The Software IP Report
No Venue Transfer from E.D. Texas: Federal Circuit Denies Mandamus Petition
By Charles Bieneman
Categories: Patent Civil Procedure, The Software IP Report
The Federal Circuit has upheld a trial court’s decision to deny Amazon.com’s motion to transfer venue from the Eastern District of Texas in a patent infringement case. In re Amazon.com, Inc., Misc. No. 115, (May 1, 2012) (issued as non-precedential).
The district court had denied Amazon’s motion on the grounds that the plaintiff’s documents and evidence were closer to the Eastern District of Texas than to Amazon’s target venue, the Western District of Texas, whereas the defendants’ documents and evidence were scattered throughout the country. The District Court had further noted that the Eastern District would have subpoena power over four witnesses, even if the presence of certain third party witnesses in the Western District did favor that venue.
The Federal Circuit, in an opinion authored by Chief Judge Rader, began by noting that mandamus was “an extraordinary remedy,” governed here by the law of the Fifth Circuit in the absence of an issue of substantive patent law. The Court then distinguished In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009), in which it had granted a writ of mandamus transferring venue from the Eastern District of Texas. In Genentech, there were substantial ties to the Northern District of California, and the only argument in favor of the Eastern District of Texas was that documents located on the east coast would have to be transported a shorter distance, even though the documents still would have to be transported a long way. In contrast, “transfer here would not result in trial of the case where the alleged infringing products were developed and where a significant amount of the defendants’ sources of proof are maintained.”
Further, even if the district court had erred in finding that the presence of witnesses in the Western District “slightly,” rather than “strongly,” favored transfer, such “asserted error is ordinarily not mandamus-worthy, particularly in light of the fact that at the transfer stage, affidavits or other detailed information about a witness’s relevance and potential testimony are not required.” Moreover, a transfer would not, as Amazon argued, promote judicial economy; at most, it would not require severance because the other defendants were also subject to jurisdiction in the Western District of Texas.
In sum, the court could not “say that the district court’s decision amounted to a clear abuse of discretion,” and the petition for a writ of mandamus was denied. The Federal Circuit recently demonstrated (in a case where patent defendants alleged they had been improperly joined together) that it is willing to grant petitions for writs of mandamus; however, as can be seen here, venue transfer motions leave the court with wide latitude, and compelling facts are usually needed to prevail.