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Patent Case Transferred to Southern District of Texas

By Michael C. Smith

MGM Well Services, Inc. v. Production Control Services, Inc., 6:10cv00088 (E.D. Tex. 11/22/2010) 

Judge: John D. Love

Holding: Motion to Transfer Venue GRANTED

This is a case that turned on considerations of judicial economy, which Judge Love noted the Federal Circuit has referred to as being a "paramount consideration when determining whether a transfer is in the interest of justice" (quoting In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009).  (Ed. note - Judge Love refers to this case as Volkswagen II to distinguish it from the Fifth Circuit's widely-cited 2008 decision which he laters references in his discussion of the various Federal Circuit opinions on venue.  Readers of my blog and seminar attendees may note I often refer to this decision as VW IV since the Fifth Circuit has actually had two VW cases, in 2004 and 2008 (the latter of which spawned two panel decisions and a an en banc decision, referred to respectively as IIa, IIb, and IIc) and there was a 2008 Federal Circuit VW mandamus case denying the writ (VW III) - which was a precursor to the 2009 decision which similarly denied the writ in the same litigation.  All clear?) 

Back to the facts.  In this case there had been a prior patent infringement action filed by the plaintiff in the Southern District of Texas (including issuance of a Markman ruling, a bench trial, and findings and conclusions), which was also the plaintiff's home forum.  Although the current suit involved two patents not involved in the previous suit "[e]ven a cursory review of the two new patents, however, demonstrates that the patents are overwhelmingly similar. Given that the Southern District of Texas is intimately familiar with the technology at issue, the patents-in-suit and one of the parties, this factor weighs heavily in favor of transfer."

Accordingly, Judge Love concluded that while the defendant had not carried its burden to show that the District of Colorado was "clearly more convenient", it had with respect to the Southern District of Texas, and accordingly ordered the case transferred to that court.

From Docket Navigator.

Full post as published by Eastern District of Texas Federal Court Practice on November 30, 2010 (boomark / email).