Transfer on Mandamus

By Dennis Crouch

Since its 2008 TS Tech decision, the Federal Circuit has repeatedly received Mandamus requests to force transfer of patent infringement lawsuits – usually out of the Eastern District of Texas and – into other, more convenient, districts. The statute, 28 U.S.C. § 1404(a), provides district court with discretion to transfer a lawsuit to another district “for the convenience of parties and witnesses [and] in the interest of justice.” Although the transfer decision is within the district court’s discretion, TS Tech and its progeny have indicated that a court abuses that discretion by unreasonably refusing to transfer a case. Because transfer of venue is not a question of patent law, the Federal Circuit purports to follow regional circuit law – primarily that of the 5th Circuit. See In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Nintendo, Co. Ltd., 589 F.3d 1194 (Fed. Cir. 2009); In re Genentech Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008); accord In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc). A key element for successful motions to transfer is that the movant needs to show both that the current venue is poor that the proposed venue is much better.

The Federal Circuit just released three additional mandamus decisions, denying two and granting one. In re Altair Engineering (Fed. Cir. 2014) (mandamus motion to transfer denied); In re Groupon (Fed. Cir. 2014) (mandamus motion to transfer denied); In re WMS Gaming (Fed. Cir. 2014) (mandamus motion to transfer granted). In the past, venue transfer motions have seemed quite formalistic without really reaching the issues of justice and convenience. These opinions suggest to me that the court has improved its jurisprudence on this point:

In Altair, the petitioner asked the court to move the case against Uniloc from Texas to Michigan. In denying the petition, the Federal Circuit found it relevant that the Texas court had seen the same patent in two other cases – creating significant judicial economies. In addition, some of the relevant witnesses were also located near the Texas court. Thus, although more relevant evidence was sited in Michigan, the district court did not abuse its discretion in denying the transfer motion.

In Groupon, the court also refused to order transfer out of the Eastern District of Texas. In this case, the patentee – Blue Calypso is located in Texas and that was the site of the invention and the home of the key inventor along with all of its documents. The fact that Groupon is based in Illinois does not mean that the case should be transferred to Illinois.

Finally, in WMS Gaming, the Federal Circuit ordered the case moved from the Southern District of Mississippi to Northern District of Illinois. In the case, the patentee (MTG Gaming) sued WMS and another gambling-machine manufacturer as well as several casinos that operate in Mississippi, including MGM Resorts and Caesar’s Entertainment. The district court stayed the casino lawsuits and severed the suit involving the other manufacturer. With WMS standing alone, the Illinois venue appeared much better since it was the base of operations of the accused infringer and the patentee has no connections on its own to the Southern District of Mississippi. In addition, the Federal Circuit found that no relevant evidence or witnesses were located in Mississippi.

13 thoughts on “Transfer on Mandamus

    1. Is this attorneys who really cannot understand the plain language of “Section 314(d)’s broad declaration that the Director’s decision “whether to
      institute an inter partes review under this section shall be final and nonappealable,” and/or clients that do not understand how to control frivolous litigation costs?

      1. Cur, the problem is that the trial and decision are about patentability and there is no clear right to appeal an institution decision.

        The problem I have with these three cases is that 315(b) is jurisdictional. Jurisdiction is always available grounds for review, even on appeal from a final decision on the merits. I daresay that the losing patent owner has a matter of constitutional right to challenge jurisdiction. I’d like to see the Solicitor’s brief on that.

        Besides, in resisting these district court and mandamus petitions, the Solicitor and the Justice Department have both argued that a institution decision, denying 315(b) rights, is appealable.

        1. “The problem I have with these three cases is that 315(b) is jurisdictional.”


          There is no problem in this regard as the Federal Circuit panel in all 3 cases considered whether they had jurisdiction of these appeals and ruled in the negative. 314(d) is clear (no appeals of decisions by the Director whether or not to institute inter partes review). Also, it’s within Congress’ Constitutional authority (see Article III, Section 2) to limit the scope of the Federal Circuit’s jurisdiction to hear such an appeal, including “not at all.”

    2. In the case of Proctor “trying” to reverse the Director’s decision to institute the IPR, it would seem to be the former. Except they probably challenged simply to delay the IPR and further drive up costs for the defendant.

    3. Whatever happened with that MCM case? link to

      The St. Jude opinion seems to leave the door open (for the moment) to a challenge based on something other than an appeal to reconsider the Director’s evaluation of the “reasonable likelihood of success” on the merits of the case, or (as in St. Jude) the Director’s determination that the petition for IPR wasn’t filed in a timely manner.

      In fact, the statute goes beyond merely omitting, and
      underscoring through its structure the omission of, a right to appeal the non-institution decision. It contains a broadly worded bar on appeal. Under the title, “No Appeal,” Section 314(d) declares that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.” Id. § 314(d). That declaration may well preclude all review by any route, which we need not decide. It certainly bars
      an appeal of the non-institution decision here.

    4. Fyi, Ned, following up on our earlier discussion about the wage-fixing by Apple, Google, et al.:

      link to

      A class-action lawsuit against Google, Apple, Adobe, and Intel over how they recruited employees was scheduled to go to a jury trial at the end of next month. But it’s not going to happen. Court papers filed today indicate that the case has been settled. Reuters reports that the total settlement sum, which is still not in public court papers, will be $324 million.

      A New York Times report on this case, published Sunday, suggested that the parties were nearing settlement. That’s no surprise considering how potentially embarrassing a jury trial could have been for all of these companies.

  1. Not sure if this is the same junk that Blue Calypso is trying to assert in Bananaville, but gosh it really stinks:

    1. In a system comprising a network, a source communication device, a first destination communication device and an intermediary connected to the network, a method for providing advertising content to a first recipient associated with the first destination communication device and for incentivizing a subscriber associated with the source communication device comprising:

    receiving a first profile, at the intermediary, including a set of demographic requirements related to at least one advertiser of a group of advertisers;

    receiving a second profile, at the intermediary, including a set of demographic data related to the subscriber;

    deriving a match condition, by the intermediary, between the first profile and the second profile;

    determining, at the intermediary, if the subscriber is a first qualified subscriber based on the match condition;

    conditioning, at the intermediary, a set of endorsement opportunities on the match condition;

    transmitting a incentive program to the first qualified subscriber, at the source communication device, for each endorsement opportunity of the set of endorsement opportunities;

    communicating the set of endorsement opportunities to the qualified subscriber at the source communication device;

    receiving, at the intermediary, a selection of at least one endorsement opportunity from the set of endorsement opportunities from the qualified subscriber;

    transmitting, from the intermediary, a first endorsement tag related to the at least one advertiser of the group of advertisers and linked with the advertising content;

    transmitting a first content communication between the first source communication device and the first destination communication device;

    transmitting the first endorsement tag from the source communication device to the destination communication device;
    receiving, at the intermediary, a signal from the destination communication device, through execution of the first endorsement tag, to transmit the advertising content;

    transmitting the advertising content to the destination communication device; and,

    incentivizing the first qualified subscriber according to the incentive program.

    Receiving, receiving, transmitting, “conditioning on” (LOL!!!), and “incentivizing” (*gag*).

    We have a broken patent system, folks. If we continue to let these bottom-feeding scum have their way, they’ll just keep protecting information content and abstract information processing steps with patents, whether that content is advertising content, medical diagnostic content, financial content, or any other content. This is a virtual playground for grifters and bottom-feeders who can’t innovate their way out of cardboard box but love to play patty-cake with our broken patent office.

  2. From the Altair opinion supporting the denial of transfer: Although the district court found that the sources of proof factor “slightly” favored transfer, it observed that the case against Altair was one of three then-pending cases* involving the same patent and plaintiffs, and “[k]eeping these copending cases will preserve time and resources for the parties and the Court,” while transfer would “duplicate efforts in multiple courts[.]”

    Interesting sleight-of-hand there. “Parties” should more accurately read “plaintiffs.”

    This business about “multiple pending suits” just encourages patentees to file multiple suits in that venue. The originally filed suits that were garbage can be gotten rid at the patentee’s whim. There’s a footnote in the Fed Circuits order: “While at the time of the original complaint twelve total cases involving the same plaintiffs and patent had been consolidated, nine cases had been dismissed when the district court issued its decision.” Why were those cases “dismissed”? That would seem relevant to determining whether this particular patentee was deserving of such coddling attention to its “time and resources.” What about the time and resources of the defendants who were dragged into Bananaville to talk about a junk patent with some bottom-feeding scumbags?

    In case anyone is wondering (highly doubtful), Uniloc is a quintessential troll who just last year saw their junk patent on a method of rounding numbers get tossed out of court:

    link to

    1. Yawn … more ranting from MM. One must wonder if he has clients — if he does, it doesn’t spend a lot of time doing their work.

    2. arstechnica…

      Nope, no ‘echo chamber effects present in where Malcolm grabs his soundbytes….

      /eye roll

  3. In Groupon, the court also refused to order transfer out of the Eastern District of Texas. In this case, the patentee – Blue Calypso is located in Texas and that was the site of the invention and the home of the key inventor along with all of its documents. The fact that Groupon is based in Illinois does not mean that the case should be transferred to Illinois.

    Nobody could have predicted that East Texas is crawling with patent trolls.

    What’s the “targeted advertising” junk patent at issue in this case? Anybody know?

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