United States Court of Appeals
for the Federal Circuit
__________________________
IN RE ACER AMERICA CORPORATION,
CYBERLINK.COM CORPORATION, GATEWAY,
INC., APPLE, INC., ASUS COMPUTER
INTERNATIONAL, INC., DELL, INC., MICROSOFT
CORPORATION, NERO AG, NERO, INC., SONIC
SOLUTIONS, SONY CORPORATION, AND SONY
ELECTRONICS, INC.,
Petitioners.
__________________________
Miscellaneous Docket No. 942
__________________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case no.
2:08-CV-369, Magistrate Judge Charles Everingham IV.
__________________________
ON PETITION FOR WRIT OF MANDAMUS
__________________________
Before GAJARSA, SCHALL, and MOORE, Circuit Judges.
SCHALL, Circuit Judge.
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ELAINE Y. CHOW, K&L Gates LLP, of San Francisco,
California, for petitioners Acer America Corp., et al. With
her on the petition was HOLLY A. HOGAN.
IN RE ACER AMERICA 2
MARK C. SCARSI, Milbank, Tweed, Hadley & McCloy
LLP, of Los Angeles, California, for petitioner Apple Inc.
JOSHUA M. MASUR, Turner Boyd, LLP, of Palo Alto,
California, for petitioner ASUS Computer International.
SCOTT F, PARTRIDGE Baker Botts, LLP, of Houston,
Texas, for petitioner Dell Inc. With him on the petition
was ROGER J. FULGHUM.
GEORGE F. PAPPAS, Covington & Burling LLP, of
Washington, DC, for petitioner Microsoft Corporation.
With him on the petition were RICHARD L. RAINEY, R.
JASON FOWLER and RANGANATH SUDARSHAN. Of counsel
was ROGER A. FORD.
M. CRAIG TYLER, Wilson Sonsini Goodrich & Rosati,
PC, of Austin, Texas, for petitioners Nero, Inc., et al.
RODERICK M. THOMPSON, Farella Braun & Martel
LLP, of San Francisco, California, for petitioner Sonic
Solutions. With him on the petition WAS ANDREW
LEIBNITZ.
LEWIS V. POPOVSKI, Kenyon & Kenyon LLP, of New
York, New York, for petitioners Sony Corporation, et al.
With him on the petition were MICHELLE CARNIAUX and
ZAED M. BILLAH.
BYRON W. COOPER, Goodwin Procter LLP, of Menlo
Park, California, for respondent MedioStream, Inc. With
him on the response were GREGORY SCOTT BISHOP, ANDY
H. CHAN and REBECCA L. UNRUH.
__________________________
3 IN RE ACER AMERICA
ORDER
The twelve petitioners, defendants in a patent in-
fringement action, seek a writ of mandamus to direct the
United States District Court for the Eastern District of
Texas to vacate its orders denying their motion to transfer
venue, and to direct transfer to the United States District
Court for the Northern District of California. The plain-
tiff in the infringement action, MedioStream, Inc., op-
poses. Petitioners reply.
MedioStream, a company headquartered in the
Northern District of California, brought suit in the East-
ern District of Texas against twelve hardware and soft-
ware companies, five of which are also headquartered in
the Northern District of California. The petitioners
moved to transfer venue to the Northern District of Cali-
fornia pursuant to 28 U.S.C. § 1404(a), which authorizes
transfer “[f]or the convenience of parties and witnesses, in
the interest of justice.” The petitioners argued that trial
in the Northern District of California would be convenient
for several of the parties and witnesses. The district court
denied the motion, based largely on the presence of one
petitioner, Dell, Inc., which is headquartered in Round
Rock, Texas, which is outside the Eastern District and
some 300 miles from Marshall, Texas, where the litigation
is pending.
Applying Fifth Circuit law in cases arising from dis-
trict courts in that circuit, this court has held that man-
damus may be used to correct a patently erroneous denial
of transfer. See In re Nintendo Co., 589 F.3d 1194 (Fed.
Cir. 2009); In re Hoffmann-La Roche Inc., 587 F.3d 1333
(Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed.
Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed.
Cir. 2008); see also In re Volkswagen of Am., Inc., 545 F.3d
304 (5th Cir. 2008) (en banc).
IN RE ACER AMERICA 4
In determining whether the transferee venue is
clearly more convenient, the Fifth Circuit applies the
public and private factors used in forum non conveniens
analysis. Volkswagen, 545 F.3d at 314 n.9. As we noted
in TS Tech, the private interest factors include (1) the
relative ease of access to sources of proof; (2) the availabil-
ity of compulsory process to secure the attendance of
witnesses; (3) the cost of attendance for willing witnesses;
and (4) all other practical problems that make a trial
easy, expeditious, and inexpensive. 551 F.3d at 1319.
The public interest factors include (1) the administrative
difficulties flowing from court congestion; (2) the local
interest in having localized interests decided at home; (3)
the familiarity of the forum with the law that will govern
the case; and (4) the avoidance of unnecessary problems of
conflicts of laws or in the application of foreign law. Id.
All of the U.S.-based companies in this case except for
Dell are headquartered in California, including six com-
panies actually located within the Northern District of
California. Meanwhile, no party is headquartered in the
Eastern District of Texas. Our prior orders in venue
transfer cases make clear that the combination of multi-
ple parties being headquartered in or near the transferee
venue and no party or witness in the plaintiff’s chosen
forum is an important consideration. See Nintendo, 589
F.3d at 1198 (“[I]n 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 trans-
fer.”); see also Hoffmann, 587 F.3d at 1336 (emphasizing
the stark contrast in relevance, convenience, and fairness
between the two venues); TS Tech, 551 F.3d at 1320
5 IN RE ACER AMERICA
(same). With that in mind, we turn to the § 1404(a)
factors relevant to the outcome of this petition. 1
One important factor in a § 1404(a) calculus is the
convenience of the witnesses. A substantial number of
party witnesses, in addition to the inventor and prosecut-
ing attorneys, reside in or close to the Northern District of
California. 2 If all of these witnesses were required to
travel to the Eastern District of Texas, the parties would
likely incur significant expenses for airfare, meals, and
lodging, as well as losses in productivity from time spent
away from work. See Volkswagen, 545 F.3d at 317. In
1 The district court determined without dispute
here by the parties that the court congestion, familiarity
with governing law, and conflict of law factors do not
favor either venue. The parties also do not dispute the
district court’s proper determination that MedioStream
could have originally brought this suit in the Northern
District of California.
2 The inventor, prosecuting patent attorneys, and
identified potential employee witnesses of MedioStream
all reside within the Northern District of California, with
the exception of MedioStream’s Chief Technical Officer,
who resides in Bedford, Massachusetts. Apple states that
all of its potential witnesses are also located in Northern
California. ASUS states that many of its potential wit-
nesses would likely reside in Fremont, California, which
is in the Northern District of California, and Acer and
Gateway state that many of their potential witnesses
would likely come from California. Sonic Solutions’ Chief
Technology Officer, who is also a resident of Northern
California, states without contradiction that he is the
person in the company who is most familiar with the
software development process. Additionally, Nero’s
executives and at least one of its software developers who
authored the source code relevant to these proceedings
reside in California. Finally, Sony and Microsoft identi-
fied potential witnesses in San Diego, California, and
Redmond, Washington, respectively, which are much
closer to Northern California than to Eastern Texas.
IN RE ACER AMERICA 6
addition, these witnesses will suffer the “personal costs
associated with being away from work, family, and com-
munity.” Id. These costs would be significantly mini-
mized or avoided by transferring the case to Northern
California. MedioStream maintains that the trial court
correctly determined that this factor weighed in neither
venue’s favor because of the potential for more than one
Dell employee testifying. The number of Dell witnesses,
even if greater than one, will be insignificant, given that
the allegation of infringement against Dell is largely
based on integrated software of other defendants with
headquarters outside of Texas. Thus, the witness conven-
ience factor clearly favors transfer.
The venue’s ability to compel testimony through sub-
poena power is also an important factor in the § 1404(a)
calculus. To the extent, if any, that the subpoena powers
of the Eastern District of Texas pursuant to Rule 45(b)(2)
of the Federal Rules of Civil Procedure may be invoked
with respect to Dell employees, those powers will be of
little other use in this case. By comparison, the subpoena
powers of the Northern District of California may be
expected to be invaluable, in the event process is required
to hale relevant witnesses into court. This factor surely
tips in favor of transfer.
With regard to the location of likely sources of evi-
dence, it appears that a significant portion of the evidence
will be located within the Northern District of California.
MedioStream’s sources of proof are likely located within
the Northern District of California, along with the records
of the prosecuting patent attorneys. Acer’s allegedly
infringing products were “researched, designed, developed
and tested within California,” and “[a]ll decisions regard-
ing marketing, sales, and pricing of any such allegedly
infringing products would have occurred predominantly in
California.” Pet’r’s App. 49. According to ASUS’s disclo-
7 IN RE ACER AMERICA
sures, “[a]ll decisions regarding marketing, sales, and
pricing of any such allegedly infringing products would
have occurred predominantly in Fremont,” which is
within the Northern District of California. Pet’r’s App.
61. Apple’s evidence is likely to be in Northern California,
where Apple states its technical research, design, devel-
opment, and testing work regarding the accused products
occurs. Sonic Solutions has primary offices in Northern
California which likely house potential sources of proof.
Finally, Nero has its primary offices in California and its
sources of proof will therefore likely be located much
closer to the transferee venue.
In comparison, no party identified any likely source of
proof in the Eastern District of Texas. Yet, the district
court concluded that this point was not enough to weigh
this factor in favor of transfer. While Dell may be a
significant source of evidence, Dell’s headquarters lies
outside the Eastern District of Texas. In any event, it is
unreasonable to suggest that Dell’s evidence alone could
outweigh the convenience of having the evidence from
multiple defendants located within the transferee venue
of trial. Thus, the sources of proof factor also weighs
significantly in favor of transfer.
The local interest factor also strongly favors transfer.
While the sale of an accused product offered nationwide
does not give rise to a substantial interest in any single
venue, if there are significant connections between a
particular venue and the events that gave rise to a suit,
this factor should be weighed in that venue’s favor.
Hoffmann, 587 F.3d at 1338. Here, unlike the Eastern
District of Texas, the Northern District of California has a
localized interest in this matter. The company asserting
harm and many of the companies alleged to cause that
harm are all residents of that district, as are the inventor
IN RE ACER AMERICA 8
and patent prosecuting attorneys whose work may be
questioned at trial.
In sum, the convenience of the parties and witnesses,
the sources of proof, the local interest, and the compulsory
process factors all significantly favor transfer. Mean-
while, no factor remotely favors keeping this case in the
Eastern District of Texas. Although Dell may be a likely
source of evidence at trial and is closer to the Eastern
District of Texas, the district court’s conclusion that Dell’s
presence in Texas was enough to preclude transfer here is
in our view a clear abuse of discretion. We therefore
grant the petition.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is granted. The
District Court for the Eastern District of Texas is directed
to vacate its orders denying petitioners’ motion to transfer
venue, and to direct transfer to the United States District
Court for the Northern District of California.
FOR THE COURT
December 3, 2010 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: Joshua M. Masur, Esq.
Elaine Y. Chow, Esq.
Mark C. Scarsi, Esq.
Scott F. Partridge, Esq.
George F. Pappas, Esq.
9 IN RE ACER AMERICA
M. Craig Tyler, Esq.
Roderick M. Thompson, Esq.
Lewis V. Popovski, Esq.
Byron W. Cooper, Esq.
Clerk, United States District Court For The Eastern
District Of Texas