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.”

In re Nintendo Co., Ltd., Misc. Docket, No. 914 (Fed. Cir. Dec. 17, 2009)

The patentee sued for infringement of the Nintendo Wii game system. The district court denied the alleged infringers' motion to transfer venue from the Eastern District of Texas. The Federal Circuit, applying Fifth Circuit law, issued a writ of mandamus directing the district court to transfer the case to the Western District of Washington.

A writ of mandamus is available in “extraordinary situations to correct a clear abuse of discretion or usurpation of judicial power.” Here, the case “features a stark contrast in relevance, convenience, and fairness between the two venues.” The patentee is an Ohio company, and the alleged infringers have principal places of business in Redmond, Washington and Kyoto, Japan. At the time of the transfer motion, four witnesses lived in Washington, three in Japan, and the two inventors lived in Ohio and New York. “No witnesses live in Texas.” In addition, for products sold throughout the United States, as here, the citizens in the venue chosen by the plaintiff “have no more or less of a meaningful connection to the case than any other venue.” The convenience and cost of attendance for witnesses “clearly favors transfer.”

The relative access of sources to proof also favored transfer. Neither the patentee nor the alleged infringers had “any relevant documentation or any other evidence in the Eastern District of Texas.” “[I]n 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.” The district court “clearly abused its discretion” and repeated “the erroneous methodology that led this court to grant mandamus in, TS Tech.”

Finally, the alleged infringer was not required to wait for a ruling on its motion for reconsideration before seeking mandamus “because the district court clearly abused its discretion when deciding the original motion.”

A copy of the opinion can be found here.