NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: GOOGLE LLC,

Petitioner

______________________

2022-140

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 2:19-

cv-00361-JRG, Chief Judge J. Rodney Gilstrap.

-------------------------------------------------

In re: WAZE MOBILE LIMITED,

Petitioner

______________________

2022-141

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 2:19-

cv-00359-JRG, Chief Judge J. Rodney Gilstrap.

-------------------------------------------------

In re: SAMSUNG ELECTRONICS CO., LTD., 

SAMSUNG ELECTRONICS AMERICA, INC.,

Petitioners

______________________

2022-142

Case: 22-140 Document: 16 Page: 1 Filed: 05/23/2022
2 IN RE: GOOGLE LLC

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 2:19-

cv-00362-JRG, Chief Judge J. Rodney Gilstrap.

______________________

ON PETITION

______________________

Before LOURIE, TARANTO, and HUGHES, Circuit Judges.

LOURIE, Circuit Judge.

O R D E R

In these consolidated cases, Google LLC, Waze Mobile 

Limited, and Samsung Electronics Co., Ltd. et al. (collectively, “Petitioners”) seek writs of mandamus directing the 

United States District Court for the Eastern District of 

Texas to transfer these cases to the United States District 

Court for the Northern District of California. AGIS Software Development, LLC (“AGIS”) opposes. For the reasons 

below, we grant the petitions and direct transfer. 

I

A

AGIS is a subsidiary of Florida-based AGIS Holdings, 

Inc. AGIS was assigned AGIS Holdings’ patent portfolio 

and incorporated in the state of Texas shortly before AGIS

started to file infringement suits in the Eastern District of 

Texas in 2017. AGIS shares an office in Marshall, Texas 

with another subsidiary of AGIS Holdings where AGIS 

maintains copies of its patents, assignment records, prosecution records, license agreements, and corporate records. 

No employee of AGIS or a related AGIS entity works regularly from that location.

Case: 22-140 Document: 16 Page: 2 Filed: 05/23/2022
IN RE: GOOGLE LLC 3

In the complaints underlying Appeal Nos. 2022-140 

and 2022-142, AGIS has accused: (1) Google’s software applications that enable users of its products to form groups,

view the locations of other users on a map, and communicate together, of infringing U.S. Patents 8,213,970; 

9,408,055; 9,445,251; 9,467,838; 9,749,829 (“the ’829 patent”); and 9,820,123 (“the ’123 patent”); and (2) Samsung 

of infringing the ’829 and ’123 patents for selling devices 

that run Google’s accused applications and that use Samsung’s messaging functionality in conjunction with those 

applications.

Google and Samsung moved under 28 U.S.C. § 1404(a)

to transfer AGIS’s infringement actions to the Northern 

District of California. They argued that the accused software applications at the center of the cases were designed 

and developed at Google’s headquarters within the Northern District of California; that potential witnesses and 

sources of proof were in the Northern District of California

(including Google’s source code and technical documents, 

Google’s employees that were knowledgeable of the accused 

products, and prior art witnesses); and that, as a matter of 

judicial economy, the cases should be transferred together

to be decided by the same trial judge. 

The district court denied the motions. The court noted 

that the Northern District of California had a comparative 

advantage in being able to compel unwilling witnesses. On 

the other hand, the court determined that court congestion, 

judicial economy considerations, and local interest factors 

all weighed against transfer. In particular, the court 

weighed against transfer the fact that AGIS had previously 

litigated the asserted patents before the same trial judge 

up to the pretrial conference. The remaining factors, the 

court determined, favored neither of the two possible forums. On balance, the court determined that Google and 

Samsung had each failed to demonstrate that the Northern 

District of California was clearly more convenient and accordingly denied transfer. 

Case: 22-140 Document: 16 Page: 3 Filed: 05/23/2022
4 IN RE: GOOGLE LLC

B

In the third case before us, AGIS has accused Waze (a

wholly-owned subsidiary of Google) of similarly infringing

the ’829 and ’123 patents based on the Waze Carpool mobile applications. The Waze case was actually initially consolidated with the Samsung and Google cases. Like Google 

and Samsung, Waze moved to transfer to the Northern District of California. Waze argued that its employees responsible for the accused applications, including its Managing 

Director, are in the Northern District of California (as well 

as Israel and New York) and that Waze does not have any 

offices or employees in the Eastern District of Texas. Waze 

also identified the same prior art witnesses as identified by 

Google and Samsung in Northern California. Waze added 

that its documents are physically present and/or electronically accessible from Northern California.

As with Samsung’s and Google’s motions, the district 

court denied Waze’s transfer request. The district court 

found that the compulsory process factor favored transfer. 

But, as in the Samsung and Google cases, the court 

weighed against transfer its prior familiarity with AGIS’s 

patents and that it could likely hold a trial sooner. The

district court found that the remaining factors were neutral. On balance, the district court similarly found that 

Waze had failed to show that the Northern District of California was a clearly more convenient forum for the litigation than the Eastern District of Texas. Waze, Google, and 

Samsung then each filed identical petitions seeking writs 

of mandamus, and we consolidated the petitions for purposes of briefing and resolution. 

II

A

We follow regional circuit law on transfer motions under 28 U.S.C. § 1404(a). See In re TS Tech USA Corp., 551 

F.3d 1315, 1319 (Fed. Cir. 2008). In deciding whether the 

Case: 22-140 Document: 16 Page: 4 Filed: 05/23/2022
IN RE: GOOGLE LLC 5

district court should have granted transfer under 

§ 1404(a), we ask whether “the movant demonstrate[d]

that the transferee venue is clearly more convenient” such 

that the district court’s contrary determination was a clear 

abuse of discretion. In re Radmax, Ltd., 720 F.3d 285, 288 

(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc., 545 

F.3d 304, 315 (5th Cir. 2008) (en banc) (internal quotation 

marks omitted)).

The Fifth Circuit has identified private and public interest factors relevant to determining whether a case 

should be transferred under § 1404(a). The public interest 

factors are: (1) the administrative difficulties flowing from 

court congestion; (2) the local interest in having disputes

regarding activities occurring principally within a particular district decided in that forum; (3) the familiarity of the 

forum with the law that will govern the case; and (4) the 

avoidance of unnecessary problems of conflict of laws or in 

the application of foreign law. In re Juniper Networks, Inc., 

14 F.4th 1313, 1317 (Fed. Cir. 2021). The private interest 

factors are: (1) the relative ease of access to sources of 

proof; (2) the availability of compulsory process to secure 

the attendance of non-party witnesses whose attendance 

may need to be compelled by court order; (3) the relative 

convenience of the two forums for potential witnesses; and 

(4) all other practical problems that make the trial of a case 

easy, expeditious, and inexpensive. Id. at 1316–17.

Mindful that the district court is generally better positioned to evaluate the evidence, we review a transfer ruling 

for a clear abuse of discretion. See In re Vistaprint Ltd., 

628 F.3d 1342, 1344–46 (Fed. Cir. 2010); TS Tech, 551 F.3d 

at 1319 (noting that a petitioner must demonstrate that the 

denial was a “clear” abuse of discretion such that refusing 

transfer produced a “patently erroneous result” (quoting

Volkswagen, 545 F.3d at 310 (internal quotation marks 

omitted)); see also Juniper, 14 F.4th at 1318 (explaining 

that “when a district court’s denial of a motion to transfer 

amounts to a clear abuse of discretion under governing 

Case: 22-140 Document: 16 Page: 5 Filed: 05/23/2022
6 IN RE: GOOGLE LLC

legal standards, we have issued mandamus to overturn the 

denial of transfer” and collecting cases granting mandamus).

Petitioners argue that the district court’s failure to find 

that the convenience factors strongly favor transfer in all 

three cases was a clear abuse of discretion. They contend 

that Northern California is far more easily accessible for 

potential witnesses and sources of proof. Petitioners also 

contend that the transferee venue has a strong local interest in these cases while the Eastern District has no cognizable interest. In this regard, Petitioners emphasize that 

AGIS’s connections to the Eastern District are entitled to 

minimal consideration because they are litigation-driven. 

Petitioners further contend that any judicial economy considerations that favor keeping these cases in a district in 

which AGIS previously litigated its patents are insufficient 

to outweigh the clear convenience of the transferee forum. 

AGIS responds that the district court correctly denied 

transfer in all three cases. AGIS argues that its own witnesses either reside in, or would prefer to travel to, the 

Eastern District of Texas. AGIS further contends that the 

Eastern District is more convenient for accessing AGIS’s 

patent-related documents and license agreements stored at 

its offices in Marshall. AGIS further asserts that the district court was correct to not weigh the local interest factor 

in favor of transfer in the cases because of AGIS’s connections to the Eastern District. AGIS also contends that the 

Eastern District has a comparative advantage both with 

regard to the court congestion factor and with regard to judicial economy considerations given its prior handling of 

AGIS’s patent infringement suits. 

B

We agree with Petitioners that the Northern District of 

California is clearly the more convenient forum in the 

Google and Samsung cases. Given that Google’s accused 

functionality is at the center of the allegations in both 

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IN RE: GOOGLE LLC 7

cases, it is not surprising that witnesses reside in Northern 

California—the location of Google’s headquarters where 

the accused technology was developed. Google and Samsung each identified at least 5 Google employees in the 

transferee forum with relevant and material information. 

Samsung and Google further identified five prior art witnesses in the Northern District of California. Transfer 

would ensure not only that the forum would be more convenient for the balance of the witnesses, but also that a 

court could compel their testimony if necessary. 

The district court weighed against transfer the presence of an AGIS consultant, Eric Armstrong, in the Eastern 

District as a potential witness on whether AGIS Holdings’ 

own products constituted invalidating prior art.1 But Mr. 

Armstrong appears to have disclaimed material knowledge

of those products before the applicable priority dates. 

Appx547–550. And even accounting for Mr. Armstrong, 

Samsung and Google identified far more witnesses in 

Northern California. Moreover, while AGIS notes that several of its potential witnesses in Austin, Colorado, Virginia, 

and Florida would prefer to travel to Eastern Texas, the 

district court here correctly recognized that these witnesses were not entitled to significant weight because these

witnesses “would require hours of travel regardless.” 

Appx006.

We also agree with Petitioners that the sources of proof 

factor weighs in favor of transfer. Google explains, without 

dispute from AGIS, that the technical documents and 

source code relating to the accused functionality “are physically present and/or electronically accessible” in the 

Northern District of California. Appx229. The district

court discounted the convenience of litigating these cases 

1 The district court treated the presence of AGIS’s

expert witness in the Eastern District as entitled to little 

weight.

Case: 22-140 Document: 16 Page: 7 Filed: 05/23/2022
8 IN RE: GOOGLE LLC

close to that evidence on the ground that Google could produce the information electronically in the Eastern District. 

See, e.g., Appx004. But “while electronic storage of documents makes them more widely accessible than was true 

in the past, that does not make the sources-of-proof factor 

irrelevant.” Juniper, 14 F.4th at 1321. 

The district court also weighed against transfer the 

fact that AGIS stores its patent-related documents and corporate records at its office space in Marshall, Texas. However, it appears that the relationship between the forum 

and AGIS and its materials served no meaningful purpose, 

not even to secure application of Texas substantive law to 

AGIS, except to attempt to establish a presence for forum 

selection for patent cases. AGIS leased its office just prior 

to commencing litigation in the Eastern District. And the 

company’s Texas office, where it stores the above-identified 

documents, does not appear to be a place of regular business; AGIS’s principals and employees do not work from 

that office. AGIS therefore has no presence in Texas that 

should be given significant weight in this analysis. See In 

re Verizon Bus. Network Servs. Inc., 635 F.3d 559, 562 (Fed. 

Cir. 2011) (rejecting the argument that documents that 

were nothing more than artifacts of litigation were entitled 

to weight).2 

Turning to the public interest factors, we agree with 

Petitioners that the district court failed to give full weight 

to the Northern District of California’s comparative local 

interest in resolving the claims against Google and Samsung. These cases are analogous to the situation in Juniper where the accused products were designed and 

developed in the transferee forum and plaintiff’s only connections to the transferor forum were largely tied to 

2 The court also pointed to potential documents from 

Mr. Armstrong, but that witness testified that “all documents are on AGIS, I don’t have any.” Appx462. 

Case: 22-140 Document: 16 Page: 8 Filed: 05/23/2022
IN RE: GOOGLE LLC 9

bringing patent lawsuits in that district. We explained 

that because the events forming the basis for the infringement claims occurred mainly in the transferee forum, it 

had a substantial local interest in resolving the dispute, 

whereas plaintiff’s patent-litigation-inspired connections 

to its chosen forum were “not entitled to significant weight” 

and “insubstantial compared to” defendant’s relevant connections to the transferee forum. 14 F.4th at 1320. Similarly here, the locus of events giving rise to AGIS’s

infringement suits occurred in the transferee forum where 

Google designed and developed the accused functionality. 

In contrast, AGIS’s minimal presence, apparently tied to 

filing suit in the Eastern District where no AGIS employees 

usually work, is insufficient to establish a comparable interest in the transferor forum.3 Thus, the court clearly 

abused its discretion in weighing this factor as neutral. 

3 The district court also weighed against transfer 

that Samsung has “direct and substantial ties to this District,” Appx029, and “Google has several ties to this District,” namely, its facilities in Flower Mound, Texas where 

Google says certain devices are repaired by an independent 

company. Appx009–10. The problem with this analysis is 

that it relies on Google’s and Samsung’s “general presence 

in the [transferor] forum, not on the locus of the events that 

gave rise to the dispute.” In re Google LLC, No. 2021-171,

2021 WL 4592280, at *5 (Fed. Cir. Oct. 6, 2021). We have 

held that a party’s “general presence” in a particular district is “not enough to establish a local interest” that weighs 

against another forum’s local interest tied to events giving 

rise to the particular suit. Juniper, 14 F.4th at 1320; see 

Google, 2021 WL 4592280, at *5. Rather, what is required 

for a relevant local interest to weigh in this factor is that 

there be “significant connections between a particular 

venue and the events that gave rise to a suit.” In re Apple, 

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10 IN RE: GOOGLE LLC

As for the remaining factors, we also agree with Petitioners. While a court may consider its prior familiarity

with the asserted patents in assessing judicial economy 

considerations for transfer, see Vistaprint, 628 F.3d at

1344, we have at the same time made clear that just because “a patent is litigated in a particular[forum]” does not 

mean “the patent owner will necessarily have a free pass 

to maintain all future litigation involving that patent in 

that [forum],” id. at 1347 n.3; see also Verizon, 635 F.3d at 

562 (“To interpret § 1404(a) to hold that any prior suit involving the same patent can override a compelling showing 

of transfer would be inconsistent with the policies underlying § 1404(a).”). Here, any judicial economy gained in having the district court preside over this case based on its 

prior familiarity with some of the issues, from a prior claim 

construction in a different case brought by AGIS, is clearly

insufficient in this case to outweigh the other factors that 

clearly favor transfer. 

Furthermore, while the Eastern District appears likely 

to be able to schedule a trial in these cases faster than the 

Northern District of California, that seems to rest not so 

much on significant differences in docket congestion but, in 

significant part, on the considerable delay in resolving the 

transfer motions, which resulted in progress in the cases in 

the interim. That progress hardly need go to waste upon 

transfer. In any event, neither the district court nor AGIS

has identified any reason why a more rapid disposition of 

the cases should be assigned such significant weight here 

to outweigh the clear convenience of the transferee forum. 

Under these circumstances, we conclude that the district court clearly abused its discretion, leading to a patently erroneous result, when it denied Petitioners’ 

Inc., 979 F.3d 1332, 1345 (Fed. Cir. 2020) (citation omitted); see Google, 2021 WL 4592280, at *5. 

Case: 22-140 Document: 16 Page: 10 Filed: 05/23/2022
IN RE: GOOGLE LLC 11

motions to transfer to the clearly more convenient forum, 

the Northern District of California. 

C

We reach the same conclusion in Waze’s case, in which 

the district court’s analysis was materially the same. Like

the Google and Samsung cases, the “center of gravity” is in 

Northern California. Juniper, 14 F.4th at 1323. Waze 

identified more witnesses in the Northern District of California who would be less inconvenienced by a trial in that 

district and/or could be compelled to testify there. The district court also recognized that Waze had identified sources 

of proof in the Northern District of California but made the 

same error, described above, in discounting that convenience on the ground that the information could potentially 

be made electronically accessible in the Eastern District. 

Judicial economy considerations also do not override the 

clear convenience of the transferee venue in this case; indeed, they support transfer given our decision that overlapping cases against Google and Samsung are to be 

transferred. And Petitioners persuasively argue that economy favors all three of these cases being decided together.

Accordingly,

IT IS ORDERED THAT:

The petitions are granted. The district court’s orders 

denying transfer are vacated, and the district court is directed to grant Google’s, Waze’s, and Samsung’s motions to 

transfer to the Northern District of California. 

May 23, 2022

 Date

 FOR THE COURT

/s/ Peter R. Marksteiner

 Peter R. Marksteiner

 Clerk of Court

Case: 22-140 Document: 16 Page: 11 Filed: 05/23/2022