Federal Circuit Orders Another Case Transferred Out of Texas

In re Hoffamann-La Roche


(Fed. Cir. 2009)(on writ of mandamus)

Novartis sued Roche and its partners in the Eastern District of Texas for infringement of its HIV treatment patent. After being denied by District Court Judge Folsom, Roche petitioned the Federal Circuit for a writ of Mandamus — asking the appellate court to order the case to be transferred to the Eastern District of North Carolina. Following its own TS Tech precedent as well as the 5th Circuit’s Volkswagen case, the Federal Circuit complied and has ordered the case transferred.

Under TS Tech, the appellate court will order a transfer on mandamus when the alternate forum is “clearly more convenient.” Here, the appellate court found that important sources of proof are found in North Carolina (the location where the accused drug was developed); that the trial would impact the ongoing reputation of North Carolina residents (Duke professors); and that several non-party witnesses would be within the subpoena power of the North Carolina court. At the same time, the appellate court saw “no connection between this case and the Eastern District of Texas except that in anticipation of this litigation, Novartis’ counsel in California converted into electronic format 75,000 pages of documents . . . and transferred them to the offices of its litigation counsel in Texas.” Although not completely disregarding these litigation-preparation activities, the appellate court clearly deemed them less important in the venue considerations.

15 thoughts on “Federal Circuit Orders Another Case Transferred Out of Texas

  1. 15

    Would the argument that the Texas Federal Courts are filled with the same beer swiggen, barbeque chompin, truck driven, Texas lovin redneck juries as the Texas States Courts hold any water?

  2. 14

    One argument that the appellate court may not be considering in transferring the case, is the influence that the place of manufacture, and the financial impact of the jobs being located in the same jurisdiction as the trial can have an impact on the jury due to friends and relatives associated with the company and the impact of the company moving out of the district can have on the local economy. Also, the volume of financially interested witnesses can work to tip the scales of justice in the wrong direction. The jurisdiction should be a neutral one such as the east district of Texas that may have specialized in patent related issues or the venue where the intellectual property was conceived “first to invent – the ones that didn’t receive the manufacturing jobs in their community”.

    Another solution would be to try the case in another jurisdiction outside a reasonable commuting distance to eliminate the influence of the economic impact area i.e. 100 miles plus.

  3. 13

    They have taken away one of the few legal playing playing field leveling methods available to the defeated inventors to get settlement from the financial giant corperations.

  4. 12

    “Don’t Mess with Texas” was an anti-littering campaign in the state in the 1980s. Somehow I don’t think it is really applicable here.

  5. 9

    “Seems like North Carolina or California is where this case should be ruled upon.”

    They said ‘California is the place you ought to be,’ so they loaded up the truck and moved to Beverly… Hills, that is…

  6. 8

    The reason the E.D.TX has become famous for forced venue tranfers is that they were previously famous for refusing transfers of any patent suit brought in the E.D. TX even if there was no relevence to E.D. TX.
    But trolls have come up with tactics to avoid such venue transfers, such as shell-corporation patent ownership transfers and/or “offices” located in E.D. TX. Or, better yet, suing many different defendants in a single action, so that there is no ONE better venue elsewhere to transfer the case to.

  7. 7

    “the appellate court clearly deemed them less important in the venue considerations”

    I don’t think this is a fair characterization. The FC seemed outright hostile to the litigation-preparation activities arguments.

  8. 5

    Novartis’ argument about keeping the case in TX b/c of the electronic documents should be adopted by textbooks and dictionaries as one of the definitions of “lame”.

  9. 3

    These cases rely heavily on fifth circuit law. It would be interesting to see cases from somewhere other than the Eastern District of Texas.

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