In re Verizon (CAFC 956) precedential

Oklahoma's Red River Fiber Optic wanted to harass Verizon with 5,555,478. They went the patent mall in East Texas. Judge T. John Ward resisted losing the case to the Dallas court, where Verizon wanted transfer.

A motion to transfer under § 1404(a) calls upon the trial court to weigh a number of case-specific factors based on the individualized facts on record. See Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). Although a trial court has great discretion in these matters, mandamus may issue when the trial court's application of those factors creates a patently erroneous result. In re Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc); see also In re TS Tech USA Corp., 551 F.3d 1315, 1318-19 (Fed. Cir. 2008).

In Volkswagen, the Fifth Circuit sitting en banc granted mandamus and determined that a significant number of witnesses and parties were located within 100 miles of the Dallas Division and could be deposed and testify without significant travel or expense, while no witness or party was located within the Marshall Division. 545 F.3d at 316-17. The Fifth Circuit held that the trial court's denial of transfer was patently erroneous, in part because every witness would be required to expend significant time and cost to attend trial.

This case is in many respects analogous to Volkswagen. As in that case, there is a stark contrast in convenience and fairness with regard to the identified witnesses. It appears that many witnesses reside within 100 miles of the Dallas Division and would also be subject to the Northern District's subpoena powers. Meanwhile, it is undisputed that no witness resides within 100 miles of the Marshall Division. Thus, maintaining trial in the Marshall Division would require witnesses to undergo the cost, time, and expense of travel, which would be significantly reduced if this case was transferred to the Dallas Division.

The not-so-small irony here is that the Northern District of Texas is a qualified patent court.

Red River argued that East Texas was appropriate because it previously conducted claim construction of the patent-in-suit.

To interpret § 1404(a) to hold that any prior suit involving the same patent can override a compelling showing of transfer would be inconsistent with the policies underlying § 1404(a). We recently advised against such ironclad rules in In re Vistaprint Ltd., 628 F.3d 1342, 1347, n.3 (Fed. Cir. 2010) and we heed that advice on these facts. In Vistaprint, we stated:

Our holding today does not mean that, once a patent is litigated in a particular venue the patent owner will necessarily have a free pass to maintain all future litigation involving that patent in that venue. However, where, as here, the trial court performed a detailed analysis explaining that it is very familiar with the only asserted patent and the related technology, and where there is a co-pending litigation before the trial court involving the same patent-in-suit, and pertaining to the same underlying technology and accusing similar services, we cannot say the trial court clearly abused its discretion in denying transfer.

Id.

In Vistaprint, we denied mandamus to overturn a denial of transfer and determined that the district court properly considered both its previous experience construing claims of the patent at issue and co-pending litigation before the district court involving the same patent and underlying technology. In this case, there is no assertion that there is an additional pending lawsuit in the Eastern District involving the patent and technology. Absent that, we deem the Eastern District's previous claim construction in a case that settled more than five years before the filing of this lawsuit to be too tenuous a reason to support denial of transfer.

Case transferred (writ of mandamus granted).

Convenience is king. Patent cases are to be held local to either to the plaintiff's or defendant's principal place of business. Otherwise, the case will be transferred if the defendant squawks. And squawking is what litigation is all about.