by Dennis Crouch
In re VirtaMove, Corp., No. 2025-130 (Fed. Cir. Sept. 11, 2025) (Google case); In re VirtaMove, Corp., No. 2025-138 (Fed. Cir. Sept. 11, 2025) (Amazon case).
Federal Circuit has denied this pair of related mandamus actions. In both cases, the patentee VirtaMove challenged venue transfer orders moving its patent infringement suits from the Western District of Texas to the Northern District of California. As I discuss below, the non-precedential decisions have some interesting jurisdictional tension with recent Fifth Circuit law.
VirtaMove is a small Canadian software company holding patents on secure application containerization technology. VirtaMove sued Google LLC and Amazon Web Services in the Midland/Odessa Division of WDTX, alleging infringement of patents covering methods for migrating applications into portable, secure containers. Both defendants successfully moved to transfer under § 1404(a), with the district courts (Judge Counts in the Google case, Judge Albright in the Amazon case) finding that the Northern District of California was more convenient primarily due to the concentration of defendants’ engineers involved in developing the accused products in the San Francisco Bay Area. VirtaMove’s central argument on mandamus was that the district courts misapplied governing law by following Federal Circuit precedent rather than more recent Fifth Circuit authority that VirtaMove claimed established heightened standards for transfer.
28 U.S.C. § 1404(a) provides that "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought." I think of this as the "convenient forum rule" which is separate and distinct from the "proper" venue requirements of §§ 1391 and 1400(b). § 1404(a) allows courts to determine where the case should be tried for optimal convenience and judicial efficiency. Someone seeking to move a case from one location to another (or as here move-it-back) bears the burden of demonstrating that the proposed transferee forum is "clearly more convenient" than the current venue by analyzing private interest factors (convenience of parties and witnesses, location of evidence, costs of litigation) and public interest factors (administrative difficulties, court congestion, local interest in deciding local controversies, and familiarity with governing law). These factors are not found in the statute, but rather are derived from a variety of precedent.
The Clash Between Circuit Approaches
VirtaMove’s mandamus strategy centered on arguing that recent Fifth Circuit decisions fundamentally altered the burden of proof for § 1404(a) transfers in ways that the Western District of Texas had failed to apply. See In re Clarke, 94 F.4th 502 (5th Cir. 2024); In re TikTok, Inc., 85 F.4th 352 (5th Cir. 2023).
The Federal Circuit exercises exclusive appellate jurisdiction over patent infringement cases. But, for non-patent issues arising within those cases, it applies the law of the regional circuit where the district court sits rather than developing its own precedent. Since venue transfer under § 1404(a) is a general procedure issue unrelated to patent law, the Federal Circuit applies regional regional circuit law. However, this creates a jurisprudential peculiarity: because patent cases are appealed exclusively to the Federal Circuit rather than to regional circuits, the Fifth Circuit does not develop § 1404(a) precedent in the patent context, leaving the Federal Circuit to interpret and apply Fifth Circuit transfer law without substantial guidance from the Fifth Circuit itself about how that law should operate in patent disputes.
The Fifth Circuit’s Clarke decision arose from a regulatory dispute involving PredictIt, an online platform operated by Victoria University of Wellington (NZ) that allowed users to trade on predicted outcomes of political events. This business has some securities law concerns. After operating under a 2014 CFTC “no-action” letter, the agency rescinded that letter in August 2022, directing that all contracts be liquidated by February 2023. Various PredictIt users, including five Austin-based traders led by Kevin Clarke, sued the CFTC in the Western District of Texas, alleging the agency acted arbitrarily and capriciously under the Administrative Procedure Act. The CFTC moved to transfer the case to the District of Columbia, and the district court granted the motion primarily based on court congestion (noting its own delays in ruling on preliminary injunction and transfer motions) and local interest factors (emphasizing that two entity plaintiffs were based in D.C. and would suffer greater economic harm than individual Austin-based traders).
The Fifth Circuit granted mandamus relief, finding the district court clearly abused its discretion by transferring the case essentially because of court congestion alone. Most significantly, the court clarified the burden of proof required under Defense Distributed v. Bruck, 30 F.4th 414 (5th Cir. 2022), establishing that to show “good cause” for transfer under 28 U.S.C. § 1404(a), a movant must demonstrate both “(1) that the marginal gain in convenience will be significant, and (2) that its evidence makes it plainly obvious—i.e., clearly demonstrated—that those marginal gains will actually materialize in the transferee venue.” The court emphasized that “a mere preponderance of the evidence is insufficient” and that the standard “is not met if the movant merely shows that the transferee venue is more likely than not to be more convenient.” This “actually materialize” requirement seems to represent a heightened evidentiary standard that demands concrete evidence of convenience benefits rather than speculative advantages, rejecting the notion that transfer motions can succeed based on theoretical or assumed improvements in convenience factors.
Under VirtaMove’s reading of Clarke, a transfer movant must prove that claimed convenience benefits “will actually materialize,” requiring early identification of specific witnesses who will testify rather than merely showing that potential witnesses possess relevant information. This contrasted with the approach in Federal Circuit cases like In re SAP America, Inc., 133 F.4th 1370 (Fed. Cir. 2025), which VirtaMove argued set a lower bar.
The Federal Circuit firmly rejected VirtaMove’s interpretation of Clarke, finding that VirtaMove had fundamentally misread holding. While VirtaMove argued that Clarke required Google to prove at the early litigation stages that it would “actually” call specific witnesses at trial, the Federal Circuit clarified that Clarke’s “actually materialize” standard applies to the overall showing that marginal gains in convenience will be significant—not to proving that individual witnesses will definitely testify. Moreover, the Federal Circuit noted that VirtaMove’s reading ignored controlling en banc Fifth Circuit precedent in Volkswagen, explicitly rejecting the argument that parties must identify what witnesses they would actually call at trial and the specific testimony they would provide. In essence, the Federal Circuit treated Clarke as establishing a heightened standard for the overall transfer determination while maintaining that individual factor analysis—such as witness convenience—does not require concrete proof of which witnesses will ultimately testify.
Although you didn’t ask for it, I believe the Federal Circuit is mostly correct with its doctrinal analysis. Particularly, the court here correctly identifies that Clarke‘s “actually materialize” language operates at the macro level – requiring proof that overall marginal convenience gains will materialize in the transferee venue – and not necessarily requiring proof that each and every pro-transfer argument will actually materialize. And, the court is also correct that the seemingly still-binding en banc Volkswagen decision explicitly rejected requiring parties to “identify what witnesses they would actually be calling at trial and the specific testimony they would provide.”
But, the Federal Circuit decision here fails to actually content with the overall rigor seemingly required by Clarke. The Clarke panel wanted more than speculative assertions about convenience, and the VirtaMove court could have actually explained what level of specificity IS required.
The 100-Mile Rule and Geographic Reality
VirtaMove’s second major argument involved the Fifth Circuit’s “100-mile rule,” which provides that witness convenience increases in direct relationship to additional travel distance when venues are more than 100 miles apart. VirtaMove argued that its witnesses in Eastern Canada and the U.S. East Coast were significantly closer to Texas than California, and that the district courts erred by finding this factor neutral simply because all witnesses would need to travel substantial distances regardless of venue.
The Federal Circuit acknowledged the 100-mile rule but emphasized that it “has never suggested, let alone held, that a district court must ignore common-sense and require all witnesses travel a significant distance when transfer would allow a significant number of witnesses to testify near home.”