A common frustration of retailers is finding themselves one of many defendants in a series of suits brought by a patent troll in a district in which the retailer has at most very limited activity. It is a set of facts routinely repeated in the districts most favored by trolls, including D. Delaware and E.D. Texas. Generally, being one of many defendants all but kills any chance of transfer to the retailer’s home district. But the Federal Circuit has provided retailers that want to defend suits in their home district considerable hope, at least to the extent that the retailer can identify witnesses in its home district.
In In re Apple, Inc., No. 2014-143, Slip Op. (Fed. Cir. Sep. 11, 2014), the Federal Circuit overturned an E.D. Texas decision denying transfer on a writ of mandamus, based upon at least the following factors:
- The district court erred in not considering party and non-party witnesses within the transferee district — N.D. California.
- The compulsory process factor weighed in favor of transfer because six non-party witnesses resided in the N.D. California, outside E.D. Texas subpoena power.
- The Court erred by failing to consider the convenience of the eight party witnesses that resided in the N.D. California.
- The fact that the E.D. Texas had experience with the patents did not weigh heavily in favor of transfer where the N.D. California also had experience with them. To the extent that litigation would be required in multiple districts, the parties could avail themselves of multi-district litigation procedures.
This is an important decision in that it provides relatively clear guidance as to the types of facts that will weigh heavily in favor of transfer. Unfortunately, the opinion is not precedential.