Court Denies DISH Network’s Transfer Motion for a Second Time in Patent Dispute

An opinion issued the Friday before Labor Day weekend rejected DISH Network L.L.C.’s refreshed motion to move a patent lawsuit to the District of Colorado under the permissive transfer statute. According to the six-page order, Judge Alan D. Albright reconsidered his previous ruling with instruction from the Federal Circuit that he do so “in light of the appropriate legal standard,” as clarified in recent dispositions, including In re Samsung Electronics Co. Ltd.

The dispute between Broadband iTV Inc. (BBiTV) and DISH dates back to 2019 when BBiTV sued DISH in Waco, Texas for patent infringement concerning the technology underlying three of the defendant’s accused set-top boxes that receive and deliver on-demand content to a subscriber’s device. This April, Judge Albright denied DISH’s transfer motion because the movant did not meet its significant burden of demonstrating that the District of Colorado was clearly the more convenient forum.

DISH petitioned the Federal Circuit for a writ of mandamus, which the appellate court rejected. On August 13, however, it advised the trial court to reconsider its previous ruling, and in particular, three of the private and public factors set forth by Supreme Court precedent. Specifically, the Federal Circuit directed Judge Albright to reanalyze the local interest factor, the convenience of witnesses factor, and the practical problems factor.  

Upon second review, the court adjusted its finding as to the cost of attendance for willing witnesses. Previously, it held that the factor was neutral or slightly favored transfer, partly because the court assumed that no more than a few DISH witnesses would testify at trial given the typical time trial limits and that convenience of party witnesses was generally given little weight.

“In light of the Federal Circuit’s guidance in Samsung to allocate at least some weight to the convenience of party witness especially when there is a lack of relevant DISH witnesses in this District, the Court modifies its previous finding and now finds that this factor strongly favors transfer,” Judge Albright wrote.

The court also adjusted its previous findings as to the practical problems factor. Chiefly, the court reconsidered the importance of other patent infringement suits pending against DISH, AT&T, and DirecTV in the Western District of Texas. The court maintained its finding that this factor strongly weighed against transfer because the co-pending cases “involve the same asserted patents and the accused products in these cases involve the same underlying technology.”

The court concluded that DISH once again failed to meet its burden because two factors strongly weighed against transfer, one factor strongly favored transfer, and the remaining factors were neutral. The decision comes amidst summary judgment briefing.

Feinberg Day Kramer Alberti Lim Tonkovich & Belloli LLP represents Broadband iTV and Naman, Howell, Smith & Lee PLLC and Orrick, Herrington & Sutcliffe LLP represent DISH Networks in the case.