with those in the
action brought against Bumble. In addition, the Bumble
case involves an entirely different underlying application.
Accordingly, it is “likely that these cases will result in sig-
nificantly different discovery, evidence, proceedings, and
trial.” See In re Zimmer, 609 F.3d at 1382. And im-
portantly, to the extent that there are remaining overlap-
ping invalidity or infringement issues, “the MultiDistrict
Litigation Procedures exist to effectuate this sort of effi-
ciency.” In re EMC Corp., 501 F. App’x 973, 976 (Fed. Cir.
2013). Thus, the incremental gains in keeping these cases
in the Western District of Texas simply are not sufficient
to justify overriding the inconvenience to the parties and
witnesses.
Moreover, other public interest factors favor transfer.
The Supreme Court has long held that there is “a local in-
terest in having localized controversies decided at home.”
Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 509 (1947). The
Case: 21-139 Document: 33 Page: 15 Filed: 06/30/2021
IN RE: SAMSUNG ELECTRONICS CO., LTD. 15
district court, however, declares that “it is generally a fic-
tion that patent cases give rise to local controversy or in-
terest, particularly without record evidence suggesting
otherwise.” Local interests are not a fiction, and the record
evidence here shows a substantial local interest.
The relevant events leading to the infringement claims
here took place largely in Northern California, and not at
all in the Western District of Texas. Both petitioners are
accused of infringing the asserted patents based on third-
party applications running on LG’s and Samsung’s accused
products. It is undisputed that those third parties re-
searched, designed, and developed most of those applica-
tions in Northern California. These are significant factors
that give the Northern District of California a legitimate
interest in adjudicating the cases “at home.” See In re Ap-
ple Inc., 979 F.3d 1332, 1344–45 (Fed. Cir. 2020) (“This fac-
tor most notably regards not merely the parties’ significant
connections to each forum writ large, but rather the ‘signif-
icant connections between a particular venue and the
events that gave rise to a suit.’” (quoting In re Acer Am.
Corp, 626 F.3d 1252, 1256 (Fed. Cir. 2010)) (emphasis omit-
ted)).
The district court’s weighing of the local interest factor
as neutral on the ground that “Ikorongo Texas’s claims do
specifically relate to infringement in this District . . . re-
gardless of when the entity formed” is error. The fact that
infringement is alleged in the Western District of Texas
gives that venue no more of a local interest than the North-
ern District of California or any other venue. See Hoff-
mann-La Roche, 587 F.3d at 1338 (concluding that “the
sale of an accused product offered nationwide does not give
rise to a substantial interest in any single venue”); In re
TOA Techs., Inc., 543 F. App’x 1006, 1009 (Fed. Cir. 2013)
(stating that “in cases where there is a significant connec-
tion between a particular venue and a suit[,] the sale of a
product in the plaintiff's preferred forum should not negate
this factor being weighed in favor of transfer”). The facts
Case: 21-139 Document: 33 Page: 16 Filed: 06/30/2021
16 IN RE: SAMSUNG ELECTRONICS CO., LTD.
of this case indicate that the local interest factor weighs in
favor of Samsung and LG.
Ikorongo Texas and Ikorongo Tech urge that the dis-
trict court’s conclusions can be upheld on the court conges-
tion factor. But we cannot say that the prospective speed
with which this case might be brought to trial is of partic-
ular significance in these cases. The district court found
that this factor weighed against transfer in part based on
considerations that have no bearing on whether the North-
ern District of California has a more congested docket. See
Apple, 979 F.3d at 1344 (“We have previously explained
that a court’s general ability to set a fast-paced schedule is
not particularly relevant to this factor.”). And even if the
court’s speculation is accurate that it could more quickly
resolve these cases based on the transferee venue’s more
congested docket, neither respondents nor the district
court pointed to any reason that a more rapid disposition
of the case that might be available in the Western District
of Texas would be important enough to be assigned signif-
icant weight in the transfer analysis here.
Accordingly,
IT IS ORDERED THAT:
The petitions for writs of mandamus are granted. The
district court’s March 1, 2021 orders denying transfer are
vacated, and the district court is directed to grant Sam-
sung’s and LG’s motions to the extent that the cases are
transferred to the United States District Court for the
Northern District of California under 28 U.S.C. § 1404(a).
FOR THE COURT
June 30, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s25