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Austin Intellectual Property Law Association February 16 Meeting and Luncheon CLE Austin, Texas February 16, 2010. Venue Selection in Patent Cases After In re Volkswagen. Michael C. Smith Siebman, Burg, Phillips & Smith, LLP Marshall, Texas

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Venue selection in patent cases after in re volkswagen

Austin Intellectual Property Law Association

February 16 Meeting and Luncheon CLE

Austin, Texas

February 16, 2010

Venue Selection in Patent Cases After In re Volkswagen

Michael C. Smith

Siebman, Burg, Phillips & Smith, LLP

Marshall, Texas

The 1901 Harrison County Courthouse (restored 2009)

Marshall, Texas

J. Riely Gordon, architect

Patent venue
Patent Venue

“All too often, patent infringement suits begin with a battle over where the war is to be fought.”

Wydick, Venue in Actions for Patent Infringement,

25 Stan. L. Rev. 551 (1973).

Historical background
Historical Background

  • 1994-1995 – state court venue limited; tort reform

  • Late 1990’s – personal injury cases begin to be filed in large numbers in Eastern District

  • 2000-2004 – mandamus petitions on venue rulings begin to be filed in Fifth Circuit – all denied prior to In re Horseshoe and In re Volkswagen I, which order cases transferred.

  • 2008 – In re VW II; numerous product liability cases transferred; new filings drop as well - cases shift back to Dallas and Houston state courts.

Historical background1
Historical Background

  • 1992 – first patent case filed in Marshall, TI v. Micron.

  • 1990’s – Texas Instruments files numerous patent cases in Marshall – ’99 trial in TI v. Hyundai

  • 2000 – new Marshall federal judge T. John Ward adopts local patent rules; filings start going up.

  • 2003-2006 – plaintiffs win 18 straight jury verdicts

  • 2007-2008 – ED Texas #1 district in nation for patent filings; win rate drops to 33% in 2007; time to trial in Marshall slows to three years as result of new filings.

  • 2009 – win rate 50-60%; filings drop to 2d in nation; late in year time to trial begins shorten in Marshall.

  • 2010 – defs win two of first three cases tried.

Patent venue1
Patent Venue

  • Patent infringement cases may be filed in the judicial district: (1) where the defendant resides; or (2) where the defendant has committed acts of infringement and has a regular and established place of business. 28 U.S.C. § 1400(b)

  • A defendant that is a corporation “shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” 28 U.S.C. § 1391.

Patent venue2
Patent Venue

  • The Federal Circuit held in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1583-84 (Fed.Cir.1990) that the residence of a corporate defendant in patent infringement actions is to be analyzed under the general venue provisions of § 1391(c).

  • So, personal jurisdiction = resides = venue.

2009 federal circuit venue mandamus cases
2009 Federal Circuit Venue Mandamus Cases

In re TS Tech (12/2008)

In re Telular

In re Genentech

In re Volkswagen (IV)

In re Hoffman-La Roche

In re Nintendo

In re Vtech(1/2010)

(red = granted ; white = denied)

In re volkswagen iic
In re Volkswagen (IIc)

  • Product liability case arising out of a collision in Dallas.

  • In re VW IIceliminated the plaintiff’s choice of forum as a separate factor, holding that it is reflected in the defendant’s burden of proof.

  • The en banc panel held that

    • “when the movant … demonstrates that the transfer of venue is clearly more convenient. . . the district court should grant the transfer.” (Emphasis added).

In re vw iic current venue analysis
In re VW IIc- Current Venue Analysis

  • Factors

    • Relative ease of access to sources of proof

    • Availability of compulsory process

    • Cost of attendance of willing witnesses

    • “All other practical problems”

    • Administrative difficulties/court congestion

    • Local interest in hearing localized controversies

    • Familiarity of forum with the law

    • Avoidance of conflicts of law / foreign law problems

  • Must transfer if “clearly more convenient”

In re ts tech
In re TS Tech

  • In In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) the court granted mandamus ordering Judge Ward to transfer a case to Ohio.

  • The plaintiff resided in Michigan, and the accused infringers, three related corporations, resided in Ohio and nearby Canada.

  • Applying In re Volkswagen the Federal Circuit found that the district court, by committing four legal errors in its analysis of the transfer issue, had “clearly abused its discretion.”

  • Note: In re VW came out after district court’s opinion – no remand for consideration, and FC denied In re VW changed the law re: venue at all.

In re ts tech1
In re TS Tech

  • Key holding was the extension from products cases (in which the sale of the product was not the accused activity) to patent cases (in which it is) of the Fifth Circuit’s holding that sales in the district did not give the forum court a “local interest”.

  • Whenever the interest the forum court has is the same interest any district would have, that interest is to be disregarded. Only particularized local interests are to be considered.

In re telular
In re Telular

  • Plaintiff, a Dallas resident, filed a patent case against several security companies. 

  • Telular, sought transfer to Chicago, where its head offices were located (its monitoring offices were in Atlanta). 

  • Judge Ward denied the motion in this case, and several months later In re TS Tech issued.  Several weeks after that, defendant Telular filed a petition for writ of mandamus, citing In re TS Tech. 

In re telular1
In re Telular

  • The Federal Circuit observed that "Telular faces an extraordinary burden in this case. First, the equities lie considerably against granting mandamus" because, as the Court noted, Telular waited five months after the court's ruling to seek mandamus - unlike TS Tech had done.

In re telular2
In re Telular

  • “[M]andamus relief in § 1404(a) cases is only permitted when the petitioner is able to demonstrate that the denial of transfer was a "clear" abuse of discretion such that refusing transfer produced a "patently erroneous result."  A suggestion that the district court abused its discretion, which might warrant reversal on a direct appeal, is not a sufficient showing to receive mandamus relief.”

In re telular3
In re Telular

  • “Unless it is clear that the facts and circumstances are without any basis for a judgment of discretion, we will not proceed further in a mandamus petition to examine the district court's decision.  In other words, we will deny a petition "[i]f the facts and circumstances are rationally capable of providing reasons for what the district court has done.””

Issue no local interest
Issue: No Local Interest

  • “The Eastern District of Texas may have no more of an interest in this case than any other district in which Telular's systems are ultimately installed. This alone, however, does not mean that Telular's alternative choice of venue, in this case the Northern District of Illinois, is clearly more convenient. . . .” (Emphasis added).

  • Contrast to later 2009 FC venue opinions.

In re volkswagen iv
In re Volkswagen IV

  • In In re Volkswagen, 566 F.3d 1349 (Fed. Cir. 2009), arising out of the MHL Tek litigation, the Federal Circuitdenied a petition seeking to mandamus Judge Ward's denial of a motion to transfer the case to Michigan. 

  • The Federal Circuit noted that "[i]n this case, the existence of multiple lawsuits involving the same issues is a paramount consideration when determining whether a transfer is in the interest of justice”. (Emphasis added).

In re genentech
In re Genentech

  • In In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009) arose out of the Sanofi-Aventislitigation in Judge Ron Clark's court in which a German plaintiff sued two California companies. 

  • InSanofi-Aventis Deutschland GmbH v. Genentech, Inc., 2009 WL 764304 (E.D.Tex. Mar 19, 2009) Judge Clark concluded that on balance, the factors favored retaining the case in the Eastern District of Texas.

In re genentech1
In re Genentech

  • Key to the court’s decision were the facts that:

    • Defendant . . . has, in the recent past, found it convenient to avail itself of this forum as a Plaintiff;

    • the question of whether [plaintiff] is subject to personal jurisdiction in the Northern District

    • one of the defendants has no presence … in the Northern District [of California];

    • litigation in California would be more expensive and quite possibly more time-consuming…”

In re genentech2
In re Genentech

  • In reversing, the Federal Circuit observed that California was only marginally less convenient than Texas for the foreign plaintiff, and declined to allow the Texas court's “central location” to trump the fact that the California court was "clearly more convenient" for the parties and witnesses in this case.

  • Decreased travel time from Europe to Texas as opposed to California did not support transfer.

Issue central location
Issue: “Central Location”

  • Genentech rejects a simply “central location” argument divorced from analysis that shows the forum is actually more geographically convenient under the facts of the case.

  • Subsequent district court cases continue to use this phrase, but as a shorthand for concluding that a mileage analysis shows that the forum court is more convenient.

In re genentech3
In re Genentech

  • The Federal Circuit also rejected the court's assessment that the petitioners failed to identify any “key witnesses” within the venue, holding that “[r]equiring a defendant to show that the potential witness has more than relevant and material information at this point in the litigation or risk facing denial of transfer on that basis is unnecessary.”

  • Major change from prior Texas caselaw

Issue no key witnesses
Issue: No “Key Witnesses”

  • Genentech essentially endorsed the “battle of the numbers” approach where the parties inflate their witness lists in order to show that a particular forum is more convenient, and eliminated the court’s ability to cull these lists to those witnesses who were truly necessary and not merely cumulative.

  • Will parties now list witnesses to influencethe venue analysis?

Issue location of documents
Issue: Location of Documents

  • The Federal Circuit also noted that in patent infringement cases, the bulk of the relevant documents usually comes from the infringer, and the place where they are kept, i.e. the defendant’s location, therefore weighs in favor of transfer to that location.

  • Important to identify the location of all relevant documents.


  • Based on opinions posted in Westlaw, the court only granted four transfer motions in 2008, and each of these motions was granted to achieve judicial economy as the transferee court had a pending related action.

  • As of the end of November in 2009, the Eastern District had granted at least fourteen transfer orders.

Odom v microsoft love j
Odom v. Microsoft (Love, J.)

  • In Odom v. Microsoft, 6:08cv331 (Jan. 30, 2009) Judge John Love granted the Defendant's motion to transfer venue to Oregon.

  • Plaintiff is an Oregon inventor (Patent Hawk) claiming that Microsoft infringes his patent via its Office software. The case also involves Odom's relationship with Microsoft and the Klarquist Sparkman firm in Oregon prior to suit being filed.

Odom v microsoft love j1
Odom v. Microsoft (Love, J.)

  • Judge Love observed that "[t]his is not a case where witnesses are spread out all over the country or the world" citing Network-1 Sec. Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d 795, 800, mandamus denied, 183 Fed. Appx. 967 (Fed. Cir. 2006) (finding this factor neutral where witnesses were located in Connecticut, New York, California, Taiwan, and Israel).

  • This case, Judge Love wrote, was in fact quite similar to the facts in TS Tech, not Network-1.

Odom v microsoft love j2
Odom v. Microsoft (Love, J.)

  • Due to the extensive ties Oregon had to the underlying case via the contracts, etc., Judge Love concluded that there was in fact a local interest in the case in Oregon, and none (beyond the sale of infringing products which all districts likely shared) in Texas.

  • Judge Love also discounted in part the sources of proof factor because unlike VW and TS Tech, the proof was likely to be electronic, not physical. See later cases.

Partsriver v shopzilla folsom j
PartsRiver v. Shopzilla (Folsom, J.)

  • Judge Folsom transferred PartsRiver v. Shopzilla, 2:07cv440 by a California patent owner against six California defendants (with a seventh in Washington) to California, finding that "based on the regional nature of this case, that the Northern District of California is clearly more convenient to the parties.” (Emphasis added).

Novartis folsom j
Novartis (Folsom, J.)

  • In Novartis Vaccines & Diagnostics v. Hoffman-La Roche, 2009 WL 349760 (Feb. 3, 2009) Judge Folsom denied a motion to transfer the case from Texas to North Carolina. 

  • He found that the parties and the sources of proof in this case were distributed nationwide, so a transfer from Texas to North Carolina would actually increase travel an additional 800miles on average, and substantially inconvenience the West Coast witnesses. 

Novartis folsom j1
Novartis (Folsom, J.)

  • Judge Folsom concluded that the case was distinguishable from VW and TS Tech, in both of which the physical evidence was confined to a limited region.

  • He did not rely on the plaintiff’s claim that its documents were on a server in Marshall.

  • This opinion was reversed in In re Hoffman-LaRoche.

Invitrogen i ii love j
Invitrogen I & II (Love, J.)

  • Judge Love granted one motion to transfer and denied another in two cases filed by a plaintiff against the same defendant. 

  • In Invitrogen Corp. v. General Elec. Co., 2009 WL 331891(E.D.Tex. Feb 09, 2009) (Invitrogen I) GE sought transfer to Maryland, where half of the patents asserted in the Texas case had been asserted by the plaintiff's predecessor in interest against GE over an 11 year period. 

Invitrogen i ii love j1
Invitrogen I & II (Love, J.)

  • Judge Love found persuasive GE's claim that this case should be transferred to Maryland in order to preserve judicial economy, noting that there was "substantial overlap" between the Texas case and the now-settled Maryland case in both the patents asserted and the enforcement of the Maryland case settlement agreement. 

Invitrogen i ii love j2
Invitrogen I & II (Love, J.)

  • In the second case, however, Invitrogen Corp. v. General Elec. Co., 2009 WL 331889(E.D.Tex. Feb 09, 2009) (Invitrogen II) Judge Love denied the motion to transfer, noting that the case lacked the decade-long prior litigation involving the patents, and had little in common with the other litigation.

  • Judge Love found that the defendant had not under these facts shown that the proposed transferee forum was "clearly more convenient."

Mhl tek llc ward j
MHL TEK, LLC (Ward, J.)

  • In MHL TEK, LLC v. Nissan Motor Co et al(2-07-cv-00289) (Feb. 23, 2009) Judge Ward was asked to reconsider his decision denying the defendants' motion to transfer the case to Michigan.

  • Judge Ward concluded that "the defendants have not shown that the Eastern District of Michigan is clearly more convenient than the plaintiff’s chosen forum" and therefore denied the motion to reconsider.

Mhl tek llc ward j1
MHL TEK, LLC (Ward, J.)

  • Plaintiff is a Texas corporation with offices in Michigan.

  • Defendants are various foreign auto companies and subsidiaries. Four defendants reside in Germany, three in California, two in Japan, two in South Korea, two in New Jersey, one each in Michigan, Tennessee, Alabama, Georgia, South Carolina, Indiana, and Virginia.

Mhl tek llc ward j2
MHL TEK, LLC (Ward, J.)

  • Judge Ward found that this district would, in the least, be just as convenient or inconvenient to most of the defendants as the desired transferee district.

  • Based on his travel calculations, Judge Ward found that under the 100-mile rule, the Texas court, rather than the Michigan one, was more centrally located to the scattered distribution of party witnesses.

Mhl tek llc ward j3
MHL TEK, LLC (Ward, J.)

  • Judge Ward made clear he was not reading the sources of proof factor out of the analysis, but given that the plaintiff's documents were being produced in Texas, only one defendant was from Michigan (and it had two related companies in the litigation, so it was not clear where its documents actually were), and the vast majority of the other documents were located elsewhere - plus that this case did not involve physical evidence, this factor did not support transfer

Mhl tek llc ward j4
MHL TEK, LLC (Ward, J.)

  • The Court specifically contrasted this case from TS Tech and VW II, where all of the documents and physical evidence was either located in the transferee forum, or much more convenient to it.

  • Judge Ward's analysis of the factor of judicial economy disclosed an interesting set of facts.

Mhl tek llc ward j5
MHL TEK, LLC (Ward, J.)

  • Following the filing of this case by MHL, Volkswagen filed a declaratory judgment lawsuit against MHL, involving the same three patents, in the Eastern District of Michigan.

  • The Michigan judge transferred Volkswagen’s second-filed lawsuit to Judge Ward. Volkswagen petitioned the Federal Circuit for a writ of mandamus directing the Michigan judge to vacate his transfer order.

Mhl tek llc ward j6
MHL TEK, LLC (Ward, J.)

  • In its petition, VW made essentially the same arguments regarding the inconvenience resulting from a trial in Marshall. The Federal Circuit denied Volkswagen’s petition, finding that Volkswagen arguments were “only general assertions regarding convenience.” In re Volkswagen of America, Inc., 296 Fed. Appx. 11 (Fed. Cir. 2008) (In re VW III).

  • "In the light of this guidance from the Federal Circuit," Judge Ward wrote, "this Court is inclined to deny defendants’ motion.”

Mhl tek llc ward j7
MHL TEK, LLC (Ward, J.)

  • Judge Ward also noted that there was a previously filed case by this plaintiff against different defendants but involving the same patent filed in his court. "With two other cases involving the exact same patents before this Court, granting defendants’ motion for transfer in the present case would cut against principles of judicial economy and increase the risk of inconsistent adjudication.”

Mhl tek llc ward j8
MHL TEK, LLC (Ward, J.)

  • Volkswagen filed another petition for mandamus following Judge Ward’s order, and the Federal Circuit denied it on May 22. SeeIn re Volkswagen, 566 F.3d 1349 (Fed. Cir. 2009) (In re VW IV).

Mhl tek llc ward j9
MHL TEK, LLC (Ward, J.)

  • In December 2009 Judge Ward granted summary judgment of noninfringement in defendants’ favor.

Realtime data love j
Realtime Data (Love, J.)

  • In RealTime Data, LLC d/b/a Ixo v. Packeteer, Inc. et al (6-08-cv-00144) (E.D. Tex. March 5, 2009) 10 of 13 defendants filed a motion to transfer to N.D. Cal.

  • "While Defendants point to the Northern District of California as the location for a significant source of proof," Judge Love wrote, "they ignore the remaining sources of proof which originate from numerous locations." 

Realtime data love j1
Realtime Data (Love, J.)

  • At its heart, the motion asked Judge Love to evaluate which of the parties were more important, something he was not willing to do at this stage. 

  • In the end, he found that transfer would make things easier for some parties, but more difficult for others, and on balance "a transfer … would merely redistribute the inconvenience“.

Vasudevan software ward j
Vasudevan Software (Ward, J.)

  • In Vasudevan Software, Inc. v. Int'l. Business Machines Corp., 2009 WL 3784371 (E.D. Tex. Nov. 10, 2009) Judge Ward granted a motion to transfer venue of a patent infringement action to the N.D. Cal.

  • The parties were scattered across the nation (P in NC; Ds in New York and California) and the accused products had been designed and developed in California.

Vasudevan software ward j1
Vasudevan Software (Ward, J.)

  • Judge Ward found that the Eastern District of Texas had no connection with the suit and gave little weight to the fact that one of the accused infringers had a training facility in Plano, Texas where it trained personnel on using the accused product, and granted the motion to transfer.

Deep nine v mcafee clark j
Deep Nine v. McAfee (Clark, J.)

  • In Deep Nines, Inc. v. McAfee, Inc., 2009 WL 3784372 (E.D. Tex. Nov. 10, 2009), the court instructed that “It is clear that where there is no connection with Texas or the Eastern District of Texas, venue is improper.”

  • Although denying the motion to transfer in Deep Nines, the court arrived at its decision only after painstakingly identifying the numerous contacts the action had with the forum.

Deep nine v mcafee clark j1
Deep Nine v. McAfee (Clark, J.)

  • The court found that one accused infringer maintained an office in the Eastern Texas forum, and that witnesses within the court’s subpoena power resided in Dallas.

  • The court also noted that it had previously handled a related dispute between the parties and the terms of the settlement agreement, governed by Texas law, were at issue in the current case, which gave the court an advantage in applying Texas law over the proposed forum in Minnesota.

Acceleron davis j
Acceleron (Davis, J.)

  • In Acceleron, LLC v. Egenera, Inc., 2009 WL 1606961(Jun 09, 2009)Judge Davis granted a motion to dismiss for lack of personal jurisdiction (i.e. venue) as to one defendant because the plaintiff’s proof that the product was sold in the district was lacking.

  • Judge Davis denied the motion to transfer venue, but in doing so pointed up an issue dealing with sources of proof.

Acceleron davis j1
Acceleron (Davis, J.)

  • “Despite technological advances that certainly lighten the relative inconvenience of transporting large amounts of documents across the country, this factor is still a part of the transfer analysis. In re Volkswagen II, 545 F.3d at 316. Therefore, courts have analyzed this factor in light of the fictionthat voluminous documents must be transported from their physical location (supposing that electronically stored documents are, in fact, physical) to the trial venue. (Emphasis added).

Aloft media love j
Aloft Media (Love, J.)

  • In Aloft Media, LLC v. Yahoo!, Inc., 2009 WL 1650480 (E.D.Tex., June 10, 2009)Judge Love also addressed the issue of whether the nature of the evidence (physical or electronic) matters when determining convenience. He noted that the Federal Circuit in Genentech criticized the distinction (citing In re VW) and eventually concluded that the distinction was now “inappropriate under controlling precedent.”

Issue sources of evidence
Issue: Sources of Evidence

  • Judges may now differ on whether the nature of the evidence (physical or electronic) matters when determining convenience. VW and TS Tech dealt only with physical evidence, not electronic, but Genentech criticized any approach that rendered this factor “superfluous.”

  • Cases seem to indicate that all evidence must be considered as if physical. Thus the inconvenience may not actually exist, but must be deemed to.

  • “De facto” and “de jure” inconvenience.

Issue sever and transfer
Issue: Sever and Transfer?

  • In Sipco, LLC v., Inc. et al (2-08-cv-00359) (June 4, 2009), Judge Folsom denied a motion to sever & transfer.

  • "Defendants cannot argue that transfer of this case is appropriate for all parties because both the Plaintiff and multiple Defendants have offices in [Texas]. Instead, [defendants] separately ask to be severed from this action and transferred to different districts.

Issue sever and transfer1
Issue: Sever and Transfer?

  • Citing the Federal Circuit’s statement that In re VW IV that “the existence of multiple lawsuits involving the same issues is a paramount consideration when determining whether a transfer is in the interest of justice” (emphasis his) the Court held “Defendants' request would create simultaneous proceedings on the same patents and related products in three district courts.... such would be unnecessarily wasteful of the court system's time, energy, and money."

Issue sever and transfer2
Issue: Sever and Transfer?

  • But, in Balthasar Online, Inc. v. Network Solutions, LLC, 2009 WL 2952230 (E.D. Tex. Sept. 15, 2009) the patentee sued several accused infringers who resided in California, and some who resided elsewhere.

  • After the accused infringers moved to transfer, the patentee amended its complaint to add additional accused infringers, including some who resided in the Eastern District of Texas.

Issue sever and transfer3
Issue: Sever and Transfer?

  • In considering the transfer motion, Judge Folsom determined that the Texas defendants were small businesses who were not major players in the accused infringement.

  • Accordingly, the court severed the Texas defendants from the case, and stayed the infringement claims against them. It then granted the accused infringers’ motion to transfer the case to California.


  • “Clearly more convenient” test results in difference between “regional” and “national” cases

    • MHL Tekcontinues the approach endorsed by Federal Circuit opinions such as the Network-1 and In re Telular of keeping “national” cases.

    • Odom v. Microsoft and PartsRiver continue the approach endorsed by the Federal Circuit in In re TS Tech and In re Genentechof transferring cases where the parties (or at least the defendants) are closely grouped geographically.


  • Prior litigation still frequently results in transfer

    • Invitrogen I continues the line of cases transferring cases where prior litigation raises issues of judicial economy, endorsed by the Federal Circuit in In re VWIII and In re VW IV)

  • Transfer is still common where no infringing activity in the district is shown.

    • Fifth Generation and Acceleron continue the line of cases transferring (or dismissing) where no infringing activity in the district is shown.


  • The Eastern District judges are uniformly looking to see whether the proposed transferee forum is “clearly more convenient”.

  • Transfers are now easier to obtain in some cases, primarily cases with fewer defendants which are geographically clustered, but more difficult in cases with a large number of defendantsor witnesses which are spread throughout the nation or world.

  • Analysis requiresfacts re: witnesses and documents and quantitative analysis of convenience.

  • Court no longer permitted to engage in a qualitative analysis ,or distinguish between“defacto” and “de jure” inconvenience.


  • The appellate caselaw is not friendly to plaintiffs, but it has created numerous new opportunities for both parties to better their venue facts by, for example, adding parties or witnesses or documents to make a showing that a proposed transferee forum is “clearly more convenient” easier or more difficult.

  • The extent to which courts will recognize these opportunities is the next frontier in venue law.

More from the federal circuit
More from the Federal Circuit…

In re Hoffman-La RocheIn re NintendoIn re Vtech

In re hoffman laroche
In re Hoffman-LaRoche

  • In In re Hoffman-LaRoche, Inc., ____ F.3d ____, 2009 WL 4281965 (Fed. Cir., Dec. 2, 2009) the Federal Circuit granted a mandamus reversing Judge Folsom’s denial of a venue motion in a case brought by a California plaintiff against the makers of Fuzeon, a HIV inhibitor drug.

  • Scientists at Duke Medical Center identified the drug’s composition and later formed a company called Trimeris to develop the compound into a possible HIV infection therapy.

In re hoffman laroche1
In re Hoffman-LaRoche

  • Plaintiff sued Trimeris and its commercial partners, the three Roche entities.

  • While the Federal Circuit noted that there were parties and witnesses across the country and indeed, the world, the Federal Circuit granted the mandamus finding that “there is stark contrast in relevance, convenience, and fairness between the two venues” noting that the accused drug was developed and tested within the Eastern District of North Carolina.

In re hoffman laroche2
In re Hoffman-LaRoche

  • In addition, the court noted that there appeared to be no connection between the case andthe Eastern District of Texas

  • It specifically rejected Novartis’ decision to convert approximately 75,000 pages of documents demonstrating conception and reduction of practice into electronic format and transfer them from California to its litigation office in Texas.

  • Notably, the Court did not consider the (original) location of the plaintiff’s documents in California.

In re hoffman laroche3
In re Hoffman-LaRoche

  • The Federal Circuit observed that the assertion that these documents are “Texas” documents is “a fiction which appears to have been created to manipulate the propriety of venue.”

  • The Federal Circuit also held that the district court gave too much weight to its ability to compel a Texas witness’s attendance at trial.

  • Finally, it held that the transferee forum’s local interest was “self-evident”.

In re nintendo
In re Nintendo

  • In In re Nintendo, Misc. No. 914 (Dec. 17, 2009), the Federal Circuit transferred the case to Washington state, where one of the two defendant, the U.S. subsidiary of a foreign entity (the other defendant), was located.

  • Federal Circuit did not consider location of Plaintiff’s documents (in Ohio and New York) in the analysis.

  • Decreased travel time from Japan to Washington as opposed to Texas for defendant supported transfer.

  • Contrast with Genentech– decreased travel time from Europe to Texas as opposed to California for plaintiff did not support transfer – only marginally less convenient.

Nintendo venue analysis
Nintendo Venue Analysis

  • Factors

    • Relative ease of access to sources of proof

    • Availability of compulsory process

    • Cost of attendance of willing witnesses

    • “All other practical problems”

    • Administrative difficulties/court congestion

    • Local interest in hearing localized controversies

    • Familiarity of forum with the law

    • Avoidance of conflicts of law / foreign law problems

Nintendo venue analysis1
Nintendo Venue Analysis

  • No finding that transferee court “clearly more convenient” but…

    • “no meaningful ties” to Texas

    • “central location” used (instead of analysis)

    • Too much weight to plaintiff’s choice of forum/too strict a standard

    • Witnesses closer to Washington. None in ED Texas

    • Only identified relevant documents in Washington and Japan. None in ED Texas

    • “Not a single relevant factor favoring the plaintiff’s chosen venue.”

  • FC says mandamus cannot be used as a substitute for the regular appeal process, but notes that regular appeal process does not provide an adequate remedy.

In re vtech
In re Vtech

  • In In re Vtech Communications, Misc. Docket No. 909 (Jan. 6, 2010) the Federal Circuit denied a petition for writ of mandamus directed at one of Judge Folsom's orders denying transfer. 

  • The opinion affirmed Judge Folsom's reliance in on his familiarity with the case (he had concluded the claims construction process) and faulted Vtech for not "actively and promptly" pursing the motion to transfer before the district court had invested considerable time and attention on discovery and completing the claims construction process. 

In re vtech1
In re Vtech

  • Unlike Genetechin which there were no Texas witnesses, here there was at least one nonparty witness who in the Eastern District of Texas. 

  • There was also a source of documents in San Antonio and some of the witnesses were in fact closer to Texas than to Oregon. 

  • The Court concluded that because "the facts are rationally capable of providing reasons for what the district court has done", mandamus should not issue, which would interfere with the approaching trial date.

Declaratory actions
Declaratory Actions

  • In Hewlett-Packard v Acceleron, 2209 WL 4432580 (Fed. Cir., Dec. 4, 2009) the Federal Circuit appears to have substantially lowered the bar for an accused infringer to obtain declaratory jurisdiction if the patentee is a licensing only patent holding company.

Declaratory actions1
Declaratory Actions

  • The patentee's sending of two letters identifying the patent and the relevant product, and requesting the accused infringer to agree to a confidentiality provision in a short response time, along with a refusal by the patentee to agree to the accused infringer's counter proposal of a stand-still agreement was enough to get declaratory jurisdiction.

Declaratory actions2
Declaratory Actions

  • This case may essentially eliminate pre-suit assertions of patent rights, since a plaintiff who contacts an accused infringer runs the risk of having a declaratory judgment suit filed in an unfriendly forum, and thus giving the infringer the ability to choose the forum.

Patent reform act
Patent Reform Act

  • Proposed Patent Reform Act addresses concerns about patent quality, the relationship of U.S. patents with the rest of the world’s patent systems, and the costs of patent litigation.

  • Deep divisions in the business community over portions of the bill.

  • Courts are clearly responding to legislative proposals with major changes in caselaw.

Patent reform act1
Patent Reform Act

  • Shortly after the 111th Congress convened in January 2009, the Patent Reform Act of 2009 was introduced in the Senate.

  • Initial versions of the legislation generally reflected the version which passed the House in September of 2007, but which never achieved sufficient consensus to reach the Senate floor.

  • The Senate sponsors quickly reached a compromise on major parts of the legislation in the spring of 2009.

Patent reform act2
Patent Reform Act

  • The Senate Judiciary committee approved a version of the bill in April, 2009, but it stalled when judicial nominations and health care reform began dominating the legislative landscape.

  • While the legislation has not yet been set for floor debate, backers hope to see the bill on the Senate floor in early 2010.

Patent reform act3
Patent Reform Act

  • As part of an overall compromise on many issues, the Senate Judiciary Committee has approved a version of patent legislation which with respect to venue contains only a provision drafted by Sen. John Cornyn (R-Tex.).

  • The Cornyn amendment essentially codifies the “clearly more convenient” test from In re Volkswagen IIc.

  • The legislation does not modify the general venue provision, or the patent venue provision.

Patent reform act4
Patent Reform Act

  • The actual language as passed by Senate Judiciary would amend 28 U.S.C. §1400 by adding at the end the following:

    • ‘‘(e) CHANGE OF VENUE.—For the convenience of parties and witnesses, in the interest of justice, a district court shall transfer any civil action arising under any Act of Congress relating to patents upon a showing that the transferee venue is clearly more convenient than the venue in which the civil action is pending.’’