In re Telular Corporation
Court of Appeals for the Federal Circuit
decided on 2009-04-03 00:00:00
panel: Mayer, Schall, Moore,
Overview
In In re Telular Corporation (M-899), the Court of Appeals for the Federal Circuit denied a petition for a writ of mandamus to direct the Eastern District of Texas to transfer a patent infringement case to another district court. After making the obligatory mentions of the extraordinary nature of the writ of mandamus and the associated burden that petitioner must carry, the court explained that the fact that the plaintiff's choice of venue may have no more interest than any other venue does not, alone, necessitate transfer. Perhaps most interesting, the court distinguished In re TS Tech and In re Volkswagen of America, in which the court granted writs of mandamus to direct transfer of infringement actions out of the Eastern District of Texas.
Keywords
mandamus - The court denied mandamus relief where the district court weighed competing positions, which were reasonably supported by the facts, in making its determination regarding convenience of the chosen forum.
Detailed review
[1] MANDAMUS-DIRECTED TRANSFER - DISTINGUISHING TS TECH
While the court's opinion doesn't provide significant analysis of the distinction between the current case (mandamus denied) and In re TS Tech (mandamus granted), Judge Moore indicates that the existence of a "rational legal argument" supporting a district court's denial of transfer is key:
"Here, however, a rational legal argument exists in support of the trial court's ruling, and mandamus is inappropriate."
(citation omitted)
So what constitutes a rational legal argument? That will depend because, in reviewing denials of transfer, the court applies the law of the regional circuit in which the district court sits. The law of the Eastern District of Texas (the pro-patent-plaintiff "Rocket Docket") has developed, somewhat, in recent months thanks in large part to efforts of defendants trying to escape the patent plaintiff-friendly court.
According to the Federal Circuit:
"The Fifth Circuit applies the "public" and "private" factors for determining forum non conveniens when deciding a § 1404(a) venue transfer question. Volkswagen II, 545 F.3d at 314 n.9. 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. ß, 454 U.S. 235, 241 n.6 (1981). The "public" interest factors to be considered are: "(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." ß, 545 F.3d at 315."
In TS Tech, the additional distance, which equates to time and money, between the plaintiff's chosen forum and the locations of relevant witnesses and evidence weighed heavily in the analysis. These same factors played a role in In re Telular, but supported the opposite result because the plaintiff pointed out that the defendant had:
"at least two witnesses [that] reside in Atlanta, and any documents in the Atlanta office would need to be transported to the court in Illinois if the case was transferred."
Based on these facts, and the plaintiff's assertion that "it would be far more inconvenient for him to try his case in Illinois," the court concluded that "Telular has not shown that the district court has clearly abused its discretion."
What can we glean from these two cases? Not much other than the facts of each individual situation will control. It appears, though, that the presence of one or more defendant's witnesses, and documentary evidence, in a third jurisdiction which would require travel whether the case is transferred or not can be a powerful fact in Federal Circuit review of transfer denials under Fifth Circuit law.
The widespread reporting of the demise of the "Rocket Docket" following the court's decision in TS Tech may have been greatly exaggerated.
