IP Law Daily, PATENT—W.D. Tex.: Video streaming patent case against Amazon will be heard in Washington, (Oct 18, 2022)

By Kevin M. Finson, J.D.

Transfer was granted in a video streaming patent dispute because all the evidence and a large majority of the witnesses were located in the transferee forum.

A lawsuit accusing Amazon’s video streaming services of infringing three audio-video streaming patent has been transferred to the Western District of Washington by the federal district court in Waco, Texas. Washington was a more convenient forum because the accused product was developed there, all the evidence, and most of the potential witnesses were in or nearer Washington than Texas (WAG Acquisition, LLC v. Amazon.com, Inc., October 14, 2022, Albright, A.).

WAG Acquisition, LLC (WAG) was the owner of U.S. Patents Nos. 9,742,824 (the ’842 patent), 9,729,594 (the ’594 patent), and 9,762,636 (the ’636 patent), which claimed a process for delivering audio and video files over the internet. WAG alleged that Amazon.com, Inc. and several other Amazon entities (Amazon) infringed all three patents by offering its on-demand and streaming video services, and filed suit for infringement in the Western District of Texas. WAG also filed two other cases, both in the Western District of Texas, accusing Google and Netflix of similar infringement. Neither WAG nor any of the defendant companies were organized in or maintained their principal place of business in Texas. Amazon moved to transfer to the Western District of Washington. The court noted that there was no dispute that either venue would be proper and addressed the public and private interest factors.

Sources of proof. Amazon argued that the accused products were largely developed in the Western District of Washington and that its necessary proof was found there. There was no evidence stored in the Western District of Texas, so this factor favored transfer.

Compulsory process. Amazon identified six non-party witnesses related to the RealPlayer media player and three non-party witnesses related to Microsoft’s NetShow, which were relevant as prior art in the suit, all of whom were located in the Western District of Washington. Although the court noted that prior art witnesses were rarely called, their presence in the Western District of Washington favored transfer, especially considering there were no witnesses within the subpoena power of the Western District of Texas.

Cost of attendance. Amazon argued that the majority of its employees who had knowledge of the products and who were likely to be called to testify resided in Portland, Oregon or Seattle, Washington. While some of Amazon’s witnesses were located in Austin, Texas, the majority of whom were likely to testify would be far more conveniently able to attend trial in Washington. All of WAG’s employees resided in New Jersey and Pennsylvania, and due to the length of travel the court held that neither venue was more or less convenient for those witnesses.

Catch-all factor. Under the catch-all private interest factor, Amazon argued that a pending matter involving the same patents in Washington favored transfer, while WAG argued that a related case involving the same patents was also pending in the Western District of Texas. The court held that this factor was neutral because judicial economy could be served either with or without a transfer.

Court congestion. Reviewing case data, the court believed that it would more quickly be able to resolve the case if transfer were denied, so this factor weighed against transfer.

Local interest. The events that gave rise to the suit occurred in Washington, were the accused products were developed. There was no local interest in Texas, so this factor favored transfer.

The remaining factors were agreed neutral and not discussed by the court. Balancing the factors, the court granted Amazon’s motion to transfer.

The case is No. 6:21-cv-00815-ADA.

Attorneys: Gina Kyungjin Kim (Liston Abramson LLP) for WAG Acquisition, LLC. Christopher Lavin (Fenwick & West LLP) for Amazon.Com, Inc., Amazon Web Services, Inc. and Amazon.Com Services LLC.

Companies: WAG Acquisition, LLC; Amazon.Com, Inc.; Amazon Web Services, Inc.; Amazon.com Services LLC

Cases: Patent TexasNews WashingtonNews