In Re Morgan Stanley v. United States , 417 F. App'x 947 ( 2011 )

NOTE: This order is nonprecedential.
Wnttdr ~tate~ 626 F.3d 1252 (Fed. Cir. 2010); In re
Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010); In
re Nintendo Co., Ltd., 589 F.3d 1194 (Fed. Cir. 2009); In
re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir.
2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir.
2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir.
2008).
This court dealt with similar circumstances in Acer.
There, the plaintiff and five defendants were headquar-
tered in the transferee venue and the plaintiff filed suit in
a venue that had no apparent connection to the cause of
action. 626 F.3d at 1254. Under those circumstances,
this court granted mandamus holding that the large
number of parties with presence in the transferee forum
was "an important consideration" and that a denial of
transfer would require almost every witness to expend
significant time and cost in order to attend trial. Id. at
1255-56.
Given that the plaintiff and 27 defendants are head-
quartered in or close by the transferee venue here, these
cases make an even more compelling showing for transfer.
Notably, the inventors, patent prosecution attorneys, and
the defendants' employees with unique knowledge regard-
ing the accused products reside in or near the transferee
venue. Meanwhile, no party is headquartered within a
5 IN RE MORGAN STANLEY
hundred miles of the Eastern District of Texas. In addi-
tion, Realtime has only vaguely referenced two individu-
als in that venue having some relevant information to the
case. Thus, transfer would significantly minimize the
cost, time, and expense of travel to attend trial, which is
the very purpose of § 1404(a). See Cont'l Grain Co. v.
Barge FBL-585, 364 U.S. 19, 26 (1960).
B.
Realtime nevertheless contends that a writ should not
issue to compel the district court to comply with Acer and
our prior precedent. In this regard, Realtime asserts that
the judiciary has an interest in maintaining these cases in
the Eastern District of Texas because it would eliminate
the need for a different judge to become educated on the
patents and technology.
The interest of justice as a component of a § 1404(a)
analysis takes into consideration how administration of
the court system would best be served in deciding a
transfer motion. See Van Dusen v. Barrack, 376 U.S. 612,
625 (1964). Factors considered under an interest of
justice analysis have traditionally included where the
litigant is more likely to receive a speedy trial, consolida-
tion of related litigation, and the ability to have a federal
judge try a case who is more familiar with the applicable
state law at issue in diversity actions. See In re Volks-
wagen of America, Inc., 545 F.3d 304, 315 (5th Cir. 2008)
(en banc); see also Coffey V. Van Darn Iron Works, 796
F.2d 217, 221 (7th Cir. 1986).
This court twice recently considered and rejected ar-
guments that the preservation of judicial economy should
preclude transfer to a far more convenient venue. In
Zimmer Holdings, the district court denied transfer to a
more convenient venue because the patentee had a pend-
IN RE MORGAN STANLEY 6
ing suit in that venue involving one of sixteen patents
asserted in the two cases. 609 F.3d at 1382. We held that
the district court had erroneously prevented transfer
based solely on that ground because the cases would
result in significantly different discovery, evidence, pro-
ceedings, and trial. Id.In re Verizon, _ F.3d _, 201O-M956 (Fed. Cir. Mar.
23, 2011) also involved denial of transfer to a far more
convenient venue based solely on the district court's prior
familiarity with the patent. Similar to this case, the
district court in Verizon denied transfer because it had
previously issued a claim construction order in a case
involving the same patent. In granting mandamus to
direct transfer, we explained that "[t]o interpret § 1404(a)
to hold that any prior suit involving the same patent can
override a compelling showing of transfer would be incon-
sistent with the policies underlying § 1404(a)." Verizon,
2010-M956 slip op. at 5.
As the opinions in Zimmer and Verizon indicate, the
proper administration of justice may be to transfer to the
far more convenient venue even when the trial court has
some familiarity with a matter from prior litigation. That
is the only conclusion that we can draw from the facts
here. As noted above, 28 parties are located either in or
close to the transferee venue and no party is located in
the Eastern District of Texas. Moreover, despite the
district court's prior familiarity with some of Realtime's
patents, half of the patents asserted here were not as-
serted in the prior litigation. Furthermore, there is no
relation between the prior suit and the financial products
or services involved in these cases except for data com-
pression generally. Thus, no matter where the case is
tried, a court will have to familiarize itself with new
patents, new subject matter, and new technology. In
addition, all three related cases will be decided by the
7 IN RE MORGAN STANLEY
same court upon transfer. Thus, granting transfer will
not require multiple courts to simultaneously decide the
same or similar issues.
Finally, Realtime argues that the court congestion
factor weighs against transfer. However, we do not
regard the prospective speed with which this case might
be brought to trial to be of particular significance in this
case. Realtime acknowledges that it does not make or sell
any product that practices the claimed invention. It
therefore is not in need of a quick resolution of this case
because its position in the market is threatened. Nor has
Realtime pointed to any other reason that a more rapid
disposition of the case would be important enough to be
assigned significant weight in the transfer analysis.
Accordingly,
IT IS ORDERED THAT:
The petitions are granted.
FOR THE COURT
APR 062011 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: Daniel A. DeVito, Esq.
Robert A. Cote, Jr., Esq.
Keith J. Grady, Esq. FILED
I.S. COURT OF APPEALS FOR
Scott F. Partridge, Esq. THE FEDERAL CIRCUIT
Rick L. Rambo, Esq.
David R. Francescani, Esq. APR 06 lOll
Michael M. Murray, Esq.
Lynn E. Rzonca, Esq.
James H. Shalek, Esq.
Benjamin W. Hattenbach, Esq.
IN RE MORGAN STANLEY 8
Constance S. Huttner, Esq.
John M. DiMatteo, Esq.
Brian E. Moran, Esq.
Clerk, United States District Court For The Eastern
District Of Texas
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