On December 2, 2011, the Federal Circuit asserted mandamus power to order the District of Delaware (Judge Robinson) to transfer a pending patent litigation to the Northern District of California under 28 U.S.C. § 1404 (a). In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). Applying Third Circuit law, the Federal Circuit found that the district court abused its discretion by denying the defendant's motion to transfer venue to a more convenient forum.
According to the Federal Circuit, the district court primarily erred by making two private interest factors effectively dispositive of the transfer inquiry — (1) the plaintiff's choice of forum and (2) the defendant's place of incorporation. With regard to the plaintiff's choice of forum, the Federal Circuit explained that the plaintiff's choice of forum was entitled to less deference because the plaintiff brought suit in a venue other than its home forum. As for the second factor, the Federal Circuit stated that the district court's heavy reliance on the defendant's state of incorporation was inappropriate. In fact, the Federal Circuit arguably questioned whether the state of incorporation should even be considered in a § 1404 venue transfer inquiry, noting that "[n]either § 1404 nor Jumara [the leading Third Circuit case] list a party's state of incorporation as a factor for a venue inquiry."
In addition, the Federal Circuit criticized the district court for refusing to consider two other private interest factors — the convenience of the witnesses and the location of the books and records. The district court dismissed these factors as "outdated [and] irrelevant," noting that they should be given little weight, if any, except when truly regional defendants are litigating. Although the Federal Circuit acknowledged that current technology may "alter the weight given to these factors," it held that it is "improper" to ignore these factors entirely. (The Federal Circuit, however, did not provide any guidance regarding the proper weight to be applied.)
What This Means for You
The Federal Circuit's decision indicates that, for a plaintiff not filing on its home turf, the ultimate venue in a suit against a Delaware corporation is more likely to be the defendant's principal place of business (or the location of relevant documents and witnesses), rather than the state of the defendant's incorporation. In addition, the Court's decision indicates that litigants should address all of the traditional § 1404 factors (such as the convenience of the witnesses and the location of the books and records), even if those factors seem outdated in light of current technology.
Finally, unlike the Federal Circuit's recent mandamus decisions that transferred cases out of the Eastern District of Texas (e.g., TS Tech and Genentech), this transfer is out of District of Delaware, indicating that the Federal Circuit will entertain mandamus petitions from various jurisdictions.
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