Cert. Petition Challenges Fed. Cir.'s Venue Transfer Out of E.D. Texas

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By Tony Dutra

Feb. 17 — The Federal Circuit's perceived “astronomical grant rate” when it comes to overturning district court decisions not to transfer patent infringement cases came under fire in a Feb. 12 petition for certiorari.

Petitioner EON is a patent licensing entity with an office and one employee located in Tyler, Texas.

EON filed a lawsuit for patent infringement against Apple in 2012 in the U.S. District Court for the Eastern District of Texas. No. 6:12-cv-00943. The patents (U.S. Patent Nos. 5,388,101; 5,481,546; 5,592,491; and 5,663,757) cover technology in interactive communication video systems. EON identified Apple TV, iTunes, App Store, iPhones, iPads and the iPod Touch as infringing products, and it further claimed Apple induced infringement by its customers and mobile network operators.

Magistrate Judge John D. Love denied transfer on March 28, 2014, and Apple filed a petition for writ of mandamus with the Federal Circuit.

A 2-1 majority of the Federal Circuit Sept. 11 granted the writ (In re Apple, Inc., 581 Fed. Appx. 886, 2014 BL 253901 (Fed. Cir. 2014).

14 Writs Against E.D. Texas Since TS Tech

The Federal Circuit's handling of motions to transfer patent cases from Fifth Circuit courts has been governed since 2008 by In re TS Tech USA Corp., 551 F.3d 1315, 89 U.S.P.Q.2d 1567 (Fed. Cir. 2008), which laid out a list of eight “traditional private and public interest forum non conveniens factors.”

Here, the majority and dissent disagreed on the weighing of the factors, in part because Apple buttressed its support for transfer to the Northern District of California in a reply brief.

According to EON's cert. petition, “Under controlling law in the court below, motions to transfer venue pursuant to 28 U.S.C. §1404(a) are governed by an application of the ‘Gilbert' factors used in forum non conveniens determinations as established in Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947).”

The petition offered no differentiation between the eight factors of Gilbert and TS Tech, citing the latter only in a footnote in a list of 14 decisions by the Federal Circuit since 2008 that reversed the Eastern District of Texas's decision.

“This Court should grant certiorari to remedy the litany of issues created by the Federal Circuit’s unrestrained and improper use of mandamus to cases decided under section 1404(a),” the petition said.

The questions presented are:

1. Is a writ of mandamus appropriate to review a trial court’s exercise of discretion to deny a transfer motion pursuant to 28 U.S.C. §1404(a)?

2. Did the Federal Circuit err by issuing a writ of mandamus to reverse the district court’s denial of transfer based solely on the Federal Circuit’s disagreement with the manner in which the district court applied the Gilbert factors?


John L. Hendricks of Reed & Scardino LLP, Austin, Texas, filed the petition. A response is due March 16. Bryan K. Anderson of Sidley Austin LLP, Palo Alto, Calif., represented Apple before the Federal Circuit.

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Tom P. Taylor at ttaylor@bna.com

Full text of the petition at http://pub.bna.com/ptcj/140978petition.pdf.


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