C.A.G. Insights

Judge Albright Orders Intra-district Transfer to Austin Division for Amazon and Whole Foods

By Vincent J. Allen.

Judge Albright recently ordered transfers to the Austin Division for convenience in multiple patent infringement cases filed in the Waco Division of the Western District of Texas.  However, consistent with past practice, the judge is maintaining these cases on his docket.

In one of these cases, Freshub filed suit against Amazon, Prime Now, and Whole Foods on June 24, 2019.  The suit alleges infringement of a patent covering voice processing and voice interpretation technology.  The technology allows consumers to utilize home appliances to add items to their shopping carts or grocery lists using voice commands or the simple wave of a hand.  Freshhub alleges that Amazon’s Alexa, Echo, Fire TV, Fire Tablet, and Amazon App products infringe the patents in suit.  One of the alleged infringing products is shown below.

Screen shot of Alexa App that Allegedly Infringes Patents in Suit
Exhibit 18 of Plaintiff’s Complaint Alleging Infringement by Alexa App

Whole Foods, now owned by Amazon, has its headquarters in Austin, Texas.   Defendants did not dispute that jurisdiction and venue are proper in the Western District of Texas.  However, Amazon and Whole Foods moved for an intra-district transfer of the case from Waco to Austin.  Defendants argue there are no documents or witnesses located in the Waco Division.

Freshub argued that Amazon had lockers in Waco where customers can pick up orders.  Freshub did not identify a single witness or other evidence relevant to the case that was located in Waco, however.

Judge Albright noted that “as a general matter, this Court always takes into consideration to some degree the decision that the Plaintiff made in determining where to file its patent lawsuit.”  However, none of the parties are based in or maintain any offices in the Waco Division.  Whole Foods does not operate any stores in the Waco Division, and there are no relevant documents or source code in the Waco Division.  But more importantly to Judge Albright, “no anticipated party or non-party witnesses reside in the Waco Division.”

Judge Albright noted that he had addressed this very issue already in the Data Scape case, discussed here.  Freshub failed to address the judge’s prior decision in its opposition. In Data Scape, the court considered “nearly identical facts” and granted intra-district transfer from Waco to Austin.  The court noted that Freshub’s most persuasive argument is that Amazon declined to make a similar motion in a different patent case that is also pending in the Waco Division. But the court found that this was contradicted by the language Amazon’s answer and that Amazon had filed a motion for intra-district transfer in that case after Freshub filed its opposition in the instant case.

Freshub also alleged that Amazon has a fulfillment center located in the Waco Division, but Amazon proffered sworn evidence to the contrary.  Judge Albright held that even if it were true that Amazon had a fulfillment center in the Waco Division, this would not affect his analysis of the convenience factors favoring transfer.

Judge Albright noted that there is less than 100 miles between Waco and Austin but that is still considered inconvenient under the case law.  He did, however, qualify this statement by stating that if there is a compelling reason supporting maintaining venue in the Waco Division, then he would weigh the issue of the distance between the two courthouses more carefully.

So it appears that in closer cases, Judge Albright might find that the short distance between Austin and Waco would favor keeping the case in Waco.  In other words, if Waco does have some significant connection with the case, e.g. third party witnesses located in the Waco Division, then Judge Albright may not view the fact that a defendant may have to travel from Austin to Waco a compelling reason to transfer the case to Austin.

But in this case, all of the anticipated witnesses are located in Austin, and therefore, transfer was warranted.  He did, however, keep the case on his docket as the defendants requested in their motion that the court “retain its oversight” of the case after transfer.  Likewise, Freshub agreed that Judge Albright should retain jurisdiction in the event he transferred the case to the Austin Division.  Click here for a copy of the order.

Pursuant to the stipulations of the parties, Judge Albright also transferred Neodron Ltd. V. HP Inc. and Neodron Ltd. V. Microsoft  to the Austin Division.  Yet, he maintained those cases on his docket as well.


*Vincent Allen is a partner focusing his practice on intellectual property litigation and management of IP portfolios.  He earned his law degree from Baylor Law School in Waco, where the firm recently opened an office. If you need help with patent litigation in Waco or elsewhere, please give Vincent Allen a call at 972-367-2001 or send an email to allen@caglaw.com.