The U.S. Court of Appeals for the Federal Circuit recently granted Nintendo’s petition for a writ of mandamus to transfer a patent infringement suit from the U.S. District Court for the Eastern District of Texas to the U.S. District Court for the Western District of Washington, finding that the district court abused its discretion in denying transfer of venue under 28 U.S.C. § 1404(a). In re Nintendo Co., Misc. Doc. No. 914 (Fed. Cir., Dec. 17, 2009) (Rader, J.).
Plaintiff Motiva sued for patent infringement in the Eastern District of Texas alleging that the Nintendo Wii infringed Motiva’s patent relating to a human movement measurement system. Nintendo filed a motion to transfer the case to the Western District of Washington, arguing that the Western District of Washington was more convenient because the physical and documentary evidence was located in the Western District of Washington and Japan, the majority of the witnesses lived in Washington and none of the parties were incorporated in Texas. Nintendo also argued that none of the parties had offices in Texas, no witnesses resided in Texas and no evidence was located in Texas. The district court denied Nintendo’s motion in part because the Eastern District of Texas could serve as a “centralized location,” given that documents were spread between Nintendo’s headquarters in Japan and Washington, as well as in minor satellite offices in California and New York. Nintendo appealed.
The Federal Circuit reversed the district court’s denial of Nintendo’s motion to transfer, finding that nearly all of the public and private interest factors delineated in its 2008 In re TS Tech decision (see IP Update, Vol. 12, No. 1) favored transfer. The Federal Circuit determined that Nintendo of America is incorporated in Washington and has its principal place of business in the Western District of Washington. Further, the Court noted that the majority of the relevant documents, evidence and witnesses are located in the Western District of Washington or Japan; none of the parties, witnesses or evidence have any material connection with the Eastern District of Texas. The Federal Circuit noted that, “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.”
The Federal Circuit rejected the district court’s reasoning that citizens of a the Eastern District of Texas have a “substantial interest” in adjudicating the case and noted that for products sold throughout the United States the citizens of the plaintiff’s chosen venue “have no more or less of a meaningful connection to the case than any other venue.”
Practice Note: For venue purposes, carefully consider the location of the parties, the evidence and the witnesses before selecting a venue. Do not simply select a venue based on the fact that products are sold within that venue or that it is a centralized location.