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Google Wins Transfer of Patent Lawsuit Despite 5th Cir. Case Law

Oct. 6, 2022, 5:31 PM

A patent-licensing company accusing Google LLC of infringement can’t brush off Federal Circuit precedent to beat the tech giant’s venue transfer bid, Texas federal Judge Alan Albright ruled, moving the case to the Northern District of California.

Motion Offense LLC tried to argue that Fifth Circuit precedent concerning witness subpoenas, evidence locations, and home-town advantage should govern the case—and tip the scale against transfer—but Albright said that would be inappropriate.

“This Court cannot and does not overrule the reasoning of the Federal Circuit in a patent case,” he wroteTuesday. “Although the Federal Circuit issues unpublished, nonprecedential transfer opinions, the Federal Circuit frequently cites these opinions as though they precedentially interpret Fifth Circuit law.”

He also noted that the Federal Circuit overruled his reasoning for retaining a trio of cases in November based on his expedited case schedules when the Northern District of California would’ve otherwise been more convenient.

Motion Offense hit both Google and cloud storage company Dropbox Inc. with patent infringement suits last year, asserting that the firms’ products—such as Google Drive and Google Sheets—infringe data-management patents including US Patent Nos. 10,303,353, 10,613,737, and 11,044,215.

In January, Albright shot down Dropbox’s attempt to escape some claims in the consolidated pair of cases against it, ruling that Motion Offense’s patents did indeed predate Dropbox’s allegedly infringing activities. The matter is set for trial in early January.

The Google case is set for trial in September 2023. Google has three invalidity probes against the Motion Offense patents pending at the Patent Trial and Appeal Board, where institution decisions are expected in February.

Albright previously chided Apple Inc. for its expert’s “evasive” behavior during venue discovery and wrote Tuesday that “the Court has grown weary of venue declarants who investigate only facts that support transfer and then, after failing to investigate adverse facts, simply declare that they have no personal knowledge of any facts that weigh against transfer.”

In this instance, Albright found Google’s expert completed a “credible but limited” investigation that uncovered at least some evidence weighing against the transfer. Still, “overall, the private interest factors clearly favor transfer,” he wrote.

Devlin Law Firm LLC represents Motion Offense. Paul Hastings LLP and Potter Minton PC represent Google.

The case is Motion Offense, LLC v. Google LLC, W.D. Tex., No. 21-cv-00514, transfer granted 10/4/22.

—With assistance from Laurel Brubaker Calkins

To contact the reporter on this story: Kelcee Griffis in Washington at

To contact the editors responsible for this story: Tonia Moore at; Jay-Anne B. Casuga at