Holding: When considering transfer of venue, a court should not give weight to a co-pending litigation involving the same patent when that litigation has been closed and involved no substantive filings at the time the motion to transfer is resolved.
Valtrus Innovations Ltd. brought suit against SAP in the Marshall Division of the Eastern District of Texas. SAP moved for intra-district transfer to the Sherman Division since SAP has an office in Sherman, a witness associated with the case resides in Sherman, and two SAP employees with relevant knowledge also live in Sherman. Valtrus argued that co-pending litigation in Marshall against AT&T involving one of the same asserted patents, weighed against transfer of this case.
The District Court denied the motion for transfer after considering the traditional transfer factors:
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 trial of a case easy, expeditious and inexpensive.
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 conflict of laws or in the application of foreign law.
The district court found that either Marshall or Sherman would be similarly convenient for most witnesses in the trial since most witnesses were located outside the United States. The district court also found that although the co-pending litigation with AT&T had been closed and that case did not include substantive filings, for the purpose of potential future efficiency this factor also weighed against transfer.
In response to the district court’s dismissal of its motion for transfer, SAP petitioned the Federal Circuit for a writ of mandamus seeking to compel the court to transfer the case from the Marshall district to the Sherman district. A petitioner seeking mandamus must show that (1) there are no other adequate means to attain the desired relief; (2) there is a clear and indisputable right to relief, and (3) that the writ is appropriate under the circumstances.
The Federal Circuit found that the district court erred in considering Valtrus’s separate AT&T litigation. The district court acknowledged that the AT&T litigation was closed and all defendants had been dismissed by the time the district court considered the motion for transfer. Further, no substantive considerations were made in that case that would lead to familiarity with the issues in the Marshall district. Once a co-pending litigation in which there was no substantive filings is dismissed, the case is irrelevant and should not be relied upon to deny transfer.
The Federal Circuit also found that the district court erred by considering the court congestion factor to weight against transfer solely on the basis that this case was “smoothly proceeding” to trial. The court congestion factor requires a consideration of whether there is an appreciable difference between two forums’ dockets. This factor should not simply look to whether a single court has the ability to set a court schedule.
Despite these errors, the Federal Circuit held that SAP did not show that Sherman would be a clearly more convenient forum than Marshall. SAP failed to identify specific evidence or unwilling witnesses in the Sherman division, and the SAP offices in Sherman had little connection to the case. Additionally, SAP did not show that Sherman was clearly more convenient for potential witnesses to the case. Mandamus is an extraordinary remedy and reviewed only for clear abuses of discretion that lead to patently erroneous results.
Federal Circuit Precedential 
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