N OTE : This order is nonprecedential

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# United States **Court of Appeals**  **for the Federal Circuit**

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In re : SAMSUNG ELECTRONI CS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., Petitioners

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2023

- 146

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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.

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ON PETI TION

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Before P ROST , H UGHES , and S TOLL , Circuit Judges

. P ER C URIAM

. 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”)

. DoD ots Licensing Solutions LLC opposes. Because the district court’s refusal to transfer here amounted to a clear abuse Case: 23-146 Document: 14 Page: 1 Filed: 12/14/2023IN RE : SAMSUNG ELECTRONICS CO ., LTD

. 2

of discretion leading to a patently erroneous result , we grant mandamus directing transfer.

I.

DoDots b rought suit in the Waco division o f 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)

, argu ing 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 third

party witnesses could be compelled to testify only in NDCA ; and that WDTX ha s no meaningful connection to the
events giving rise to th is patent infringement s uit

. After analyzing the private and public interest factors that govern transfer determinations, t he district court denied the motion, concluding that the balance of the se factors weighed against transfer. In particular, the district court agreed that t he availability of compulsory process to secure the attendance of witness es 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 DoD ots’ 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. Case: 23-146 Document: 14 Page: 2 Filed: 12/14/2023IN RE : SAMSUNG ELECTRONICS CO ., LTD

. 3

II.
We apply regional circuit law when review ing motions to transfer under § 1404(a). In re Juniper Networks, Inc

., 14 F.4 th 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.4 th 625

, 629 (5 th Cir. 2022) (quoting In re Volkswagen of Am., Inc ., 545 F.3d 304, 312 (5 th Cir. 2008) (en banc)). Under Fifth Circuit law, transfer “should be granted if the movant demonstrates that the transferee [forum] is clearly more conven ient” based on an assessment of the private and public interest factors. In re Radmax, Ltd ., 720 F.3d 285, 288 (5 th Cir. 2013) (quoting Volkswagen , 545 F.3d at 315 (internal quotation marks omitted)). Here, we conclude that the court clearly abused its d iscretion 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 favor s 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

- part ies Samsung Research America and Google knowledgeable about the design and development of the accu sed 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 Sams ung 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 conclu ded that the local interest factor favor s transfer to NDCA

. T he accused Case: 23-146 Document: 14 Page: 3 Filed: 12/14/2023IN RE : SAMSUNG ELECTRONICS CO ., LTD

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functionality was in part researched, designed, and developed in NDCA and the patented technology was also invented in NDCA. That clearly give s NDCA a significant connection to the e vents 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 indiv iduals 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, t he district court clearly abused its discretion in weighing the willing witness factor against tran s fer rather than in favor. Samsung identified ten SEA employees in NDCA and twenty SEC employees in Korea that ha ve relevant and material information. By contrast, DoDots identified no potential witnesses i n WDTX. The court nonetheless weighed this factor against transfer because the additional inconvenience for SEC employees to hav e to travel to Texas rather than California was only “slight

, ” Appx8, and WDTX would be more convenient for certain Samsung emp loyees 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 , t he 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

. Case: 23-146 Document: 14 Page: 4 Filed: 12/14/2023IN RE : SAMSUNG ELECTRONICS CO ., LTD

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Fourth, the district court clearly erred in weighing the practical problems factor against transfer

. The distri ct 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 “j udicial efficiency will be improved if” the se 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 o f th e Samsung litigation. Appx23. T h is record simply provides no basis to conclude that judicial economy considerations w eigh in favor of keeping this case in WDTX. I f anything, now that the claims against Apple will be litigated in NDCA, 3 the district court’s r easoning 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 weigh ing in favor of neither forum. In particular,
t he court plausibly weigh ed the sources of proof factor as neutral here, since it does not appear either party identified sources of proof that w ould be easier to access in one foru m over another

. See Planned Parenthood

, 52 F.4th at 630. And

, t o 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 m arket. 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. Dece mber 14, 2023 )

. Case: 23-146 Document: 14 Page: 5 Filed: 12/14/2023IN RE : SAMSUNG ELECTRONICS CO ., LTD

. 6

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,

I T I S O RDERED T HAT : 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 F OR THE C OURT Case: 23-146 Document: 14 Page: 6 Filed: 12/14/2023