Respondent Asks Federal Circuit to Reject Transfer of Google Patent Case

Respondent Jawbone Innovations opposes Google’s Nov. 7 petition for a writ of mandamus directing the U.S. District Court for Western Texas to transfer Jawbone’s patent infringement complaint to the Northern District of California, it said in a filing Tuesday (docket 23-101) at the U.S. Court of Appeals for the Federal Circuit. Google’s petition said it has a “clear and indisputable” right to mandamus relief because the Texas district court “ruled erroneously” on five of the eight “transfer factors,” and also weighed the factors improperly.

Jawbone’s September 2021 complaint alleges Google earbuds, smartphones, smart speakers and home displays infringe nine Jawbone patents on acoustic noise suppression and voice activity detection. Contrary to its petition, Google has not shown that the district court’s denial of transfer “amounts to a clear abuse of discretion, such that mandamus is appropriate,” said Jawbone Tuesday. The district court’s opinion denying transfer “outlines the thorough and careful weighing of the evidence presented by the parties relevant to each factor,” and the court reached conclusions “consistent with the governing law,” it said.

Google is not entitled to a writ of mandamus because the district court, evaluating all the facts in the record, “exercised sound discretion” in finding Google failed to show Northern California is a “clearly more convenient” venue than Western Texas, said Jawbone. The district court “properly determined that only two factors, the convenience of willing witnesses and the availability of compulsory process, favor transfer,” it said. “The remaining factors disfavored transfer or were neutral,” it said, adding the district court “properly exercised its discretion with respect to all of the factors.”

Google’s petition said the district court erred in finding that the “willing witnesses’ cost of attendance factor” favors transfer only slightly rather than strongly. “Given this factor’s importance,” said the petition, “much hinges on that difference, which resulted from the court’s unwarranted attack on the reliability” of Google’s declarant, Michelle True, the company’s discovery project manager in Mountain View, California.

The district court acknowledged that True’s declaration established that 11 willing Google witnesses “possess relevant and material knowledge” and that Northern California “would be a more convenient venue for them,” said the Google petition. The district court’s discounting of True’s reliability “was legally and factually unjustified,” Google said. The district court’s discounting of True’s declaration “gave short shrift to the diligence and thoroughness of her investigation,” it said. “Aside from Ms. True’s lack of an engineering background, the district court cited no reason to distrust or discount the results of her extensive investigation.”

But Jawbone countered that the district court “properly assessed and weighed the reliability” of the True declaration “in balancing the transfer factors.” Contrary to Google’s allegations that the district court waged an unwarranted attack on its discovery manager because she was not an engineer, Jawbone argued the district court noted her lack of engineering background “solely to explain why the technical facts in her declaration were not within” her personal knowledge. Google’s attempt to “recast” the district court’s evaluation of the True declaration’s reliability as based solely on the fact True is not an engineer “is disingenuous and should be rejected,” said Jawbone.