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Fed. Cir. denies mandamus in EDTX venue dispute

On May 5th, the Federal Circuit denied Microsoft’s mandamus petition to force the transfer of a case filed by PersonalWeb Technologies, LLC against it in the Eastern District of Texas. Microsoft asserted that District Court Judge Leonard Davis abused his discretion in denying the transfer where a similar request by Apple resulted in the transfer of a case over the same patents.

Writing for the three judge panel of Judges Lourie, Dyk and Reyna, Judge Lourie explained in the order:

Although the question of transfer in this case is close, we cannot say that the district court’s determination amounted to a clear abuse of discretion. . . . Deference as to the proper administration of justice is particularly appropriate in this type of circumstance, where the trial court is “familiar with [an] . . . asserted patent and the related technology . . . coupled with the fact there is co-pending litigation before the trial court involving the same patent and underlying technology” and, as the district court noted, Microsoft and Yahoo! plan on calling at least some of the same witnesses. In re Vistaprint Ltd., 628 F.3d 1342, 1347 (Fed. Cir. 2010); In re Volkswagen of Am., Inc., 566 F.3d 1349 (Fed. Cir. 2009); Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559 (Fed. Cir. 1997).

Among other influential elements in the analysis, the Court noted that: (i) “Microsoft’s accused technology apparently underlies at least one of Yahoo!’s products at issue.”; (ii) Microsoft contradicted itself on the question of judicial economy and efficiency by admitting these interests were served in light of its “indemnity relationship with defendant Yahoo!”; and (iii) Yahoo! did not file a petition seeking transfer.

Judge Lourie concluded as follows:

Although judicial economy cannot dominate the § 1404(a) analysis, which generally calls for transfer where the convenience factors strongly weigh in favor of the transferee forum, the district court’s conclusion did not rest entirely on judicial economy. It noted that any documentary sources of proof and employee witnesses of PersonalWeb would reside in the Eastern District of Texas. It further found that the Western District of Washington had no authority to compel a non-party witness to testify. Under these circumstances and the relatedness of the suits against Microsoft and Yahoo!, it is not entirely self-evident that the transferee venue is more convenient and that transfer would be in the interest of justice. We therefore cannot say that Microsoft has met the demanding standard for mandamus relief.

The order in the case, In re: Microsoft Corp., No. 14-00123, U.S. Court of Appeals for the Federal Circuit, is available HERE.

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