Venue Transfer: Federal Circuit Ordered Yet Another Case Transferred Out of Eastern District of Texas (Is this a trend now?)

In re Genentech, No. 09-M901 (Fed. Cir. May 22, 2009):

Holding:

When assessing whether a defendant has met its burden of demonstrating the need to transfer by applying the “public” and “private” factors for determining forum non conveniens mandated by the fifth circuit, “the convenience of the witnesses is probably the single most important factor in transfer analysis” and the witnesses need not be key witnesses. Slip op. at 5-7.

Facts:

Sanofi, a German company, filed a patent infringement lawsuit against Genentech, a California company, in E.D. Tex. Genentech filed a DJ action on the same day in N.D. Cal. A substantial number of witnesses reside in California and none in Texas. Genentech then sought to transfer the case to N.D. Cal. under 28 U.S.C. § 1404(a), which the E.D. Tex. court denied. Genetech petitioned for a writ of mandamus, and the Federal Circuit granted.

Comments:

The timeline here is very important. Sanofi filed the lawsuit first in E.D. Tex. and Genentech then filed a DJ action in N.D. Cal. Therefore, this may become a trend for alleged infringers to successfully transfer cases out of E.D. Tex., as probably most of the patent infringement cases in E.D. Tex. do not involved many witnesses, if at all, from Texas.

Winner/Loser Predictions:

Winner: Accused Infringers
Loser: Patent Owners Considering E.D. Tex as a forum

Winner: Expert Witnesses Residing in Texas (to boost the balancing analysis, patentees may retain expert witnesses from Texas from the beginning).