Case: 21-150 Document: 12 Page: 1 Filed: 07/08/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: UBER TECHNOLOGIES, INC.,
Petitioner
______________________
2021-150
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00843-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before LOURIE, DYK, and REYNA, Circuit Judges.
DYK, Circuit Judge.
ORDER
In this patent infringement case brought by Ikorongo
Technology LLC and Ikorongo Texas LLC (collectively,
“Ikorongo”), the United States District Court for the West-
ern District of Texas denied Uber Technologies, Inc.’s mo-
tion to transfer to the United States District Court for the
Northern District of California under
28 U.S.C. § 1404(a).
Uber seeks a writ of mandamus directing transfer.
In its order denying transfer, the district court deter-
mined that Uber had failed to establish that this action
“might have been brought” originally in Northern
Case: 21-150 Document: 12 Page: 2 Filed: 07/08/2021
2 IN RE: UBER TECHNOLOGIES, INC.
California as required under section 1404(a). Specifically,
the district court found that the California forum would not
be a proper venue under
28 U.S.C. § 1400(b) over Ikorongo
Texas’s claims, which were limited to its geographic rights
under the asserted patents to certain counties in Texas. In
doing so, the district court rejected Uber’s argument that
Ikorongo Texas’s recent formation and acquisition of those
specified rights from Ikorongo Tech (which shares offices in
Northern California and the same ownership and manage-
ment team as Ikorongo Texas) should be disregarded as
mere tactics to avoid transfer. In the alternative, the dis-
trict court found that Uber had failed to show the Northern
District of California was clearly more convenient for trial.
We recently granted mandamus to direct the Western
District of Texas to transfer to the Northern District of Cal-
ifornia two other actions of Ikorongo asserting infringe-
ment of two of the same patents against different
defendants. See In re Samsung Electronics Co., Nos. 2021-
139, -140, ___ F.4th __,
2021 WL 2672136 (Fed. Cir. June
30, 2021). Samsung rejected the district court’s determi-
nation that Ikorongo’s actions could not have been brought
in the transferee venue. Samsung observed that “the pres-
ence of Ikorongo Texas is plainly recent, ephemeral, and
artificial” and “the sort of maneuver in anticipation of liti-
gation that has been routinely rejected” by the Supreme
Court and this court in related contexts.
2021 WL
2672136, at *5–6. As a result, this court in Samsung held
that it did not need to “consider separately Ikorongo
Texas’s geographically bounded claims” for purposes of as-
sessing whether the Northern District of California had
venue over the case under section 1400(b).
Id.
The district court itself recognized “that the issues pre-
sent here are identical to those” in Ikorongo’s other cases.
Appx6. As in Samsung, the Western District of Texas erred
in this case in concluding that Uber had failed to satisfy
the threshold requirement for transfer of venue.
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IN RE: UBER TECHNOLOGIES, INC. 3
The district court’s analysis of the traditional public
and private factors in this case is also virtually the same to
its analysis in the cases in Samsung. As in this case, Sam-
sung involved cases where the accused technology was re-
searched, designed, and developed in the Northern District
of California and the defendants identified several party
and non-party witnesses, including two inventors, as resid-
ing in the Northern District of California, while no party
identified a single witness as residing in or close to the
Western District of Texas. Here, Uber is headquartered in
the Northern District of California and below submitted a
declaration identifying over a dozen witnesses residing in
the transferee venue that were linked to the development
of the accused technology. See Appx161–63.
In Samsung, we rejected the district court’s conclusion
that the willing witness factor weighed only slightly in fa-
vor of transfer. See
2021 WL 2672136, at *6. We explained
that the court had erroneously diminished the relative con-
venience of the Northern District of California by: (1) giv-
ing little weight to the presence of identified party
witnesses in the Northern District of California despite no
witness being identified in or near the Western District of
Texas and (2) simply presuming that few, if any, party and
non-party identified witnesses will likely testify at trial de-
spite the defendants’ submitting evidence and argument to
the contrary.
Id. At the same time, Samsung rejected the
district court’s view that there was a strong public interest
in retaining the case in the district based on Ikorongo’s
other pending infringement action against Bumble Trad-
ing, LLC. Because “the Bumble case involves an entirely
different underlying application,” we explained, it was un-
likely the cases would result in inconsistent judgments.
Id.
Samsung, moreover, explained that multidistrict litigation
procedures could efficiently resolve overlapping invalidity
or infringement issues.
Id. Accordingly, we said that “the
incremental gains in keeping these cases in the Western
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4 IN RE: UBER TECHNOLOGIES, INC.
District of Texas simply are not sufficient to justify over-
riding the inconvenience to the parties and witnesses.”
Id.
Samsung bolstered that conclusion by finding that
other public interest considerations favored transfer. Spe-
cifically, we rejected the district court’s conclusion that the
local interest factor was neutral despite the district court
itself recognizing that the underlying accused functionality
was researched, designed, and developed in the transferee
venue.
Id. at *7. We concluded that the district court had
erred in minimizing that local interest in relying merely on
the fact that Ikorongo Texas’s claims specifically related to
infringement in the Western District of Texas.
Id. Those
infringement allegations, we explained, gave plaintiffs’
chosen forum no more of a local interest than the Northern
District of California or any other venue.
Id.
In this case, we see no basis for a disposition different
from the ones reached in Samsung. The district court here
relied on the same improper grounds as in Samsung to di-
minish the clear convenience of the Northern District of
California. The reasons for not finding judicial economy
considerations to override the clear convenience of the
transferee venue also apply with even more force here.
Though the district court in this case relied on the co-pend-
ing case against Lyft, Inc. as well as Bumble, both of those
litigations involve entirely different underlying functional-
ity and the Samsung Electronics Co., Ltd. et al. and LG
Electronics Inc. et al. litigations have now been directed to
be transferred to Northern California. In addition, the dis-
trict court clearly erred in negating the transferee venue’s
strong local interest by relying merely on the fact that
plaintiffs alleged infringement in the Western District of
Texas.
Accordingly,
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IN RE: UBER TECHNOLOGIES, INC. 5
IT IS ORDERED THAT:
The petition for a writ of mandamus is granted. The
district court’s May 26, 2021 order denying transfer is va-
cated, and the district court is directed to grant Uber’s mo-
tion to the extent that the case is transferred to the United
States District Court for the Northern District of California
under
28 U.S.C. § 1404(a).
FOR THE COURT
July 08, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s25
