In re Genetech and Bigen Idec (CAFC 901)

Sanofi sued Genetech and Bigen for patent infringement in the Eastern District of Texas, the same day, Genetech and Bigen "filed a declaratory judgment action in the Northern District of California, seeking a declaration of invalidity and noninfringement of Sanofi's patents."

The petitioners filed a motion pursuant to 28 U.S.C. § 1404(a) to transfer the Texas case to the Northern District of California.

[T]he Eastern District of Texas denied petitioners' request to transfer.

Case law brass knuckles -

The writ of mandamus is available in extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 (Fed. Cir. 1998). A party seeking a writ bears the burden of proving that it has no other means of obtaining the relief desired, Mallard v. U.S. Dist. Court for S. Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right to issuance of the writ is "clear and indisputable," Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). The use of mandamus to correct a patently erroneous denial of transfer pursuant to § 1404(a) has been approved under the rulings of the Fifth Circuit in appropriate circumstances. See In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (issuing mandamus to transfer patent case out of the Eastern District of Texas where all identified witnesses and evidence were located in alternative venue); In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) (same).

The basic principles governing transfer of venue under the law of the Fifth Circuit are well settled and are not in dispute here. Pursuant to § 1404(a), "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to another district court or division where it might have been brought." 28 U.S.C. § 1404(a). A motion to transfer venue should be granted upon a showing that the transferee venue "is clearly more convenient" than the venue chosen by the plaintiff. Volkswagen, 545 F.3d at 315.

In assessing whether a defendant has met its burden of demonstrating the need to transfer, the Fifth Circuit applies the "public" and "private" factors for determining forum non conveniens. Volkswagen, 545 F.3d at 314 n.9. As we noted in TS Tech, the private interest factors include "(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious and inexpensive." 551 F.3d at 1319 (citing Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)). The public interest factors include "(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws [or in] the application of foreign law." TS Tech, 551 F.3d at 1319 (quoting Volkswagen, 545 F.3d at 315) (internal quotation marks omitted).

The circumstances -

In applying these factors, the district court stated that despite the presence of a substantial number of witnesses in the transferee venue and no witness in Texas, the cost of attendance for witnesses only slightly favored transfer. The court emphasized that the petitioners had not identified "key witnesses" within the transferee venue. The court further stated that the central location of the Eastern District of Texas was more convenient for the European witnesses and Sanofi as well as the identified witnesses in Iowa and the East Coast.

Harkening back to horse-and-buggy days, the brand-spanking new "100-mile" rule gets a transfer every time.

Because it generally becomes more inconvenient and costly for witnesses to attend trial the further they are away from home, the Fifth Circuit established the "100-mile" rule, which requires that "[w]hen the distance between an existing venue for trial of a matter and a proposed venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses increases in direct relationship to the additional distance to be traveled."

The petitioners identified at least ten witnesses within the Northern District of California, including at least three non-party witnesses who had knowledge of material facts relevant to the case... Although no witness resides in the Eastern District of Texas, the district court stated that this factor only "slightly" favored transfer.

And don't forget that transporting electronic documents involves heavy lifting. You have to hit the 'send' button on an email program.

Finally, the district court minimized the inconvenience of requiring the petitioners to transport their documents by noting that "[t]he notion that the physical location of some relevant documents should play a substantial role in the venue analysis is somewhat antiquated in the era of electronic storage and transmission." Sanofi-Aventis, slip op. at 11.

Keeping this case in the Eastern District of Texas will impose a significant and unnecessary burden on the petitioners to transport documents that would not be incurred if the case were to proceed in the Northern District of California. Furthermore, because the documents housed in Europe and Washington, D.C. will need to be transported in any event, it is only slightly more inconvenient or costly to require the transportation of those materials to California than Texas. Thus, this factor weighs in favor of transfer.

Court congestion is "speculative." In other words, this factor doesn't really count.

To the extent that court congestion is relevant, the speed with which a case can come to trial and be resolved may be a factor. See Gates Learjet Corp. v. Jensen, 743 F.2d 1325, 1337 (9th Cir. 1984) ("[T]he real issue is not whether [transfer] will reduce a court's congestion but whether a trial may be speedier in another court because of its less crowded docket."). We do not disturb the district court's suggestion that it could dispose of the case more quickly than if the case was transferred to the Northern District of California. We note that this factor appears to be the most speculative, see Collins v. Am. Auto. Ins. Co., 230 F.2d 416, 419 (2d Cir. 1956), and case-disposition statistics may not always tell the whole story. Without attempting to predict how this case would be resolved and which court might resolve it more quickly, we merely note that when, as here, several relevant factors weigh in favor of transfer and others are neutral, then the speed of the transferee district court should not alone outweigh all of those other factors.

Case transferred.