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The Intellectual Property StrategistFeaturesIntellectual PropertyLitigation

Federal Circuit Provides Guidance on IP Case Transfer Motions

By Darin Snyder, Brad Garcia, Amy Liang, and Daniel Silverman
September 01, 2021

In the past year, the Federal Circuit has repeatedly required the U.S. District Court for the Western District of Texas to transfer patent infringement suits from that district to more convenient venues, and in doing so it has provided increasingly specific — and often pointed — guidance to courts and litigants on the appropriate analysis for transfer motions.

For example, in the November 2020 ruling in In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020), the Federal Circuit chastised the Western District for "barrel[ing] ahead" with the merits of a case while a transfer motion sat pending, and it issued a writ of mandamus requiring that the case be transferred to the Northern District of California. In In re TracFone Wireless, 852 F. App'x 537 (Fed. Cir. Apr. 20, 2021), the court again identified several errors in the district court's analysis and ordered a transfer.

In two recent opinions — one published and therefore binding on future panels — the Federal Circuit has granted two more mandamus petitions filed by technology companies seeking transfers from the Western District of Texas to California. Those rulings — In re Hulu, No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021), and the published opinion In re Samsung Electronics Co., 2 F.4th 1371 (Fed. Cir. 2021) — provide additional guidance on several recurring issues that defendants, and courts, should be especially attuned to. [Editor's Note: Samsung Electronics was summarized in the IP News section last month).

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