In Re Biosearch Technologies, Inc. , 452 F. App'x 986 ( 2011 )


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  • NOTE: This order is nonprecedential
    United States Court of AppeaIs
    for the FederaI Circuit
    IN RE BIOSEARCH TECHNOLOGIES, INC. AND
    EUROFINS MWG OPERON INC.,
    Petitioners.
    Misce11aneous Docket No. 995
    On Petition for Writ of Mandarnus to the United
    States Dist;rict Court for the Eastern District of Texas in
    case no. 09-CV-0283, Judge T. John Ward.
    ON PETITION
    Before NEWMAN, L1NN, and REYNA, Circuir Judges.
    LINN, C'ircu,i.t Judge.
    ORDER
    Biosearch Technologies, Inc. and Eurofins MWG Op-
    eron Inc. seek a writ of mandamus directing the United
    States Di.strict Court for the Easte-rn District of Texas to
    transfer the case to the District Court for the Northern
    District of Ca1ifornia. App1ied Biosysterns, LLC and Life
    Techno1ogies C0rporation (co11ective1y, Life Tech) oppose
    Biosearch and Eurofins rep1y. Because the district court
    lN RE BIOSEARCH 'l`ECH 2
    abused its discretion in denying Biosearch’s motion to
    transfer venue under 28 U.S.C. § 1404(a), this court
    grants Biosearch’s petition for a writ of mandamus.
    I.
    This case arises out of a patent infringement suit
    against the petitioner-defendant, Biosearch, brought by
    the respondent-plaintiff Life Tech. Life Tech asserted
    infringement of five of its patents directed to dual-labeled
    probe products initially against only Biosearch Technolo-
    gies, Inc., and then added defendants Eurofins MWG
    Operon, Inc., Midland Certified Reagent Company, Inc.,
    and Bio-Synthesis, Inc. Midland was dismissed from the
    suit prior to the underlying motion to transfer in the
    district court. c
    Bi.osearch and Eurofins (co1lectively, `Biosearch)
    moved to transfer to the Northern District of California,
    where a substantial number of witnesses and documents
    are located. The motion was denied by a magistrate
    judge, who focused on defendant Bio-Synthesis connec-
    tions to the Eastern District of Texas. The magistrate
    determined that all of Bio-Synthesis’ evidence was located
    in the Eastern District of Texas. Given that Life has
    facilities in Austin, Texas, Calif0rnia, Maryland, and New
    York, and Eurof1n is in Alabama, the magistrate deter-
    mined the Eastern District of Texas was a proper central
    location. The magistrate acknowledged that the avail-
    ability of compulsory process to secure the attendance of
    non-party witnesses favored transfer because of the large
    number of likely witnesses in the Northern District of
    California, but decided that the cost of attendance for
    willing witnesses weighed against transfer due to the
    number of Bio-Synthesis witnesses in Texas and the
    increased travel distances for other witnesses that Cali-
    3 IN RE BIOSEARCH TECH
    fornia would require. Biosearch sought review of the
    magistrate’s order by the district court, which upheld the
    decision.
    II.
    The remedy of mandamus is available only in ex-
    traordinary situations to correct a clear abuse of discre-
    tion or usurpation of judicial power. In re Calmccr, Inc.,
    
    854 F.2d 461
    , 464 (Fed. Cir. 1988). ln reviewing a district
    court's ruling of a motion to transfer pursuant to
    § 1404(a), we apply the law of the regional circuit, in this
    case the Fifth Circuit. See Storage Tech. Corp. v. Cisco
    Sys., Inc., 
    329 F.3d 823
    , 836 (Fed. Cir. 20(}3).
    A motion to transfer under§ 1404(a) calls up-on the
    trial court to weigh a number of case-specific factors
    based on the individualized facts on record. See Stewart
    Org., Inc. v. Ricoh C0rp., 
    487 U.S. 22
    , 29, (1988). Al-
    though a trial court has great discretion in these mat-
    ters, mandamus may issue when the trial court's
    application of those factors creates a patently erroneous
    result. In re Volkswagen, of Am., Inc., 
    545 F.3d 304
    , 310
    (5th Cir. 2008) (en banc); see also In. re TS Tech USA
    Corp., 
    551 F.3d 1315
    , 1318-19 (Fed. Cir. 2008).
    ln assessing whether a defendant has met its burden
    of demonstrating the need to transfer, the Fifth Circuit
    applies the "pnblic” and "private" factors for determin-
    ing forum non conveniens 
    Volkswagen, 545 F.3d at 314
    n.
    9. As we noted in TS Tech, the private interest factors
    include "(1) the relative ease of access to sources of proof;
    (2) the availability of compulsory process to secure the
    attendance of witnesses; (3) the cost of attendance for
    willing witnesses; and (4) all other practical problems
    that make a trial easy, expeditious and inexpensive." 551
    IN RE BIOSEARCH 
    TECH 4 F.3d at 1319
    (citing Piper Aircraft C0. v. Reyn,0, 
    454 U.S. 235
    , 241 n. 6, (1981)). The public interest factors include
    "(1) the administrative difficulties flowing from court
    congestion; (2) the local interest in having localized inter-
    ests decided at home; (3) the familiarity of the forum with
    the law that will govern the case; and (4) the avoidance of
    unnecessary problems of conflicts of laws [or in] the
    application of foreign law." 
    Id. Both plaintiffs
    in this case are headquartered in Cali-
    fornia, and one is in the Northern District of California.
    One of the moving defendants, Biosearch, is also incorpo-
    rated and headquartered in the Northern District of
    California. lt cannot be disputed therefore that such
    venue would have a strong interest in trying this case and
    be convenient with regard to the location of likely sources
    of evidence. .
    The district court recognized that at least 19 potential
    witnesses, among them the patents inventors and prose-
    cuting attorneys, reside in or near the transferee venue.
    If all of these witnesses were required to travel to the
    Eastern District of Texas, the parties would likely incur
    significant expenses for airfare, meals, and lodging, as
    well as losses in productivity from time spent away from
    work. See 
    V0lkswagen, 545 F.3d at 317
    . In addition,
    these witnesses will suffer the "personal costs associated
    with being away from work, family, and community." 
    Id. These costs
    would be significantly minimized or avoided
    by transferring the case to Northern California. Moreover
    given the large number of witnesses that reside in that
    venue, the subpoena powers of the Northern District of
    California may be expected to be invaluable in the event
    process is required to hale relevant witnesses into court.
    5 IN RE BIOSEARCH TECH
    ln contrast, the district court acknowledged that “nei-
    ther party has identified any witness subject to compul-
    sory process in the Marshall Division of the Eastern
    District of Texas." The court nonetheless held that this
    case should remain in the plaintiffs chosen venue. ln
    doing so, the district court predominantly relied on Bio-
    Synthesis’ presence in the Eastern District for many of
    the § 1404(a) factors.
    Bio-Synthesis, however, has entered into an agree-
    ment with the plaintiff to play only a peripheral role in
    this litigation by, inter alia, limiting its discovery re-
    quests and agreeing not to challenge the validity of the
    patents-in-suit. VVhile in theory the Agreement leaves
    open the possibility that Bio-Synthesis can expend the
    costs of litigation to reduce its liability under the "high-
    low" agreement by challenging the infringement allega-
    tions, the reality of the situation is that Life has limited
    its own discovery of Bio-Synthesis, and Bio-Synthesis’s
    behavior implies that it appears content not to expend the
    costs necessary to prove its non-infringement case at
    trial_failing even to participate in the claim construction
    proceedings that are so critical to the outcome of the
    infringement determinations Thus, whatever documents
    of Bio-Synthesis are present in the Eastern District of
    Texas, we cannot say they are deserving of any significant
    weight.
    ln analogous situations, where an invention has no
    connection with Texas, we have determined that the
    asserted geographical centrality of Texas did not out-
    weigh the many aspects of convenience to the defendant.
    ln In re Genentech, Inc., 
    566 F.3d 1338
    (Fed. Cir. 2009)
    the plaintiff a company which had no connection to
    Eastern Texas, brought suit in Texas against Genentech
    and another company, both of which had principal places
    IN RE BIOSEARCH TECH 6
    of business in California. The bulk of the defendants
    witnesses resided in California, and a substantial amount
    of the defendants’ evidence was situated in California.
    Similar to this case, in Genentech, neither the plaintiff
    company, the inventors, nor any witness of the plaintiff
    had any connection with Texas. This court required
    transfer to the Northern District of California, ruling that
    “the district court clearly erred in not determining [the
    convenience] factor to weigh substantially in favor of
    transfer." 
    Id. at 1345.
    This court observed that the
    plaintiffs witnesses "will be required to travel a signifi-
    cant distance no matter where they testify." 
    Id. at 1344.
    More recently, in cases such as In re Nin,tendo Co., 
    589 F.3d 1194
    (Fed. Cir. 2009) and 111 re Hoffmamt-La Roche,
    
    587 F.3d 1333
    (Fed. Cir. 2009), this court ordered transfer
    from the plaintiffs chosen Eastern Texas forum, noting "a
    stark contrast in relevance, convenience, and fairness
    between the two 
    venues.” 587 F.3d at 1336
    . This prece-
    dent is persuasive authority for transfer to the Northern
    District of California, for the facts of the present case are
    as compelling as for this precedent.
    Although transfer is within the discretion of the trial
    court, “in a case featuring most witnesses and evidence
    closer to the transferee venue with few or no convenience
    factors favoring the venue chosen by the plaintiff the
    trial court should grant a motion to transfer." 
    Nintendo, 589 F.3d at 1198
    . This is such a case. Despite the limited
    involvement that defendant Bio-Synthesis will have in
    this litigation, it is not strong enough to maintain the
    case in the Eastern District of Texas, given the other
    factors weighing in favor of transfer. We grant the peti-
    tion.
    Accordingly,
    IT ls OR1)ERED THAT:
    7 IN RE BlOSEARCH TECH
    The petition for writ of mandamus is granted The
    United States District Court for the Eastern District of
    Texas is directed to vacate its order denying petitioners’
    motion to transfer venue, and to direct transfer to the
    United States District Court for the Northern District of
    California.
    FOR TH1-1 CoURT
    DEC 2 2  /s/ J an Horbaly _
    Date J an Horbaly
    Clerk
    cc: Thomas M. Peterson, Esq.
    Kenneth E. Keller, Esq. ~
    Clerk, United States District Court for the Eastern
    District of Texas `
    s24
    “-=i.a~.zftftsenr
    DED 22 2011
    JAN HORBAL¥
    CI.ERK