Intellectual Property Law

If there are no sources of proof in the Eastern District of Texas, expect to be transferred

By McKee, Voorhees & Sease, P.L.C.

After the Fifth Circuit's Volkswagen and the Federal Circuit's TS Tech decisions, potential patent plaintiffs should be getting the message:  Don't file in the Eastern District of Texas unless there are actually some sources of proof there.  The Federal Circuit has again granted mandamus ordering the district court to transfer another case out of the district.

In this case, there were no witnesses within the court's subpoena power.  The allegedly infringing product was designed, manufactured, and tested elsewhere.  The plaintiff had no offices in the district.  While 75,000 pages of relevant documents were in the district, they were electronically transferred to the plaintiff's counsel there, apparently for purposes of providing an "anchor" to the district.  The district court held the case was "decentralized," and transfer would only adjust which witnesses would be inconvenienced. 

The Federal Circuit was having none of it, however.  The court observed that the Eastern District of North Carolina had subpoena power over four (of eighteen) non-party witnesses and was also the site of all documentation regarding the development of the accused product.  The court was particularly unimpressed with the presence of the 75,000 pages of documents, stating the notion that these documents were "Texas" documents was "a fiction which appears to have been created to manipulate the propriety of venue."  Because of the utter lack of connection to Texas, the court ordered the district court to transfer the case to North Carolina.

More detail of In re Hoffman-La Roche Inc. after the jump.

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Full post as published by FileWrapper on December 15, 2009 (boomark / email).