Motion to Dismiss Format for the State of Tennessee

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Motion to Dismiss Format for the State of Tennessee Powered By Docstoc
					Austin Intellectual Property Law
February 16 Meeting and Luncheon CLE
Austin, Texas
February 16, 2010

Michael C. Smith
Siebman, Burg, Phillips & Smith, LLP
Marshall, Texas
                                       The 1901 Harrison County Courthouse (restored 2009)                                                    Marshall, Texas                                               J. Riely Gordon, architect
“All too often, patent infringement suits begin
with a battle over where the war is to be
     Wydick, Venue in Actions for Patent Infringement,
                           25 Stan. L. Rev. 551 (1973).
 1994-1995 – state court venue limited; tort
 Late 1990’s – personal injury cases begin to be
  filed in large numbers in Eastern District
 2000-2004 – mandamus petitions on venue
  rulings begin to be filed in Fifth Circuit – all
  denied prior to In re Horseshoe and In re
  Volkswagen I, which order cases transferred.
 2008 – In re VW II; numerous product liability
  cases transferred; new filings drop as well - cases
  shift back to Dallas and Houston state courts.
   1992 – first patent case filed in Marshall, TI v. Micron.
   1990’s – Texas Instruments files numerous patent
    cases in Marshall – ’99 trial in TI v. Hyundai
   2000 – new Marshall federal judge T. John Ward
    adopts local patent rules; filings start going up.
   2003-2006 – plaintiffs win 18 straight jury verdicts
   2007-2008 – ED Texas #1 district in nation for patent
    filings; win rate drops to 33% in 2007; time to trial in
    Marshall slows to three years as result of new filings.
   2009 – win rate 50-60%; filings drop to 2d in nation;
    late in year time to trial begins shorten in Marshall.
   2010 – defs win two of first three cases tried.
Patent infringement cases may be filed in the
 judicial district: (1) where the defendant resides;
 or (2) where the defendant has committed acts of
 infringement and has a regular and established
 place of business. 28 U.S.C. § 1400(b)
 A defendant that is a corporation “shall be
 deemed to reside in any judicial district in which it
 is subject to personal jurisdiction at the time the
 action is commenced.” 28 U.S.C. § 1391.
The Federal Circuit held in VE Holding Corp. v.
 Johnson Gas Appliance Co., 917 F.2d 1574, 1583-
 84 (Fed.Cir.1990) that the residence of a
 corporate defendant in patent infringement
 actions is to be analyzed under the general
 venue provisions of § 1391(c).
So, personal jurisdiction = resides = venue.
In re TS Tech (12/2008)
In re Telular
In re Genentech
In re Volkswagen (IV)
In re Hoffman-La Roche
In re Nintendo
In re Vtech (1/2010)
                          (red = granted ; white = denied)
Product liability case arising out of a collision in
In re VW IIc eliminated the plaintiff’s choice of forum
 as a separate factor, holding that it is reflected in
 the defendant’s burden of proof.
The en banc panel held that
   “when the movant … demonstrates that the
    transfer of venue is clearly more convenient . . .
    the district court should grant the transfer.”
    (Emphasis added).
   Factors
       Relative ease of access to sources of proof
       Availability of compulsory process
       Cost of attendance of willing witnesses
       “All other practical problems”
       Administrative difficulties/court congestion
       Local interest in hearing localized controversies
       Familiarity of forum with the law
       Avoidance of conflicts of law / foreign law problems
   Must transfer if “clearly more convenient”
 In In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008)
  the court granted mandamus ordering Judge Ward to
  transfer a case to Ohio.
 The plaintiff resided in Michigan, and the accused
  infringers, three related corporations, resided in Ohio
  and nearby Canada.
 Applying In re Volkswagen the Federal Circuit found
  that the district court, by committing four legal errors
  in its analysis of the transfer issue, had “clearly abused
  its discretion.”
 Note: In re VW came out after district court’s opinion –
  no remand for consideration, and FC denied In re VW
  changed the law re: venue at all.
   Key holding was the extension from products
    cases (in which the sale of the product was not
    the accused activity) to patent cases (in which it
    is) of the Fifth Circuit’s holding that sales in the
    district did not give the forum court a “local
   Whenever the interest the forum court has is the
    same interest any district would have, that
    interest is to be disregarded. Only particularized
    local interests are to be considered.
   Plaintiff, a Dallas resident, filed a patent case
    against several security companies.
   Telular, sought transfer to Chicago, where its
    head offices were located (its monitoring
    offices were in Atlanta).
   Judge Ward denied the motion in this case,
    and several months later In re TS Tech
    issued. Several weeks after that, defendant
    Telular filed a petition for writ of mandamus,
    citing In re TS Tech.
   The Federal Circuit observed that "Telular
    faces an extraordinary burden in this case.
    First, the equities lie considerably against
    granting mandamus" because, as the Court
    noted, Telular waited five months after the
    court's ruling to seek mandamus - unlike TS
    Tech had done.
   “[M]andamus relief in § 1404(a) cases is only
    permitted when the petitioner is able to
    demonstrate that the denial of transfer was a
    "clear" abuse of discretion such that refusing
    transfer produced a "patently erroneous
    result." A suggestion that the district court
    abused its discretion, which might warrant
    reversal on a direct appeal, is not a sufficient
    showing to receive mandamus relief.”
   “Unless it is clear that the facts and
    circumstances are without any basis for a
    judgment of discretion, we will not proceed
    further in a mandamus petition to examine
    the district court's decision. In other words,
    we will deny a petition "[i]f the facts and
    circumstances are rationally capable of
    providing reasons for what the district court
    has done.””
   “The Eastern District of Texas may have no
    more of an interest in this case than any other
    district in which Telular's systems are
    ultimately installed. This alone, however,
    does not mean that Telular's alternative
    choice of venue, in this case the Northern
    District of Illinois, is clearly more convenient. .
    . .” (Emphasis added).
   Contrast to later 2009 FC venue opinions.
   In In re Volkswagen, 566 F.3d 1349 (Fed. Cir.
    2009), arising out of the MHL Tek litigation,
    the Federal Circuit denied a petition seeking
    to mandamus Judge Ward's denial of a
    motion to transfer the case to Michigan.
   The Federal Circuit noted that "[i]n this case,
    the existence of multiple lawsuits involving
    the same issues is a paramount consideration
    when determining whether a transfer is in the
    interest of justice”. (Emphasis added).
   In In re Genentech, 566 F.3d 1338 (Fed. Cir.
    2009) arose out of the Sanofi-Aventis
    litigation in Judge Ron Clark's court in which a
    German plaintiff sued two California
   In Sanofi-Aventis Deutschland GmbH v.
    Genentech, Inc., 2009 WL 764304 (E.D.Tex.
    Mar 19, 2009) Judge Clark concluded that on
    balance, the factors favored retaining the
    case in the Eastern District of Texas.
   Key to the court’s decision were the facts that:
     Defendant . . . has, in the recent past, found it
      convenient to avail itself of this forum as a Plaintiff;
     the question of whether [plaintiff] is subject to personal
      jurisdiction in the Northern District
     one of the defendants has no presence … in the
      Northern District [of California];
     litigation in California would be more expensive and
      quite possibly more time-consuming…”
   In reversing, the Federal Circuit observed that
    California was only marginally less convenient
    than Texas for the foreign plaintiff, and declined to
    allow the Texas court's “central location” to trump
    the fact that the California court was "clearly more
    convenient" for the parties and witnesses in this
   Decreased travel time from Europe to Texas as
    opposed to California did not support transfer.
   Genentech rejects a simply “central location”
    argument divorced from analysis that shows
    the forum is actually more geographically
    convenient under the facts of the case.
   Subsequent district court cases continue to
    use this phrase, but as a shorthand for
    concluding that a mileage analysis shows that
    the forum court is more convenient.
   The Federal Circuit also rejected the court's
    assessment that the petitioners failed to
    identify any “key witnesses” within the
    venue, holding that “[r]equiring a defendant
    to show that the potential witness has more
    than relevant and material information at this
    point in the litigation or risk facing denial of
    transfer on that basis is unnecessary.”
   Major change from prior Texas caselaw
   Genentech essentially endorsed the “battle of
    the numbers” approach where the parties
    inflate their witness lists in order to show that
    a particular forum is more convenient, and
    eliminated the court’s ability to cull these lists
    to those witnesses who were truly necessary
    and not merely cumulative.
   Will parties now list witnesses to influence
    the venue analysis?
   The Federal Circuit also noted that in patent
    infringement cases, the bulk of the relevant
    documents usually comes from the infringer,
    and the place where they are kept, i.e. the
    defendant’s location, therefore weighs in
    favor of transfer to that location.
   Important to identify the location of all
    relevant documents.
   Based on opinions posted in Westlaw, the
    court only granted four transfer motions in
    2008, and each of these motions was granted
    to achieve judicial economy as the transferee
    court had a pending related action.
   As of the end of November in 2009, the
    Eastern District had granted at least fourteen
    transfer orders.
   In Odom v. Microsoft, 6:08cv331 (Jan. 30,
    2009) Judge John Love granted the
    Defendant's motion to transfer venue to
   Plaintiff is an Oregon inventor (Patent Hawk)
    claiming that Microsoft infringes his patent
    via its Office software. The case also involves
    Odom's relationship with Microsoft and the
    Klarquist Sparkman firm in Oregon prior to
    suit being filed.
   Judge Love observed that "[t]his is not a case
    where witnesses are spread out all over the
    country or the world" citing Network-1 Sec.
    Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d
    795, 800, mandamus denied, 183 Fed. Appx.
    967 (Fed. Cir. 2006) (finding this factor neutral
    where witnesses were located in Connecticut,
    New York, California, Taiwan, and Israel).
   This case, Judge Love wrote, was in fact quite
    similar to the facts in TS Tech, not Network-1.
   Due to the extensive ties Oregon had to the
    underlying case via the contracts, etc., Judge
    Love concluded that there was in fact a local
    interest in the case in Oregon, and none
    (beyond the sale of infringing products which
    all districts likely shared) in Texas.
   Judge Love also discounted in part the
    sources of proof factor because unlike VW
    and TS Tech, the proof was likely to be
    electronic, not physical. See later cases.
   Judge Folsom transferred PartsRiver v.
    Shopzilla, 2:07cv440 by a California patent
    owner against six California defendants (with
    a seventh in Washington) to California,
    finding that "based on the regional nature of
    this case, that the Northern District of
    California is clearly more convenient to the
    parties.” (Emphasis added).
 In Novartis Vaccines & Diagnostics v. Hoffman-La
  Roche, 2009 WL 349760 (Feb. 3, 2009) Judge Folsom
  denied a motion to transfer the case from Texas to
  North Carolina.
 He found that the parties and the sources of proof in
  this case were distributed nationwide, so a transfer
  from Texas to North Carolina would actually
  increase travel an additional 800 miles on average,
  and substantially inconvenience the West Coast
   Judge Folsom concluded that the case was
    distinguishable from VW and TS Tech, in both
    of which the physical evidence was confined
    to a limited region.
   He did not rely on the plaintiff’s claim that its
    documents were on a server in Marshall.
   This opinion was reversed in In re Hoffman-
   Judge Love granted one motion to transfer
    and denied another in two cases filed by a
    plaintiff against the same defendant.
   In Invitrogen Corp. v. General Elec. Co., 2009
    WL 331891(E.D.Tex. Feb 09, 2009) (Invitrogen
    I) GE sought transfer to Maryland, where half
    of the patents asserted in the Texas case had
    been asserted by the plaintiff's predecessor in
    interest against GE over an 11 year period.
   Judge Love found persuasive GE's claim that
    this case should be transferred to Maryland in
    order to preserve judicial economy, noting
    that there was "substantial overlap" between
    the Texas case and the now-settled Maryland
    case in both the patents asserted and the
    enforcement of the Maryland case
    settlement agreement.
   In the second case, however, Invitrogen Corp. v.
    General Elec. Co., 2009 WL 331889(E.D.Tex. Feb
    09, 2009) (Invitrogen II) Judge Love denied the
    motion to transfer, noting that the case lacked
    the decade-long prior litigation involving the
    patents, and had little in common with the other
   Judge Love found that the defendant had not
    under these facts shown that the proposed
    transferee forum was "clearly more convenient."
   In MHL TEK, LLC v. Nissan Motor Co et al (2-
    07-cv-00289) (Feb. 23, 2009) Judge Ward was
    asked to reconsider his decision denying the
    defendants' motion to transfer the case to
   Judge Ward concluded that "the defendants
    have not shown that the Eastern District of
    Michigan is clearly more convenient than the
    plaintiff’s chosen forum" and therefore
    denied the motion to reconsider.
   Plaintiff is a Texas corporation with offices in
   Defendants are various foreign auto
    companies and subsidiaries. Four defendants
    reside in Germany, three in California, two in
    Japan, two in South Korea, two in New
    Jersey, one each in Michigan, Tennessee,
    Alabama, Georgia, South Carolina, Indiana,
    and Virginia.
   Judge Ward found that this district would, in
    the least, be just as convenient or
    inconvenient to most of the defendants as
    the desired transferee district.
   Based on his travel calculations, Judge Ward
    found that under the 100-mile rule, the Texas
    court, rather than the Michigan one, was
    more centrally located to the scattered
    distribution of party witnesses.
   Judge Ward made clear he was not reading the
    sources of proof factor out of the analysis, but
    given that the plaintiff's documents were being
    produced in Texas, only one defendant was from
    Michigan (and it had two related companies in
    the litigation, so it was not clear where its
    documents actually were), and the vast majority
    of the other documents were located elsewhere
    - plus that this case did not involve physical
    evidence, this factor did not support transfer
   The Court specifically contrasted this case
    from TS Tech and VW II, where all of the
    documents and physical evidence was either
    located in the transferee forum, or much
    more convenient to it.
   Judge Ward's analysis of the factor of judicial
    economy disclosed an interesting set of facts.
   Following the filing of this case by MHL,
    Volkswagen filed a declaratory judgment
    lawsuit against MHL, involving the same
    three patents, in the Eastern District of
   The Michigan judge transferred Volkswagen’s
    second-filed lawsuit to Judge Ward.
    Volkswagen petitioned the Federal Circuit for
    a writ of mandamus directing the Michigan
    judge to vacate his transfer order.
   In its petition, VW made essentially the same
    arguments regarding the inconvenience
    resulting from a trial in Marshall. The Federal
    Circuit denied Volkswagen’s petition, finding
    that Volkswagen arguments were “only general
    assertions regarding convenience.” In re
    Volkswagen of America, Inc., 296 Fed. Appx. 11
    (Fed. Cir. 2008) (In re VW III).
   "In the light of this guidance from the Federal
    Circuit," Judge Ward wrote, "this Court is inclined
    to deny defendants’ motion.”
   Judge Ward also noted that there was a
    previously filed case by this plaintiff against
    different defendants but involving the same
    patent filed in his court. "With two other
    cases involving the exact same patents
    before this Court, granting defendants’
    motion for transfer in the present case would
    cut against principles of judicial economy and
    increase the risk of inconsistent
   Volkswagen filed another petition for
    mandamus following Judge Ward’s order, and
    the Federal Circuit denied it on May 22. See
    In re Volkswagen, 566 F.3d 1349 (Fed. Cir.
    2009) (In re VW IV).
   In December 2009 Judge Ward granted
    summary judgment of noninfringement in
    defendants’ favor.
   In RealTime Data, LLC d/b/a Ixo v. Packeteer,
    Inc. et al (6-08-cv-00144) (E.D. Tex. March 5,
    2009) 10 of 13 defendants filed a motion to
    transfer to N.D. Cal.
   "While Defendants point to the Northern
    District of California as the location for a
    significant source of proof," Judge Love
    wrote, "they ignore the remaining sources of
    proof which originate from numerous
   At its heart, the motion asked Judge Love to
    evaluate which of the parties were more
    important, something he was not willing to
    do at this stage.
   In the end, he found that transfer would
    make things easier for some parties, but
    more difficult for others, and on balance "a
    transfer … would merely redistribute the
   In Vasudevan Software, Inc. v. Int'l. Business
    Machines Corp., 2009 WL 3784371 (E.D. Tex.
    Nov. 10, 2009) Judge Ward granted a motion
    to transfer venue of a patent infringement
    action to the N.D. Cal.
   The parties were scattered across the nation
    (P in NC; Ds in New York and California) and
    the accused products had been designed and
    developed in California.
   Judge Ward found that the Eastern District of
    Texas had no connection with the suit and
    gave little weight to the fact that one of the
    accused infringers had a training facility in
    Plano, Texas where it trained personnel on
    using the accused product, and granted the
    motion to transfer.
   In Deep Nines, Inc. v. McAfee, Inc., 2009 WL
    3784372 (E.D. Tex. Nov. 10, 2009), the court
    instructed that “It is clear that where there is
    no connection with Texas or the Eastern
    District of Texas, venue is improper.”
   Although denying the motion to transfer in
    Deep Nines, the court arrived at its decision
    only after painstakingly identifying the
    numerous contacts the action had with the
   The court found that one accused infringer
    maintained an office in the Eastern Texas forum,
    and that witnesses within the court’s subpoena
    power resided in Dallas.
   The court also noted that it had previously
    handled a related dispute between the parties
    and the terms of the settlement agreement,
    governed by Texas law, were at issue in the
    current case, which gave the court an advantage
    in applying Texas law over the proposed forum in
   In Acceleron, LLC v. Egenera, Inc., 2009 WL
    1606961(Jun 09, 2009) Judge Davis granted a
    motion to dismiss for lack of personal
    jurisdiction (i.e. venue) as to one defendant
    because the plaintiff’s proof that the product
    was sold in the district was lacking.
   Judge Davis denied the motion to transfer
    venue, but in doing so pointed up an issue
    dealing with sources of proof.
   “Despite technological advances that certainly
    lighten the relative inconvenience of
    transporting large amounts of documents across
    the country, this factor is still a part of the
    transfer analysis. In re Volkswagen II, 545 F.3d at
    316. Therefore, courts have analyzed this factor
    in light of the fiction that voluminous
    documents must be transported from their
    physical location (supposing that electronically
    stored documents are, in fact, physical) to the
    trial venue. (Emphasis added).
   In Aloft Media, LLC v. Yahoo!, Inc., 2009 WL
    1650480 (E.D.Tex., June 10, 2009) Judge Love
    also addressed the issue of whether the
    nature of the evidence (physical or electronic)
    matters when determining convenience. He
    noted that the Federal Circuit in Genentech
    criticized the distinction (citing In re VW) and
    eventually concluded that the distinction was
    now “inappropriate under controlling
 Judges may now differ on whether the nature of
  the evidence (physical or electronic) matters
  when determining convenience. VW and TS Tech
  dealt only with physical evidence, not electronic,
  but Genentech criticized any approach that
  rendered this factor “superfluous.”
 Cases seem to indicate that all evidence must be
  considered as if physical. Thus the
  inconvenience may not actually exist, but must
  be deemed to.
 “De facto” and “de jure” inconvenience.
   In Sipco, LLC v., Inc. et al (2-08-
    cv-00359) (June 4, 2009), Judge Folsom
    denied a motion to sever & transfer.
   "Defendants cannot argue that transfer of
    this case is appropriate for all parties because
    both the Plaintiff and multiple Defendants
    have offices in [Texas]. Instead, [defendants]
    separately ask to be severed from this action
    and transferred to different districts.
   Citing the Federal Circuit’s statement that In re
    VW IV that “the existence of multiple lawsuits
    involving the same issues is a paramount
    consideration when determining whether a
    transfer is in the interest of justice” (emphasis
    his) the Court held “Defendants' request would
    create simultaneous proceedings on the same
    patents and related products in three district
    courts.... such would be unnecessarily wasteful
    of the court system's time, energy, and money."
   But, in Balthasar Online, Inc. v. Network
    Solutions, LLC, 2009 WL 2952230 (E.D. Tex.
    Sept. 15, 2009) the patentee sued several
    accused infringers who resided in California,
    and some who resided elsewhere.
   After the accused infringers moved to
    transfer, the patentee amended its
    complaint to add additional accused
    infringers, including some who resided in the
    Eastern District of Texas.
   In considering the transfer motion, Judge
    Folsom determined that the Texas
    defendants were small businesses who were
    not major players in the accused
   Accordingly, the court severed the Texas
    defendants from the case, and stayed the
    infringement claims against them. It then
    granted the accused infringers’ motion to
    transfer the case to California.
   “Clearly more convenient” test results in difference
    between “regional” and “national” cases
     MHL Tek continues the approach endorsed by Federal
      Circuit opinions such as the Network-1 and In re Telular
      of keeping “national” cases.
     Odom v. Microsoft and PartsRiver continue the approach
      endorsed by the Federal Circuit in In re TS Tech and In re
      Genentech of transferring cases where the parties (or at
      least the defendants) are closely grouped
   Prior litigation still frequently results in transfer
     Invitrogen I continues the line of cases transferring cases
      where prior litigation raises issues of judicial economy,
      endorsed by the Federal Circuit in In re VW III and In re
      VW IV)
   Transfer is still common where no infringing
    activity in the district is shown.
     Fifth Generation and Acceleron continue the line of cases
      transferring (or dismissing) where no infringing activity
      in the district is shown.
 The Eastern District judges are uniformly looking to see
  whether the proposed transferee forum is “clearly more
 Transfers are now easier to obtain in some cases,
  primarily cases with fewer defendants which are
  geographically clustered, but more difficult in cases with
  a large number of defendants or witnesses which are
  spread throughout the nation or world.
 Analysis requires facts re: witnesses and documents and
  quantitative analysis of convenience.
 Court no longer permitted to engage in a qualitative
  analysis ,or distinguish between“de facto” and “de jure”
   The appellate caselaw is not friendly to
    plaintiffs, but it has created numerous new
    opportunities for both parties to better their
    venue facts by, for example, adding parties or
    witnesses or documents to make a showing
    that a proposed transferee forum is “clearly
    more convenient” easier or more difficult.
   The extent to which courts will recognize
    these opportunities is the next frontier in
    venue law.
In re Hoffman-La Roche
In re Nintendo
In re Vtech
   In In re Hoffman-LaRoche, Inc., ____ F.3d ____,
    2009 WL 4281965 (Fed. Cir., Dec. 2, 2009) the
    Federal Circuit granted a mandamus reversing
    Judge Folsom’s denial of a venue motion in a
    case brought by a California plaintiff against the
    makers of Fuzeon, a HIV inhibitor drug.
   Scientists at Duke Medical Center identified the
    drug’s composition and later formed a company
    called Trimeris to develop the compound into a
    possible HIV infection therapy.
   Plaintiff sued Trimeris and its commercial
    partners, the three Roche entities.
   While the Federal Circuit noted that there were
    parties and witnesses across the country and
    indeed, the world, the Federal Circuit granted
    the mandamus finding that “there is stark
    contrast in relevance, convenience, and fairness
    between the two venues” noting that the
    accused drug was developed and tested within
    the Eastern District of North Carolina.
   In addition, the court noted that there appeared
    to be no connection between the case and the
    Eastern District of Texas
   It specifically rejected Novartis’ decision to
    convert approximately 75,000 pages of
    documents demonstrating conception and
    reduction of practice into electronic format and
    transfer them from California to its litigation
    office in Texas.
   Notably, the Court did not consider the (original)
    location of the plaintiff’s documents in
 The Federal Circuit observed that the assertion that
  these documents are “Texas” documents is “a
  fiction which appears to have been created to
  manipulate the propriety of venue.”
 The Federal Circuit also held that the district court
  gave too much weight to its ability to compel a
  Texas witness’s attendance at trial.
 Finally, it held that the transferee forum’s local
  interest was “self-evident”.
 In In re Nintendo, Misc. No. 914 (Dec. 17, 2009), the
  Federal Circuit transferred the case to Washington
  state, where one of the two defendant, the U.S.
  subsidiary of a foreign entity (the other defendant),
  was located.
 Federal Circuit did not consider location of Plaintiff’s
  documents (in Ohio and New York) in the analysis.
 Decreased travel time from Japan to Washington as
  opposed to Texas for defendant supported transfer.
 Contrast with Genentech – decreased travel time from
  Europe to Texas as opposed to California for plaintiff
  did not support transfer – only marginally less
   Factors
     Relative ease of access to sources of proof
     Availability of compulsory process
     Cost of attendance of willing witnesses
     “All other practical problems”
     Administrative difficulties/court congestion
     Local interest in hearing localized controversies
     Familiarity of forum with the law
     Avoidance of conflicts of law / foreign law problems
   No finding that transferee court “clearly more convenient”
     “no meaningful ties” to Texas
     “central location” used (instead of analysis)
     Too much weight to plaintiff’s choice of forum/too strict a
     Witnesses closer to Washington. None in ED Texas
     Only identified relevant documents in Washington and Japan.
      None in ED Texas
     “Not a single relevant factor favoring the plaintiff’s chosen
   FC says mandamus cannot be used as a substitute for the
    regular appeal process, but notes that regular appeal
    process does not provide an adequate remedy.
   In In re Vtech Communications, Misc. Docket No.
    909 (Jan. 6, 2010) the Federal Circuit denied a
    petition for writ of mandamus directed at one of
    Judge Folsom's orders denying transfer.
   The opinion affirmed Judge Folsom's reliance in
    on his familiarity with the case (he had
    concluded the claims construction process) and
    faulted Vtech for not "actively and promptly"
    pursing the motion to transfer before the district
    court had invested considerable time and
    attention on discovery and completing the
    claims construction process.
   Unlike Genetech in which there were no Texas
    witnesses, here there was at least one nonparty
    witness who in the Eastern District of Texas.
   There was also a source of documents in San
    Antonio and some of the witnesses were in fact
    closer to Texas than to Oregon.
   The Court concluded that because "the facts are
    rationally capable of providing reasons for what
    the district court has done", mandamus should
    not issue, which would interfere with the
    approaching trial date.
   In Hewlett-Packard v Acceleron, 2209 WL
    4432580 (Fed. Cir., Dec. 4, 2009) the Federal
    Circuit appears to have substantially lowered
    the bar for an accused infringer to obtain
    declaratory jurisdiction if the patentee is a
    licensing only patent holding company.
   The patentee's sending of two letters
    identifying the patent and the relevant
    product, and requesting the accused infringer
    to agree to a confidentiality provision in a
    short response time, along with a refusal by
    the patentee to agree to the accused
    infringer's counter proposal of a stand-still
    agreement was enough to get declaratory
   This case may essentially eliminate pre-suit
    assertions of patent rights, since a plaintiff
    who contacts an accused infringer runs the
    risk of having a declaratory judgment suit
    filed in an unfriendly forum, and thus giving
    the infringer the ability to choose the forum.
   Proposed Patent Reform Act addresses
    concerns about patent quality, the
    relationship of U.S. patents with the rest of
    the world’s patent systems, and the costs of
    patent litigation.
   Deep divisions in the business community
    over portions of the bill.
   Courts are clearly responding to legislative
    proposals with major changes in caselaw.
   Shortly after the 111th Congress convened in
    January 2009, the Patent Reform Act of 2009
    was introduced in the Senate.
   Initial versions of the legislation generally
    reflected the version which passed the House in
    September of 2007, but which never achieved
    sufficient consensus to reach the Senate floor.
   The Senate sponsors quickly reached a
    compromise on major parts of the legislation in
    the spring of 2009.
   The Senate Judiciary committee approved a
    version of the bill in April, 2009, but it stalled
    when judicial nominations and health care
    reform began dominating the legislative
   While the legislation has not yet been set for
    floor debate, backers hope to see the bill on
    the Senate floor in early 2010.
 As part of an overall compromise on many
  issues, the Senate Judiciary Committee has
  approved a version of patent legislation which
  with respect to venue contains only a provision
  drafted by Sen. John Cornyn (R-Tex.).
 The Cornyn amendment essentially codifies the
  “clearly more convenient” test from In re
  Volkswagen IIc.
 The legislation does not modify the general
  venue provision, or the patent venue provision.
   The actual language as passed by Senate Judiciary
    would amend 28 U.S.C. §1400 by adding at the end
    the following:
     ‘‘(e) CHANGE OF VENUE.—For the convenience of parties
      and witnesses, in the interest of justice, a district court
      shall transfer any civil action arising under any Act of
      Congress relating to patents upon a showing that the
      transferee venue is clearly more convenient than the
      venue in which the civil action is pending.’’

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Description: Motion to Dismiss Format for the State of Tennessee document sample