LBT IP II LLC v. Uber Technologies, Inc.

Background

LBT IP II LLC sued Uber Technologies, Inc., alleging infringement of four patents: U.S. Patent Nos. 7,728,724; 7,598,855; 8,531,289; and 8,224,355. LBT II alleged that Uber’s ride-hailing and food-delivery services used technology covered by those patents.

The opinion states that Uber is a Delaware corporation with its principal place of business in San Francisco, California, and that it also had a physical presence in Austin, Texas. LBT II is a Texas limited liability company with its principal place of business in Graham, Texas.

Uber moved under 28 U.S.C. § 1404(a) to transfer the case from the Western District of Texas to the Northern District of California. Section 1404(a) permits transfer for the convenience of the parties and witnesses and in the interest of justice when the proposed district is an available venue. The party seeking transfer must show that the proposed venue is clearly more convenient.

Court’s Analysis

The court first found that the case could have been brought in the Northern District of California because Uber’s headquarters were there. LBT II did not contest that point.

The court then weighed private and public interest factors:

- Access to evidence: Relevant evidence existed in both districts, including physical materials and documents in Austin. But the court found that more important evidence concerning Uber’s accused products was in the Northern District of California, where Uber’s research, design, and engineering operations were located. The court found this factor slightly favored transfer. - Compulsory process: The Northern District of California could subpoena at least nine identified third-party witnesses, including inventors, prior-art witnesses, and Google employees. The court found that none of the identified third-party witnesses could be compelled to testify in the Western District of Texas. This factor favored transfer. - Convenience and cost for willing witnesses: Uber identified numerous relevant employees in the Northern District of California, while LBT II identified Joseph Scalisi as the only material witness in the Western District of Texas. LBT II also identified witnesses in Oregon and Minnesota. The court concluded that the Northern District of California was more convenient for the larger group of relevant witnesses. This factor favored transfer. - Other practical problems: The parties agreed, and the court found, that this factor was neutral. - Court congestion: The court found this factor neutral after considering the districts’ caseloads and time-to-trial statistics. - Local interest: The court found that the Northern District of California had the stronger local interest because the design and development of Uber’s accused services occurred there. It found that sales of nationwide services did not create a localized interest in either district. This factor favored transfer. - Familiarity with governing law: This factor was neutral. - Conflicts of law or foreign law: This factor was neutral.

Disposition

After weighing the factors, the court concluded that the bulk of the relevant witnesses and evidence were in the Northern District of California, that the Northern District of California could compel more witnesses, and that trial there would be more convenient for willing witnesses. It held that Uber met its burden to show that the Northern District of California was clearly more convenient than the Western District of Texas.

Judge Albright ordered that Uber’s motion to transfer venue to the Northern District of California was granted. The order addressed venue only; it did not decide the patent-infringement claims on their merits.