Western District Of Texas Grants Motion To Transfer Venue On Section 1404 Convenience Grounds
On May 21, 2021, Judge Alan D. Albright of the United States District Court for the Western District of Texas granted a motion to transfer venue under 28 U.S.C. § 1404. 10Tales, Inc. v. TikTok Inc., Case No. 6:20-cv-00810-ADA (W.D. Tex. May 21, 2021). The Court found that, under Fifth Circuit precedent, the Northern District of California was a “clearly more convenient” forum.
Section 1404(a) provides that, for the convenience of parties, witnesses and in the interests of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented. In patent cases, Section 1404(a) motions are governed by the law of the regional circuit (here, the Fifth Circuit).
In a 1404(a) analysis, the court addresses two questions. First, the court must determine whether the action could have been brought in the transferee forum. Second, if so, the court weighs a number of private and public “convenience” factors to determine whether the transferee forum is “clearly more convenient.” The private factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The public factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (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 the application of foreign law.” Id. If, after analyzing the factors, the court determines that the transferee forum is “clearly more convenient” than the initial forum, it should transfer the case.
Here, the Court answered both questions in the affirmative.
First, the Court found that the case could have been brought in the Northern District of California. Of note, neither party contested that venue was proper in that district.
Second, the Court analyzed the “convenience” factors, finding that the Northern District of California was clearly more convenient.
As to the relative ease of access to sources of proof factor, the Court noted that TikTok’s physical evidence was in the Northern District of California, and thus, the Court was bound by Fifth Circuit precedent to find this factor weighed in favor of transfer. (The Court included a footnote seemingly indicating it disagreed with the Fifth Circuit — i.e., in the digital age, the physical location of evidence is of no moment — but nonetheless it was the Court’s “duty to adhere to Fifth Circuit precedent.”)
As to the availability of compulsory process to secure the attendance of witnesses factor, the Court likewise concluded it favored transfer, as no witnesses were identified within the Court’s subpoena power.
The Court next considered the convenience of witnesses, which is “the single most important factor” in the analysis. Here too, the Court determined this factor favored transfer as there were a greater number of witnesses in the transferee forum identified than in the initial forum.
With respect to other practical problems, the Court found no such problems and thus the factor neutral.
For the public factors, the Court found three of the factors neutral (court congestion, forum familiarity with the law, and avoidance of unnecessary conflict of laws). As to local interest, the Court found that it favored transfer because of TikTok’s connections to the Northern District of California, noting the accused products were designed, developed, and tested there.
Weighing the factors, the Court determined that the Northern District of California was clearly more convenient. This is an interesting decision, as it is one of the few in which Judge Albright has granted transfer on convenience grounds without a directive from an appellate court mandating so.