ON PETITION FOR WRIT OF MANDAMUS
ORDER
Section 1404(a) of Title 28 of the United States Code authorizes a change of venue from one district court to another “[f]or the convenience of parties and witnesses, in the interest of justice.” The principal question in this petition for a writ of mandamus is whether the trial court could plausibly justify denying transfer to a far more convenient venue based solely on its previous handling of a lawsuit involving the same patent that settled more than five years before this suit was filed. Because we cannot discern a supportable basis for that conclusion, we grant the petition.
I.
This petition arises out of a patent infringement suit against the six petitioner-defendants, Verizon Services Corp., Verizon Business Network Services Inc., Verizon Enterprise Delivery LLC, AT & T Corp., Qwest Corporation, and Qwest Communications Corporation, brought by the respondent-plaintiff, Red River Fiber Optic Corporation. Red River’s complaint asserts that the defendants’ end-to-end fiber optic transmission systems infringe U.S. Patent No. 5,555,478, entitled “Fiber optic information transmission system.”
Red River brought this suit in the Eastern District of Texas. Although Red River is operated from Oklahoma, it incorporated under the laws of Texas and asserts that its principal place of business is now in Marshall, Texas. According to Red Riv
The petitioners moved to transfer this case to the Northern District of Texas, Dallas Division, approximately 150 miles away. The motion was initially denied by a Magistrate Judge. In his decision, the Magistrate agreed with the petitioners that the Northern District of Texas, Dallas Division would likely be more convenient for the parties and the witnesses. He further noted that a number of party witnesses resided within 100 miles of Dallas and no witness resided within 100 miles of Marshall, Texas. However, the Magistrate held that judicial economy favored maintaining this suit in Marshall, Texas. The Magistrate noted that the court had previously handled a lawsuit involving the same patent and had construed 25 of the patent’s terms. That previous suit settled in 2003.
The petitioners sought review of that order with the district court, contending that the length of time between the two cases and the more recent reexamination warranted a result contrary to the Magistrate’s decision. The district court agreed with the Magistrate. The court noted that despite the reexamination, “there would be an overlap of issues for claim construction allowing the Court to take advantage of the built-in efficiencies that result from having the same Court hearing related eases.”
Red River Fiber Optic Corp. v. Verizon Servs. Corp.,
08-CV0215, slip op. at 2,
II.
A motion to transfer under § 1404(a) calls upon the trial court to weigh a number of ease-specific factors based on the individualized facts on record.
See Stewart Org., Inc. v. Ricoh Corp.,
In
Volkswagen,
the Fifth Circuit sitting en banc granted mandamus and determined that a significant number of witnesses and parties were located within 100 miles of the Dallas Division and could be deposed and testify without significant travel or expense, while no witness or party was located within the Marshall Division.
This case is in many respects analogous to Volkswagen. As in that ease, there is a stark contrast in convenience and fairness with regard to the identified witnesses. It appears that many witnesses reside within 100 miles of the Dallas Division and would also be subject to the Northern District’s subpoena powers. Meanwhile, it is undisputed that no witness resides within 100 miles of the Marshall Division. Thus, maintaining trial in the Marshall Division would require witnesses to undergo the cost, time, and expense of travel, which would be significantly reduced if this case was transferred to the Dallas Division.
Red River attempts to distinguish this case from
Volkswagen
on the grounds
Red River contends that despite the contrast in convenience between the venues, denial of transfer was nevertheless plausible. However, Red River’s basis for that conclusion is the trial court’s previous handling of a lawsuit involving the same patent that settled more than five years before this suit was filed. The Eastern District of Texas would have to relearn a considerable amount based on the lapse in time between the two suits and would likely have to familiarize itself with reexamination materials that were not part of the record during the previous suit.
To interpret § 1404(a) to hold that any prior suit involving the same patent can override a compelling showing of transfer would be inconsistent with the policies underlying § 1404(a). We recently advised against such ironclad rules in
In re Vistaprint Ltd.,
Our holding today does not mean that, once a patent is litigated in a particular venue the patent owner will necessarily have a free pass to maintain all future litigation involving that patent in that venue. However, where, as here, the trial court performed a detailed analysis explaining that it is very familiar with the only asserted patent and the related technology, and where there is a co-pending litigation before the trial court involving the same patent-in-suit, and pertaining to the same underlying technology and accusing similar services, we cannot say the trial court clearly abused its discretion in denying transfer.
Id.
In Vistaprint, we denied mandamus to overturn a denial of transfer and determined that the district court properly considered both its previous experience construing claims of the patent at issue and co-pending litigation before the district court involving the same patent and underlying technology. In this case, there is no assertion that there is an additional pending lawsuit in the Eastern District involving the patent and technology. Absent that, we deem the Eastern District’s previous claim construction in a case that settled more than five year’s before the filing of this lawsuit to be too tenuous a reason to support denial of transfer.
Accordingly,
It Is Ordered That:
The petition for a writ of mandamus is granted.