Case: 21-142 Document: 23 Page: 1 Filed: 08/02/2021
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`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: HULU, LLC,
`Petitioner
`______________________
`
`2021-142
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:20-
`cv-00472-ADA, Judge Alan D. Albright.
`______________________
`
`ON PETITION
`______________________
`
`Before TARANTO, HUGHES, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`
`O R D E R
`Hulu, LLC petitions for a writ of mandamus directing
`the United States District Court for the Western District of
`Texas to transfer this case to the United States District
`Court for the Central District of California. We agree with
`Hulu that the district court clearly abused its discretion in
`evaluating Hulu’s transfer motion and denying transfer.
`We therefore grant the petition.
`
`
`
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`IN RE: HULU, LLC
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`I
`Plaintiffs SITO Mobile R&D IP, LLC and SITO Mobile,
`Ltd. (collectively, “SITO”) sued Hulu, LLC for patent in-
`fringement in the United States District Court for the
`Western District of Texas on June 2, 2020. Complaint, Sito
`Mobile R&D IP, LLC v. Hulu, LLC, Case No. 6:20-cv-
`00472, ECF No. 1 (W.D. Tex. June 2, 2020). SITO alleged
`that Hulu infringed seven of its patents directed to “Sys-
`tem[s] and Method[s] for Routing Media”—U.S. Patent
`Nos. 8,825,887; 9,026,673; 9,135,635; 9,135,636; 9,591,360;
`10,009,637; and 10,171,846.
` Complaint at 8–10
`(¶¶ 22–42). In particular, SITO accused the “Hulu Stream-
`ing Platform” of infringement based on its delivery of
`streaming video content in combination with other fea-
`tures, such as revenue sharing with content providers, id.
`at 11–12 (¶¶ 46–47), selections of advertisements by a “me-
`dia selector,” id. at 15 (¶ 57), and advertising based on ge-
`ographic location or statistical information, id. at 23, 39
`(¶¶ 89, 96). In particular, SITO’s complaint points to
`Hulu’s use of two video standards for their “adaptive bi-
`trate streaming techniques”—Dynamic Adaptive Stream-
`ing over Hypertext Transfer Protocol (MPEG-DASH) and
`Hypertext Transfer Protocol Live Streaming (HLS). Id.
`at 7 (¶ 20).
`As to the parties, both SITO entities are Delaware com-
`panies with their principal places of business in New Jer-
`sey. Id. at 2 (¶¶ 2–3). Hulu is a Delaware company with
`its principal place of business in Santa Monica, California,
`which is within the Central District of California. Id. (¶ 4).
`On October 2, 2020, four months after SITO filed its
`complaint, Hulu moved to transfer the case to the Central
`District of California for convenience under 28 U.S.C.
`§ 1404(a). Hulu’s motion explained that it delivers its
`streaming content via various “third party content delivery
`networks” or “CDNs” and that potential witnesses from
`those CDNs are located in the Central District of
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`California. App. 80–82;1 see also Answer, SITO Mobile
`R&D IP, LLC v. Hulu, Case No. 6:20-cv-00472, ECF No. 12
`at 5 (¶ 20).
`On April 28, 2021, the district court denied Hulu’s mo-
`tion to transfer. SITO Mobile R&D IP v. Hulu, LLC, Case
`No. 6:20-cv-00472, 2021 WL 1166772 (W.D. Tex. Mar. 24,
`2021) (“Order”). The district court analyzed each of the
`public and private interest factors required under Fifth
`Circuit precedent, finding two factors (sources of proof and
`local interest) “slightly” favored transfer, three factors
`(compulsory process, willing witnesses, and court conges-
`tion) weighed against transfer, and three factors (other
`practical problems, familiarity with relevant law, and con-
`flicts of laws) were neutral or did not apply. Id. at *3–9.
`Hulu petitioned this court for a writ of mandamus or-
`dering the district court to transfer the case to the Central
`District of California. We have jurisdiction under the All
`Writs Act, 28 U.S.C. § 1651(a).
`II
`Under the All Writs Act, federal courts “may issue all
`writs necessary or appropriate in aid of their respective ju-
`risdictions and agreeable to the usages and principles of
`law.” 28 U.S.C. § 1651(a). Before a court may issue the
`writ, three conditions must be satisfied: (1) the petitioner
`must have “no other adequate means to attain the relief he
`desires”; (2) the petitioner must show that the right to the
`writ is “clear and indisputable”; and (3) the court “in the
`exercise of its discretion, must be satisfied that the writ is
`appropriate under the circumstances.” Cheney v. U.S. Dist.
`Court for D.C., 542 U.S. 367, 380–81 (2004) (citation and
`internal quotation marks omitted). In transfer cases, those
`
`“App.” refers to the appendix Hulu filed with its pe-
`1
`tition for mandamus. “Supp. App.” refers to the supple-
`mental appendix filed by SITO with its response.
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`IN RE: HULU, LLC
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`requirements are generally reduced to a single inquiry:
`“whether the district court’s denial of transfer amounted to
`a clear abuse of discretion under governing legal stand-
`ards.” In re TracFone Wireless, Inc., No. 2021-136,
`2021 WL 1546036, at *2 (Fed. Cir. Apr. 20, 2021) (citing In
`re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir.
`2008)).
`We follow regional circuit law on § 1404(a) transfer mo-
`tions. TS Tech, 551 F.3d at 1319. The Fifth Circuit re-
`quires that when a movant “clearly demonstrate[s] that a
`transfer is ‘[f]or the convenience of parties and witnesses,
`[and] in the interest of justice,’” the district court “should”
`grant transfer. In re Volkswagen of Am., Inc., 545 F.3d 304,
`315 (5th Cir. 2008) (en banc) (“Volkswagen II”) (second al-
`teration in original) (quoting § 1404(a)). “That determina-
`tion is focused on a comparison of the relative convenience
`of the two venues based on assessment of the traditional
`transfer factors.” In re HP Inc., 826 F. App’x 899, 901
`(Fed. Cir. 2020) (citing In re Radmax, Ltd., 720 F.3d 285,
`288 (5th Cir. 2013)). In asking whether the district court
`abused its discretion in making that determination, Fifth
`Circuit law instructs us to consider whether the district
`court “(1) relies on clearly erroneous factual findings;
`(2) relies on erroneous conclusions of law; or (3) misap-
`plies the law to the facts.” Volkswagen II, 545 F.3d at 310
`(quoting McClure v. Ashcroft, 335 F.3d 404, 408 (5th Cir.
`2003)).
`In assessing a motion to transfer under § 1404(a), the
`Fifth Circuit analyzes a number of private and public in-
`terest factors. “The private interest factors are: ‘(1) the
`relative ease of access to sources of proof; (2) the availabil-
`ity of compulsory process to secure the attendance of wit-
`nesses; (3) the cost of attendance for willing witnesses; and
`(4) all other practical problems that make trial of a case
`easy, expeditious and inexpensive.’” Id. at 315 (quoting In
`re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004)
`(“Volkswagen I”)). “The public interest factors are: ‘(1) the
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`IN RE: HULU, LLC
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`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 in] the application of foreign
`law.’” Id. (alteration in original) (quoting Volkswagen I,
`371 F.3d at 203).
`In denying Hulu’s motion for transfer, the district court
`at least erred in its analysis for each factor that it found
`weighed against transfer: (1) the availability of compul-
`sory process to secure the attendance of witnesses; (2) the
`cost of attendance for willing witnesses; and (3) the admin-
`istrative difficulties flowing from court congestion. We dis-
`cuss each in turn below.
`
`A
`First, the district court erred in finding that the avail-
`ability of compulsory process to secure the attendance of
`witnesses weighed against transfer.
`Hulu identified several CDNs and revenue sharing
`content partners that are located in California with many
`in the Central District of California. App. 77–78, 82. Fur-
`thermore, Hulu identified a significant number of potential
`prior art witnesses that were also based in California.
`App. 82–83. On the other hand, SITO merely posited that
`certain third-party witnesses that Hulu had identified
`(from Apple and Microsoft) may be subject to the compul-
`sory power of both the Western District of Texas and the
`Central District of California. App. 231 (citing an attorney
`declaration relying on a location found on maps.bing.com,
`Supp. App. 16).
`The district court did not dispute Hulu’s contention
`that the vast majority of witnesses to be analyzed under
`this factor would be subject to the compulsory process of
`the Central District of California. Instead, it determined
`that this factor weighed against transfer by discounting
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`IN RE: HULU, LLC
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`Hulu’s proposed prior art witnesses and by faulting Hulu
`for “not show[ing] [that] any potential witness is unwilling
`to testify” other than one of the specifically identified prior
`art witnesses. Order, 2021 WL 1166772, at *5. This was
`error for several reasons.
`First, even assuming the district court had properly
`discounted Hulu’s proposed witnesses, the evidence before
`the district court showed, at best, only two potential Hulu
`prior art witnesses that would be subject to compulsory
`process by the Western District of Texas in addition to the
`Central District of California. Thus, this factor would be
`at most neutral, and certainly not weighing against trans-
`fer.
`Second, the district court erred by entirely overlooking
`Hulu’s multiple CDN witnesses who Hulu alleged, without
`dispute, would have knowledge of Hulu’s allegedly infring-
`ing systems and processes and were located in California.
`App. 82; see also App. 77–78. Thus, even if the district
`court were correct that prior art witnesses could be dis-
`counted, that rationale would not apply to these witnesses,
`whom the district court failed to mention in analyzing this
`factor. See In re Apple, Inc., 581 F. App’x 886, 888–89
`(Fed. Cir. 2014) (granting mandamus where the district
`court “ignored the relevant evidence” by “fail[ing] to men-
`tion the five other witnesses identified”). Thus, even if the
`prior art witnesses were neutral for this factor, the addi-
`tional consideration of these CDN witnesses would push
`this factor toward favoring transfer.
`Third, the district court erred by ignoring all of Hulu’s
`proposed prior art witnesses for the reason that “prior art
`witnesses are generally unlikely to testify at trial . . . .” Or-
`der, 2021 WL 1166772, at *5. This categorical rejection of
`Hulu’s witnesses is entirely untethered to the facts of this
`case and therefore was an abuse of discretion. See In re
`Biosearch Techs., Inc., 452 F. App’x 986, 987 (Fed. Cir.
`2011) (“A motion to transfer under § 1404(a) calls upon the
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`trial court to weigh a number of case-specific factors based
`on the individualized facts on record.”). Here, certain of
`Hulu’s proposed prior art witnesses directly related to prior
`art that was specifically mentioned in the asserted patents
`themselves, heightening
`their potential
`relevance.
`App. 86. The district court provided no analysis whatso-
`ever to cast doubt that these particular prior art witnesses
`would play a role in an upcoming trial other than specula-
`tion that they would be “unlikely to testify at trial” because
`generally prior art witnesses do not do so. Order, 2021 WL
`1166772, at *5. Such a bare and generalized analysis can-
`not be said to be providing “individualized, case-by-case
`consideration” of the relevant factors, as is required for the
`analysis of a § 1404(a) motion. Van Dusen v. Barrack,
`376 U.S. 612, 622 (1964). Furthermore, we have cautioned
`that “[r]equiring a defendant to show that the potential
`witness has more than relevant and material information
`at this point in the litigation or risk facing denial of trans-
`fer on that basis is unnecessary.” In re Genentech, Inc.,
`566 F.3d 1338, 1343 (Fed. Cir. 2009). The district court
`abused its discretion in zeroing out the weight of these wit-
`nesses without any case-specific analysis.
`Finally, the district court erred in discounting Hulu’s
`proposed witnesses because “Hulu has not shown any po-
`tential witness is unwilling to testify [in the Western Dis-
`trict of Texas], other than Mr. Newton . . . .” Order,
`2021 WL 1166772, at *5. In doing so, the district court re-
`lied on precedent from a different circuit regarding dismis-
`sal for forum non conveniens, id. (citing Duha v. Agrium,
`Inc., 448 F.3d 867, 877 (6th Cir. 2006)), which is held to a
`higher standard of inconvenience, Volkswagen II, 545 F.3d
`at 314 (“[section] 1404(a) venue transfers may be granted
`upon a lesser showing of inconvenience than forum non
`conveniens dismissals”) (internal quotation marks omit-
`ted). We are not inclined to think that the Fifth Circuit
`would adopt this position in this case. To the contrary, we
`think that the Fifth Circuit would recognize that where, as
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`IN RE: HULU, LLC
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`here, the movant has identified multiple third-party wit-
`nesses and shown that they are overwhelmingly located
`within the subpoena power of only the transferee venue,
`this factor favors transfer even without a showing of un-
`willingness for each witness. See, e.g., In re HP Inc.,
`2018 WL 4692486, at *3 n.1 (Fed. Cir. Sept. 25, 2018) (not-
`ing that at least one case from the Eastern District of Texas
`has applied a presumption of unwillingness “when there is
`no indication that a non-party witness is willing”). Here,
`there is no indication that the third-party witnesses iden-
`tified by Hulu would be willing, and the vast majority are
`subject to the compulsory process in the Central District of
`California.
`Overall, comparing the availability of compulsory pro-
`cess to secure the attendance of witnesses in the two fo-
`rums, we determine that this factor favors transfer. At the
`very minimum, the district court erred in finding the factor
`weighed against transfer, rather than being neutral. Noth-
`ing in the district court’s analysis showed a comparative
`advantage of the Western District of Texas over the Cen-
`tral District of California. At best, as the district court
`mentioned, two potential prior art witnesses would be
`equally subject to the compulsory process in both forums.
`All other things being equal, this might have rendered this
`factor neutral. But all else was not equal because many
`other third-party witnesses were only subject to the com-
`pulsory power of the transferee venue, and the evidence
`heavily favored Hulu. Thus, this factor favors transfer.2
`
`
`
`2 Hulu objects to the district court’s statement that
`“Hulu has not shown transfer is clearly more convenient
`for all of its non-party witnesses” as it applies to the com-
`pulsory process factor. Order, 2021 WL 1166772, at *5. We
`agree that this statement seems to be out of place for this
`factor. Unlike the willing witness factor, the compulsory
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`IN RE: HULU, LLC
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`B
`We next turn to the district court’s analysis of the will-
`ing witness factor. The district court recognized that this
`is “the most important factor in a § 1404(a) analysis.” Or-
`der, 2021 WL 1166772, at *5 (citing Genentech, 566 F.3d
`at 1342). The district court also acknowledged that “[i]f a
`substantial number of witnesses reside in one venue and
`no witnesses reside in another, th[is] factor will weigh in
`favor of the venue where witnesses reside.” Id. (citing
`Genentech, 566 F.3d at 1345). Even though that is pre-
`cisely the case here, the district court still found this factor
`weighed against transfer for two reasons. Id. at *6. “First,
`the convenience of party witnesses is typically given little
`weight because the witnesses’ employer could compel their
`testimony at trial.” Id. Second, Hulu failed to “identify
`specific third-party witnesses.” Id. We conclude that the
`district court erred in its analysis.
`First, the district court did not dispute Hulu’s conten-
`tion that nearly all of the party witnesses are in or near the
`Central District of California. App. 76–77, 250 n.2, 258,
`264–65. And in analyzing the parties’ arguments, the dis-
`trict court could identify no witnesses within the Western
`District of Texas, instead relying entirely on discounting
`all of Hulu’s witnesses located in or near the Central
`
`
`process factor is more about the convenience of the litigat-
`ing parties in making their case rather than the conven-
`ience of the unwilling witnesses compelled to testify.
`Furthermore, to the extent that this statement could have
`indicated that transfer is inappropriate unless the trans-
`feree forum is “more convenient for all of [the movant’s]
`non-party witnesses,” id. (emphasis added), this too would
`be erroneous, see Genentech, 566 F.3d at 1345. However,
`we do not read this sentence as the actual basis for the dis-
`trict court’s decision as to this factor.
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`IN RE: HULU, LLC
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`District of California. Even if the district court were cor-
`rect that Hulu’s witnesses could be completely discounted,
`and the district court only considered SITO’s employees, it
`was unrebutted that five out of six of SITO’s own full-time
`employees were located in California, thus tipping this fac-
`tor toward favoring transfer because the district court did
`not rely on any witnesses that would have found the West-
`ern District of Texas to be more convenient. Thus, at a
`minimum, it was error to find this factor weighed against
`transfer. See TracFone, 2021 WL 1546036, at *2 (deter-
`mining that the district court erred in its analysis of the
`willing witness factor where “several of [movant’s] likely
`employee witnesses resid[e] in the transferee venue and
`[the district court did not] rely[] on the location of a single
`potential witness within or even close to Waco, Texas”).
`Second, the district court erred in entirely discounting
`Hulu’s party witnesses located in the transferee venue be-
`cause, according to the district court, Hulu “could compel
`their testimony at trial.” Order, 2021 WL 1166772, at *6.
`Although an employer’s cooperation in allowing an em-
`ployee to testify may diminish certain aspects of inconven-
`ience to the employee witness (for instance, the employee
`is not acting contrary to their employer’s wishes), it hardly
`eliminates the inconvenience. As this court has recognized,
`“it generally becomes more inconvenient and costly for wit-
`nesses to attend trial the further they are away from
`home[.]” Genentech, 566 F.3d at 1343 (citing Volkswagen
`II, 545 F.3d at 317); see also Volkswagen I, 371 F.3d at 205
`(considering the amount of “time which these fact wit-
`nesses must be away from their regular employment”).
`This is true even if the employer allows for their testimony.
`The district court’s analysis discounting the inconvenience
`to Hulu’s witnesses is fundamentally at odds with the pur-
`pose of a transfer for convenience of the witnesses, and it
`conflicts with the district court’s own recognition that “a
`court must consider the factor of inconvenience to all
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`IN RE: HULU, LLC
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`witnesses.” Order, 2021 WL 1166772, at *6 (citing Genen-
`tech, 566 F.3d at 1342).
`Finally, the two potential witnesses identified by SITO
`located in Texas would not change our conclusion as to this
`factor. SITO’s opposition to Hulu’s motion to transfer iden-
`tified Don Bate, a named inventor of the asserted patents,
`and Aaric Eisenstein, a licensee of the asserted patents, as
`potential witnesses that are located in Texas (with only Mr.
`Eisenstein in the Western District). App. 233–34. Alt-
`hough the district court acknowledged this argument by
`SITO, Order, 2021 WL 1166772, at *6,3 the district court
`did not credit these specific witnesses (or mention them) in
`its analysis. At worst, this would render this factor neu-
`tral, but given the overwhelming number of potential wit-
`nesses from Hulu in or near California compared to the two
`from SITO in Texas, we determine that this factor favors
`transfer.
`
`C
`As to the last factor that the district court found
`weighed against transfer—court congestion—the statistics
`presented to the court regarding the two forums were re-
`markably similar. See Order, 2021 WL 1166772, at *8. The
`consideration that the district court assumed tipped the
`scales toward denying transfer was its own ability to set an
`early trial date and bring a case to trial earlier than dis-
`trict-wide statistics would suggest. Id.
`This was error for precisely the same reason described
`in In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020). In
`
`3 We note that the district court cited SITO’s re-
`sponse at 19–20, but this portion does not discuss willing
`witnesses. See App. 237–38. Based on the sentence pre-
`ceding the citation, we assume the district court meant to
`cite SITO’s response at 15–16 (App. 233–34), which dis-
`cusses SITO’s witnesses.
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`granting mandamus directing the district court to transfer
`in Apple, we determined that the district court “misapplied
`the law to the facts of th[e] case by relying too heavily on
`the scheduled trial date,” explaining that “a court’s general
`ability to set a fast-paced schedule is not particularly rele-
`vant to” the court congestion factor. Id. at 1344 (citing In
`re Adobe Inc., 823 F. App’x 929, 932 (Fed. Cir. 2020)). Thus,
`considering the close similarity of cases per judgeship and
`average time to trial of the two forums, and disregarding
`the particular district court’s ability to push an aggressive
`trial date, this factor is neutral. And even if the balance of
`this factor had tipped slightly against transfer, this slight
`imbalance alone would not have been enough to tip the
`scales in favor of denying transfer. See Apple, 979 F.3d
`at 1344 n.5 (citing Genentech, 566 F.3d at 1347).
`*
`*
`*
`After correcting these errors by the district court, no
`factors remain that weigh against transfer and several
`weigh in favor.4 Thus, we readily conclude that the district
`court clearly abused its discretion in denying Hulu’s trans-
`fer motion. Given that conclusion, we grant Hulu’s petition
`for mandamus.
`Accordingly,
`IT IS ORDERED THAT:
`
`
`
`
`4 Although the district court found that the “local in-
`terest” factor weighed slightly in favor of transfer, Order,
`2021 WL 1166772 at *8–9, we caution the district court
`that “[l]ocal interests are not a fiction,” In re Samsung Elec-
`tronics Co., Ltd., 2021 WL 2672136, at *7 (Fed. Cir. June
`30, 2021). To the extent that the district court discounted
`the local interest factor based on this reasoning, this was
`also an error.
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`Hulu’s petition for a writ of mandamus is granted. The
`April 28, 2021 order is vacated, and the district court is di-
`rected to grant Hulu’s motion to the extent that the case is
`transferred to the United States District Court for the Cen-
`tral District of California under § 1404(a).
`
`
`
`
`August 2, 2021
`Date
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`
`
`