Affinity Labs of Texas v. Samsung, 1:12cv557 (9/18/13)
Judge: Ron Clark
Holding: Motion to Transfer Venue Conditionally GRANTED
This is a patent case in which the defendants moved to transfer venue from the Eastern District of Texas, Beaumont Division, to the Northern District of California. Judge Ron Clark of Beaumont noted that he had previously held Markman hearings on two of the five patents, had tried Affinity's suits on those patents against three other defendants, and has a Markman hearing on those two patents (of the five asserted in this case) scheduled in January for this case. Accordingly, he concluded that judicial economy strongly favored his including whatever claim construction disputes the present defendants might raise on those two patents in that hearing, currently set for January 2014. However, he noted that the other venue factors weighed in favor of transferring the case. So after consulting with the chief judge of the Northern District of California, Judge Claudia Wilken, Judge Clark concluded that he would retain jurisdiction over the defendants through the claim construction process in January, and that a conditional transfer of the case would become effective the day the court issues its claim construction opinion.
Within the opinion itself, Judge Clark notes that his conference with Judge Wilkin did not just result in the conclusion that transferring the case after the Markman hearing on the previously construed patents would be the best allocation of judicial resources, but instead extended to affirmatively coordinating the pretrial activities in the two courts to expedite the efficient processing of the case. For example, Judge Wilkin additionally suggested that to avoid the usual delays inherent in a transfer, upon receipt of a copy of Judge Clark's order of conditional transfer, the Northern District of California could then, in accordance with its own procedures and protocol, open a case file and assign a judge. That judge will then have the option of identifying time available to schedule claims construction for the three remaining patents and the trial on all the patents. As Judge Clark noted, this will minimize delay resulting from transfer, concerned that he noted is part of the venue analysis as well as federal Rules of Civil Procedure 1.
Judge Clark also addressed the issue of reconsideration of his Markman ruling before the California judge, writing that "if the parties are not satisfied with this court's Markman analysis, they will likely present to the California court more sharply focused arguments on the limited number of issues, just as they would on appeal." Nor was this speculation on his part. "This court has benefited in the past when a patent it construed was asserted against another defendant in another court. That court adopted all of this court's claim constructions but one, and based on a new argument, arrived at a more accurate construction for that term, which this court was then able to use."
This is not the first time that an Eastern District court has coordinated with the Northern District of California to promote efficiency in resolving a patent case. Back in March I posted on Chief Judge Davis' 50 page opinion in Personalweb Techs, LLC v. NEC, 2013 U.S. Dist. LEXIS 46296 (E.D. Tex., Mar. 21, 2013) in which he determined that transfer of some of the defendants to the ND Cal was proper, and then consulted with Chief Judge Wilken to determine whether the cases should be transferred before or after the upcoming claim construction hearing.