Motions to Transfer After In re Genentech: The Effect of Federal Circuit Writs of Mandamus on Western District LitigationMarch 18, 2010
For nearly every plaintiff that is drawn to the Western District of Wisconsin, there is a defendant who would prefer to litigate somewhere else. Particularly in patent litigation, where venue is relatively flexible, a motion to transfer under Section 1404(a) is often a crucial turning point in the case. Accordingly, when the Federal Circuit granted two petitions for mandamus ordering the Eastern District of Texas to transfer patent cases, attorneys across the country took notice.2
But will these decisions affect transfer motions in the Western District? Chief Judge Crabb recently granted a motion to reconsider a previous denial of a section 1404(a) transfer after the petitioner cited one of them, In re Genentech. Judge Crabb's opinion analyzes Genentech, thus providing useful insight to the Western District's current approach to motions to transfer. But the most important lesson in the decision is that a successful motion requires thorough evidentiary support, especially concerning the location of third-party witnesses and documents.
Basic Principles of Section 1404(a) Transfers in the Seventh Circuit
Under 28 U.S.C. § 1404(a), "[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." The standards applicable to a motion to transfer are a matter of procedural law, thus determined under the law of the regional circuits. In the Seventh Circuit, four factors guide the exercise of discretion granted by section 1404(a): (1) the plaintiff's choice of forum; (2) the convenience to the parties; (3) the convenience to witnesses; and (4) the interests of justice.3 Seventh Circuit courts determine "in light of all the circumstances of the case" where deference is necessary and which factors are dispositive in establishing whether another forum is "clearly more convenient." 4
First, Seventh Circuit courts evaluate whether the plaintiff's choice of the Seventh Circuit deserves deference. A plaintiff's choice of forum is given significant deference if the plaintiff chooses to litigate in its home forum.5 Thus, if the plaintiff has significant ties to the district, this factor weighs against transfer. 6
Second, Seventh Circuit courts evaluate whether transfer would be more convenient to the parties. This factor focuses on the burden to the defendant because "[p]resumably, if plaintiff chose to file suit in [a Seventh Circuit district], it is willing to overlook any inconvenience associated with litigating in this forum."7 For example, if the defendant faces significant travel difficulty or has infrequent contact with the district, this factor weighs in favor of transfer. 8
Third, Seventh Circuit courts evaluate whether transfer will be more convenient to potential witnesses. A defendant seeking transfer must be prepared to "clearly specify the key witnesses to be called" and provide "document[s] containing facts tending to establish who (specifically) it planned to call or the materiality of that testimony."9
Fourth, Seventh Circuit courts evaluate whether transferring is in the interest of
justice. This catch-all factor considers docket speed, consolidation of related cases, maximization of judicial expertise, and protection of the forum's community interests.10 Although the interest of justice factor relates to "the efficient functioning of the courts, not to the merits of the underlying dispute," it is a fact-specific inquiry where the nature of dispute at issue is relevant.11 For example, in patent litigation, when parties are competitors and delay would decrease the value of the patent-in-suit, docket speed can be decisive.12 But docket speed, or lack thereof, is not enough to compel a transfer in the interest of justice when the balance of the other factors establishes that another forum is clearly more convenient.13
In re Genentech, Inc.: The Federal Circuit View
After the United States District Court for the Eastern District of Texas denied a section 1404(a) motion by defendants Genentech, Inc. and Biogen Idec Inc. to transfer their patent dispute with Sanofi-Aventis Deutschland GmbH, the defendants took the unusual step of petitioning the Federal Circuit for a writ of mandamus.14 The Federal Circuit granted the petition, ruling that the district court, "clearly abused its discretion in denying transfer of venue to the Northern District of California. . . ."15
The Eastern District had denied the motion because none of the California witnesses were "key witnesses," because Texas was geographically central to the witnesses and parties, and because plaintiff Sanofi may not have been subject to personal jurisdiction in California.16
The Federal Circuit disagreed, concluding first that the defendants had shown that the convenience to witness factor favored transfer.17 Genentech is a Delaware corporation with headquarters in San Francisco.18 Biogen is a Delaware corporation with a major facility in San Diego that worked on the allegedly infringing product.19 Genentech and Biogen identified several witnesses within the Northern District of California.20 The Eastern District determined that this was not sufficient because the witnesses were not "key witnesses." But the Federal Circuit ruled that the inconvenienced witnesses need not be "key witnesses" as long as they have knowledge of "relevant and material information at this point in the litigation."21
Second, the Federal Circuit ruled that the convenience to parties factor favored transfer. The Eastern District found that the Fifth Circuit's "100-mile" rule for determining cost of attendance for willing witnesses and parties made Texas an ideal "centralized location" for litigation between Sanofi, Genentech, and Biogen.22 The "100-mile" rule states that when the distance between an existing venue and a proposed venue is more than 100 miles, the inconvenience to witnesses factor increases in direct proportion to the additional distance to be travelled.23 The Federal Circuit ruled that "the 100-mile rule should not be rigidly applied such that it creates the result presented here. The witnesses from Europe will be required to travel a significant distance no matter where they testify."24
Third, the Federal Circuit held that Sanofi's challenge to jurisdiction in California was irrelevant to transfer analysis because "[t]here is no requirement under § 1404(a) that a transferee court have jurisdiction over the plaintiff."25 This directly overruled the Eastern District's determination that "the issue of whether personal jurisdiction exists [over Sanofi] in the Northern District of California declaratory judgment suit weighs heavily against transfer."26
AmTRAN Technology Co., Ltd., v. Funai Electric Co., Ltd.: The Western District View
Several weeks before the Federal Circuit decided In re Genentech, Judge Crabb had denied Funai's and Sony's motion to transfer a patent infringement case to the Northern District of California where a related case was pending.27 Funai and Sony then filed a motion for reconsideration, citing In re Genentech and presenting new evidence concerning the plaintiff's activities in California, witnesses and evidence in California, and the likely trial date in the related case.28
In the Court's initial denial of Funai and Sony's motion to transfer, Judge Crabb evaluated the four Seventh Circuit factors for transfer under section 1404(a).29 The Court determined that transfer would be somewhat more convenient for the parties, neutral for the witnesses, and not in the interest of justice.30 Specifically, the Court emphasized the "convenience to witnesses" factor and found that "defendants cannot establish the clear convenience of transfer simply by identifying the inconvenience to one named witness and other unnamed witnesses with unspecified knowledge of the patents."31 To demonstrate the convenience of a transfer, defendants are "required to clearly specify the key witnesses to be called" and provide "document[s] containing facts tending to establish who (specifically) it planned to call or the materiality of the testimony."32
Judge Crabb had also found that the interests of justice weighed against transfer because the docket moves slower in California.33 Although Judge Crabb noted that "[d]ocket speed alone is not sufficient to defeat a motion to transfer,"34 she found that docket speed was a sufficient reason to deny transfer because Funai and Sony had not established that another forum was more convenient.35
In support of reconsideration, Funai and Sony cited Genentech as persuasive authority because the facts in Genentech were similar to those of the case at hand.36 Like the Eastern District in Genentech, Judge Crabb had not been persuaded by significant inconvenience to material witnesses located in the transferee district.37 Also like the Eastern District, Judge Crabb relied on the speed of disposition statistics to determine that transfer was not in the interest of justice.38 But on the motion for reconsideration, Judge Crabb transferred the case.39
Judge Crabb's reconsideration opinion reviews Genentech, making two primary points. First, the Court distinguished Genentech because it applies Fifth Circuit motion-for-transfer law, which is "more extensive and differs somewhat from the factors enumerated by the Seventh Circuit."40 Whereas the Seventh Circuit standard comprehends a range of considerations under the flexible "interests of justice" factor, the Fifth Circuit sets out a more extensive set of particular factors and rules.41 Second, Judge Crabb explained that in Genentech the defendants had properly identified numerous material witnesses located in the Northern District of California.42 But in their original motion to transfer, Sony and Funai had not identified specific individuals or explained how their testimony was relevant.
Ultimately, Judge Crabb granted the motion for reconsideration because Sony and Funai presented new and more detailed evidence of the plaintiff's activities in California and of the third-party witnesses located in the Northern District of California, and the relevance of the third-party evidence, some of which had emerged after the original transfer motion in pleadings in the related case in California. In light of the connections to California firmly established on the motion for reconsideration, Judge Crabb determined that the docket speed of the Western District was no longer a decisive factor and granted the motion for transfer.
Judge Crabb's decision to transfer the AmTRAN case provides an informative view of the Court's response to the recent Federal Circuit decisions granting petitions for mandamus to transfer patent cases from the Eastern District of Texas. Those cases, including In re Genentech, have not made transfers of venue more likely in the Western District, which will continue to decide transfer motions according to Seventh Circuit standards. The real lesson of the AmTRAN case is that litigants should heed Heller Fin., Inc. v. Midwhey Powder Co., which requires that a transfer motion must contain specific -- and supported -- facts proving that another forum is clearly more convenient for the parties and especially third-party witnesses.43 A transfer motion that makes such a showing can overcome the speed of the docket in the Western District, which is a factor that often compels the denial of motions under section 1404(a).44
1 Summer Associate, J.D. Candidate, 2010, The University of Texas School of Law.
2 In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2208); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir., 2009).
3 Coffey v. Van Dorn Iron Works, 796 F.2d 217, 219-20 (7th Cir. 1986).
5 Piper Aircraft v. Reyno, 454 U.S. 235, 255-56 (1981).
7 Semiconductor Energy Laboratory Co., Ltd. v. Samsung Electronics Co., Ltd., No. 09-CV-1-BBC, 2009 WL 1615528, at *4 (W.D. Wis. June 9, 2009).
9 Generac Corp. v. Omni Energy Sys., 19 F. Supp. 2d 917, 923 (E.D. Wis. 1998) (quoting Heller Fin., Inc. v. Midwhey Powder Co., 883 F.2d 1286, 1293-94 (7th Cir. 1989)).
10 Coffey, 796 F.2d at 221.
12 Milwaukee Elec. Tool Corp. v. Black & Decker (N.A.), Inc., 392 F. Supp. 2d 1062, 1065 (W.D. Wis. 2005).
13 Leggett & Platt, Inc. v. Lozier, Inc., No. 04-C-0932-C, 2005 WL 1168360, at *2 (W.D. Wis. May, 17, 2005).
14 In re Genentech, 566 F.3d at 1341.
15 Id. at 1348.
16 Sanofi-Aventis Deutschland GmbH v. Genentech Inc., 607 F. Supp. 2d 769, 775-782 (E.D. Tex. 2009).
17 In re Genentech, 566 F.3d at 1338.
18 Sanofi-Aventis Deutschland, 607 F. Supp. 2d at 773.
21 In re Genentech, 566 F.3d at 1343 (citing In re Volkswagen of America, Inc., 545 F.3d 304, 317 n.12 (5th Cir. 2008)).
22 Sanofi-Aventis Deutschland, 607 F. Supp. 2d at 779.
23 In re Genentech, 566 F.3d at 1343.
24 Id. at 1344.
25 Id. at 1346.
26 Sanofi-Aventis Deutschland, 607 F. Supp. 2d at 778.
27 AmTran Technology Co., Ltd. v. Funai Elec. Co., Ltd., No. 08-CV-740-BBC, 2009 WL 1139591 (W.D. Wis. April 27, 2009) (hereinafter Motion to Transfer).
28 AmTran Technology Co., Ltd. v. Funai Elec. Co., Ltd., No. 08-CV-740-BBC, 2009 WL 2341555 (W.D. Wis. July 29, 2009) (hereinafter Motion to Reconsider).
29 Motion to Transfer.
30 Id. at *4-6.
31 Id. at *5.
32 Id. (citing Generac Corp. v. Omni Energy Sys., Inc., 19 F. Supp.2d 917, 923 (E.D. Wis. 1998)(quotations omitted)).
33 Motion to Transfer at *6.
36 Motion to Reconsider at *1.
37 Motion to Transfer at *5.
38 Id. at *5.
39 Motion to Reconsider at *1.
40 Id at *3.
41 Id. (Comparing Coffey and Volkswagen).
42 Id. at *4-5
43 883 F.2d 1286, 1293-94 (7th Cir. 1989).
44 Milwaukee Elec. Tool Corp. 392 F. Supp. 2d at 1065.