In
MSI moved to transfer all three cases to the
In patent cases, motions to transfer under 28 U.S.C. § 1404(a) are governed by the law of the regional circuit. In the Fifth Circuit, the preliminary question under § 1404(a) is whether a civil action "'might have been brought' in the [transfer] destination venue." If the destination venue would have been a proper venue, then "[t]he determination of 'convenience' turns on a number of public and private interest factors, none of which can be said to be of dispositive weight."
The private interest factors include (i) the cost of attendance and the convenience for willing witnesses; (ii) the relative ease of access to sources of proof; (iii) the availability of compulsory process to secure the attendance of witnesses; and (iv) all other practical problems that make trial of a case easy, expeditious, and inexpensive.
The public interest factors include (i) the administrative difficulties flowing from court congestion; (ii) the local interest in having localized interests decided at home; (iii) the familiarity of the forum with the law that will govern the case; and (iv) the avoidance of unnecessary problems of conflict of laws with the application of foreign law.
As to the preliminary question, the court found that venue and jurisdiction would have been proper in the CDCA. As a foreign defendant, venue is proper in the CDCA under 28 U.S.C. § 1391(c)(3). The court also found that the CDCA had personal jurisdiction over MSI because MSI continuously and systematically sent all
As to the private interest factors, the court first examined the cost of attendance and convenience for willing witnesses, which is "[t]he most important factor in the transfer analysis." MSI argued that all its witnesses are in
The court found that
The court found that the "relative ease of access to sources of proof" factor was neutral because MSI did not contend that any of its design or development takes place in the CDCA, nor did MSI allege that the location of CA MSI's servers or relevant physical documentation is located in the CDCA. Additionally, the court noted that MSI did not dispute SVVTI's assertion that SVVTI's documents are stored on cloud-based servers that are accessible from anywhere. The court also noted that any evidence in
However, the court found that the "availability of compulsory process to secure the attendance of witnesses" factor at least slightly favored transfer. The court noted that MSI credibly alleged that non-party CA MSI is responsible for the importation and sales of the Accused Products, so the court was not willing to discount entirely the potential relevance of some of CA MSI's witnesses at the early stage of the case. Absent evidence to the contrary, the court treated CA MSI's witnesses as unwilling to testify even though CA MSI was a subsidiary. But because MSI failed to identify any of CA MSI's employees by name or identify their relevancy with any specificity, the court accorded the unnamed witnesses only "some weight."
For the final private factor, the court held that practical considerations weighed against transfer. In addition to the three related actions asserted by SVVTI against MSI, there are six other related co-pending cases before the court involving the same 13 patents asserted in the current SVVTI-MSI case. The court also noted that it had already denied the motions to transfer filed by two other defendants in co-pending cases, which the court stated raised a significant hurdle to transfer in this case because "[t]wo courts ruling on the same patents asserted by the same plaintiff wastes judicial resources and risks inconsistent rulings on the patents-in-suit." In contrast, the court noted that "[t]rying all nine cases in the same court increases judicial economy." As such, the court found that this factor weighed against transfer.
The court then examined the public factors. First, the court held that the "administrative difficulties" factor was neutral because the Federal Circuit (i) has previously held that there are no significant differences in caseload or time-to-trial statistics between the
The court summarized its holdings regarding each factor in a table in its conclusion:
Factor | The Court's Finding |
Cost of attendance of willing witnesses | Slightly favors transfer |
Relative ease of access to sources of proof | Neutral |
Availability of compulsory process to secure attendance of witnesses | Slightly favors transfer |
All other practical problems that make trial of the case easy, expeditious, and inexpensive | Against transfer |
Administrative difficulties flowing from court congestion | Neutral |
Local interest | Slightly favors transfer |
Familiarity of the forum with law that will govern case | Neutral |
Problems associated with conflict of law | Neutral |
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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