CAFC denies HPE Mandamus request for transfer from Texas to Massachusetts

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“The CAFC cited the very high standard for granting mandamus in determining that ‘we cannot say that the trial court’s assessment of witness factors was unreasonable and warrants the extraordinary relief of mandamus.’ “.”

The United States Court of Appeals for the Federal Circuit (CAFC) today denied Hewlett Packard’s motion for a writ of mandamus ordering the U.S. District Court for the Western District of Texas to transfer its case to Massachusetts.

Intellectual Ventures (IV) sued Hewlett Packard Enterprises (HPE) in the Western District of Texas alleging patent infringement relating to data storage solutions attributed to IV. HPE requested the transfer, arguing that development of the accused products occurred primarily in Massachusetts, but the district court denied the request. Analyze the factors set out in In re Volkswagen of Am., Inc., the district court said the court’s congestion factor weighed against the transfer; the voluntary control factor weighed slightly in favor of the transfer; the local interest factor favored the transfer; sources of evidence, mandatory process and practical problem factors were neutral; and the remaining factors were neutral. Since Texas was likely to be a faster forum, the cost being only slightly more than a decision in Massachusetts, HPE’s financial documents were in Texas and there weren’t enough evidence that the relevant documents were in Massachusetts, the district court ultimately denied the transfer.

High Mandamus exam standard not met

The CAFC, on appeal, requested In question: TS Tech USA Corp.. reconsider the district court’s decision for abuse of power. The court determined that “[h]Here, HPE failed to demonstrate the required clear abuse of power resulting in a patently wrong result,” particularly because it failed to demonstrate that there was more documentary evidence in Massachusetts than in western Texas. While development of the allegedly infringing HPE products took place in Massachusetts, the district court questioned whether any of the employees who worked on the products would still be in possession of these documents, especially since the company had moved to India in 2020. No employee statements confirming possession of the documents were submitted by HPE, and the district court’s decision to give little weight to the IV documents located with his attorney in Massachusetts was also reasonable, the CAFC said.

With respect to consenting witnesses, the CAFC said that HPE’s identification of only two consenting witnesses in Massachusetts, and the district court’s finding that it has binding procedural power over a potential witness not a party to the Texas, only came to a slightly favorable conclusion for the transfer. HPE argued that those identified in Texas may not have “relevant and material” information, but the CAFC cited the very high standard for granting mandamus in determining that “we cannot not to say that the trial court’s assessment of the witness factors was unreasonable and warrants the extraordinary relief of mandamus.

Not like Genentech

The court finally distinguished this case from In re Genentech, Inc., where mandamus was granted to the direct transfer after finding that several relevant factors weighed in favor of the transfer and the other factors were neutral. Genentech clarified that, in such a case, “the timeliness of the assignee’s district court alone should not outweigh all of these other factors.” However, the CAFC said that “this case is different because the trial court reasonably concluded that while the local interest factor favors transfer, the willful witness factor favors transfer only slightly, and the remaining factors (other than court congestion) are neutral”. The CAFC was therefore not convinced that it should extend Genentech to reach the case and denied the request for mandamus.

Despite the Order’s references to the strict standards for granting mandamus, the CAFC has granted numerous motions over the past two years, primarily for cases seeking transfer from the Eastern District of Texas to the Northern District of California.

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