NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC.,

Petitioners

______________________

2023-146

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:22-

cv-00535-ADA, Judge Alan D. Albright.

______________________

ON PETITION

______________________

Before PROST, HUGHES, and STOLL, Circuit Judges.

PER CURIAM.

O R D E R

Samsung Electronics Co., Ltd. (“SEC”) and Samsung 

Electronics America, Inc. (“SEA”) (collectively, “Samsung”) 

petition for a writ of mandamus directing the United States 

District Court for the Western District of Texas (“WDTX”) 

to transfer this case to the United States District Court for 

the Northern District of California (“NDCA”). DoDots Licensing Solutions LLC opposes. Because the district 

court’s refusal to transfer here amounted to a clear abuse 

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2 IN RE: SAMSUNG ELECTRONICS CO., LTD.

of discretion leading to a patently erroneous result, we 

grant mandamus directing transfer. 

I.

DoDots brought suit in the Waco division of WDTX accusing Samsung’s mobile phone and tablet devices of infringing three patents.1 Samsung moved to transfer the 

case to NDCA under 28 U.S.C. § 1404(a), arguing that the

teams from Google Inc. and Samsung that developed and 

maintain the functionality at the center of the infringement allegations are in NDCA or Korea; that key thirdparty witnesses could be compelled to testify only in NDCA;

and that WDTX has no meaningful connection to the 

events giving rise to this patent infringement suit. 

After analyzing the private and public interest factors 

that govern transfer determinations, the district court denied the motion, concluding that the balance of these factors weighed against transfer. In particular, the district 

court agreed that the availability of compulsory process to 

secure the attendance of witnesses factor and the local interest factor favored transfer. But it found that WDTX was 

more convenient for the witnesses and that the practical 

problems factor weighed against transfer in light of DoDots’ co-pending lawsuits in WDTX alleging infringement 

of the same patents. The court found that the remaining 

factors were neutral. On balance, the district court concluded that Samsung had failed to show that NDCA was 

clearly more convenient. Samsung then filed this petition.

We have jurisdiction under 28 U.S.C. §§ 1651 and 1295.

 

1 DoDots’ complaint originally included claims 

against Best Buy Stores, L.P., BestBuy.com, LLC, and Best 

Buy Texas.com, but the district court subsequently severed 

and stayed those claims under the customer-suit exception.

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IN RE: SAMSUNG ELECTRONICS CO., LTD. 3

II.

We apply regional circuit law when reviewing motions 

to transfer under § 1404(a). In re Juniper Networks, Inc., 

14 F.4th 1313, 1318 (Fed. Cir. 2021). We review transfer 

determinations in cases arising on mandamus from district 

courts in the Fifth Circuit for “clear abuses of discretion 

that produce patently erroneous results.” In re Planned 

Parenthood Fed. Am., 52 F.4th 625, 629 (5th Cir. 2022) 

(quoting In re Volkswagen of Am., Inc., 545 F.3d 304, 312 

(5th Cir. 2008) (en banc)). Under Fifth Circuit law, transfer “should be granted if the movant demonstrates that the 

transferee [forum] is clearly more convenient” based on an 

assessment of the private and public interest factors. In re 

Radmax, Ltd., 720 F.3d 285, 288 (5th Cir. 2013) (quoting 

Volkswagen, 545 F.3d at 315 (internal quotation marks 

omitted)). Here, we conclude that the court clearly abused 

its discretion in finding Samsung had failed to make the 

requisite showing to transfer to NDCA.

First, the district court’s conclusion that the compulsory process factor favors transfer was amply supported by 

the record. The district court identified several non-party 

witnesses in NDCA that could only be compelled to testify 

if the case were transferred. Key among those witnesses 

are employees of non-parties Samsung Research America 

and Google knowledgeable about the design and development of the accused functionality; three named inventors;

and two individuals associated with DoDots’ predecessor 

with relevant and material information about the prosecution and licensing of the asserted patents. Although DoDots identified some Google employees and Samsung 

contractors in Texas, the court found their relevance to the 

case to be largely limited; and, in any event, more potential 

witnesses could be compelled to testify, if necessary, if the 

case were transferred. 

Second, the district court correctly concluded that the 

local interest factor favors transfer to NDCA. The accused 

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4 IN RE: SAMSUNG ELECTRONICS CO., LTD.

functionality was in part researched, designed, and developed in NDCA and the patented technology was also invented in NDCA. That clearly gives NDCA a significant 

connection to the events giving rise to this suit. See In re 

Apple Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020) (“[B]ecause 

the accused products were designed, developed, and tested 

in NDCA; and because the lawsuit ‘calls into question the 

work and reputation of several individuals residing’ in 

NDCA, In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336 

(Fed. Cir. 2009), this factor weighs in favor of transfer.”). 

The WDTX has no comparable connection to this case. 

Third, the district court clearly abused its discretion in 

weighing the willing witness factor against transfer rather 

than in favor. Samsung identified ten SEA employees in 

NDCA and twenty SEC employees in Korea that have relevant and material information. By contrast, DoDots identified no potential witnesses in WDTX. The court 

nonetheless weighed this factor against transfer because 

the additional inconvenience for SEC employees to have to 

travel to Texas rather than California was only “slight,”

Appx8, and WDTX would be more convenient for certain 

Samsung employees who had information relevant to the 

marketing and sales of the accused products residing in

Eastern Texas, Appx8–9.

The Fifth Circuit recently rejected similar reasoning in

In re TikTok, Inc., 85 F. 4th 352 (5th Cir. 2023). Because 

most of the potential witnesses here are in Korea and 

NDCA, transfer would greatly reduce the time and inconvenience of travel. As in TikTok, the presence of some Samsung employees in Eastern Texas, who have no technical

knowledge of the accused functionality here, “cannot overcome the immense inconvenience that the majority of relevant witnesses would face if this case were to be tried in” 

WDTX. Id. at 361. The district court thus abused its discretion by not weighing this factor in favor of transfer. 

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IN RE: SAMSUNG ELECTRONICS CO., LTD. 5

Fourth, the district court clearly erred in weighing the 

practical problems factor against transfer. The district 

court pointed to co-pending litigation brought by DoDots in 

WDTX against Apple Inc.2 and the Best Buy defendants. 

Curiously, the court found that “judicial efficiency will be 

improved if” these cases “remain in the same district,” even 

though it granted Apple’s motion to transfer to NDCA on 

the same day it denied Samsung’s request and previously 

stayed the claims against Best Buy pending the outcome of 

the Samsung litigation. Appx23. This record simply provides no basis to conclude that judicial economy considerations weigh in favor of keeping this case in WDTX. If 

anything, now that the claims against Apple will be litigated in NDCA,3 the district court’s reasoning would warrant weighing this factor in favor of transfer. 

Finally, we see no clear abuse of discretion in the district court’s assessment of the remaining transfer considerations as weighing in favor of neither forum. In particular,

the court plausibly weighed the sources of proof factor as 

neutral here, since it does not appear either party identified sources of proof that would be easier to access in one

forum over another. See Planned Parenthood, 52 F.4th at 

630. And, to whatever extent WDTX’s docket is less congested than NDCA, the district court plausibly concluded 

that the court congestion factor was not worthy of material 

weight given there is no contention that DoDots is engaged 

in product competition or is threatened in the market. See 

 

2 DoDots Licensing Sols. LLC v. Apple Inc., No. 6:22-

cv-533-ADA, ECF No. 125 (W.D. Tex. July, 2023).

3 Although DoDots filed a petition for a writ of mandamus seeking review of the district court’s transfer order, 

today we issued an order denying that petition. See In re 

DoDots Licensing Sols., LLC, Appeal No. 2024-100 (Fed. 

Cir. December 14, 2023).

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6 IN RE: SAMSUNG ELECTRONICS CO., LTD. 

In re Google LLC, 58 F.4th 1379, 1383 (Fed. Cir. 2023). Because several factors favor NDCA and “not a single relevant factor favors [DoDots’] chosen venue,” TikTok, 85 

F.4th at 358 (citation omitted), we grant mandamus and 

direct the district court to transfer to NDCA. 

Accordingly,

 IT IS ORDERED THAT: 

The petition is granted. The district court’s order denying transfer is vacated, and the district court is directed to 

grant the transfer motion.

December 14, 2023

 Date

FOR THE COURT

 

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