United States Court of Appeals
for the Federal Circuit
__________________________
IN RE VISTAPRINT LIMITED AND OFFICEMAX
INCORPORATED,
Petitioners.
__________________________
Miscellaneous Docket No. 954
__________________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
case no. 09-CV-0323, Judge Leonard Davis.
__________________________
ON PETITION FOR WRIT OF MANDAMUS
__________________________
THOMAS J. FRIEL, JR., Cooley LLP, of Palo Alto, Cali-
fornia, for petitioners Vistaprint Limited and Officemax
Incorporated. With him on the petition were LORI R.E.
PLOEGER and MATTHEW P. GUBIOTTI. Of counsel on the
petition was CHRISTOPHER C. CAMPBELL, of Reston, Vir-
ginia.
MICHAEL W. SHORE, Shore Chan Bragalone DePumpo
LLP, of Dallas, Texas, for respondent Colorquick, L.L.C.
With him on the response were ALFONSO GARCIA CHAN,
JUSTIN B. KIMBLE, THERESA DAWSON and DANIEL F.
OLEJKO.
__________________________
IN RE VISTAPRINT 2
Before GAJARSA, SCHALL, and MOORE, Circuit Judges.
SCHALL, Circuit Judge.
ORDER
Vistaprint Limited (Vistaprint) and OfficeMax Incor-
porated (OfficeMax), the defendants in a patent infringe-
ment action, seek a writ of mandamus directing the
United States District Court for the Eastern District of
Texas to vacate its July 22, 2010 order and transfer the
case to the United States District Court for the District of
Massachusetts. The plaintiff in the action, ColorQuick,
L.L.C. (ColorQuick), opposes.
I.
ColorQuick, a New Jersey limited liability company,
brought this suit in the Eastern District of Texas, charg-
ing the petitioners with infringement of its patent relat-
ing to preparing production data for printing. Although
Vistaprint is a foreign corporation, one of its wholly-
owned subsidiaries, Vistaprint USA, Inc., which is not a
party to these proceedings, apparently has a large pres-
ence in Massachusetts. A motion was made to transfer to
the federal district court in that venue, which, according
to the petitioners, is close to the residences of many of
Vistaprint USA, Inc.’s employees who may serve as wit-
nesses at trial and where many of the petitioners’ docu-
ments that may be evidence are stored. OfficeMax is a
Delaware corporation with its principal place of business
in Illinois. The accused OfficeMax services are operated
by Vistaprint for OfficeMax.
The district court denied the motion, weighing consid-
erations of convenience in favor of transfer, but ultimately
concluding that such considerations did not outweigh the
importance of judicial economy. Specifically, the court
noted that it had substantial experience with the patent-
3 IN RE VISTAPRINT
in-suit based on prior litigation involving the plaintiff,
which included a hearing and lengthy opinion construing
various claim terms. The court further noted that there
was also a second, co-pending case before the court be-
tween the plaintiff and another defendant involving the
same patent-in-suit, pertaining to the same underlying
technology, and involving similar accused services.
II.
A.
Mandamus is an extraordinary remedy, available only
upon a demonstration by the petitioner of a “clear and
indisputable” right to the relief sought. Allied Chem.
Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). In this case,
that requires the petitioners to demonstrate that the
court’s denial of transfer was so patently erroneous as to
amount to a clear abuse of discretion. In re Volkswagen of
Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc)
(Volkswagen I). Because this petition does not raise
issues unique to our jurisdiction, we apply the law of the
regional circuit in which the district court sits, in this case
the law of the Fifth Circuit. In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008). 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 I, 545
F.3d at 314 n.9.
B.
A trial court has broad discretion in transfer decisions
pursuant to 28 U.S.C. § 1404(a), 1 but that is not the same
1 For the convenience of parties and witnesses, in
the interest of justice, a district court may transfer any
civil action to any other district court or division where it
might have been brought.” 28 U.S.C. § 1404(a).
IN RE VISTAPRINT 4
as saying that it may accord weight simply as it pleases.
Our recent decision in In re Zimmer Holdings, Inc., 609
F.3d 1378 (Fed. Cir. 2010), makes clear that where the
convenience factors strongly weigh in favor of the trans-
feree venue, a decision to deny transfer based solely on
“negligible” judicial efficiencies may be such a clear abuse
of discretion as to warrant extraordinary relief. According
to the petitioners, the trial court here gave inappropriate
weight to judicial economy considerations.
We cannot say, however, that the weight the court af-
forded judicial economy here amounted to a “patently
erroneous result.” Volkswagen I, 545 F.3d at 310. Even if
it was the magistrate and not the trial judge who gained
substantial experience in construing the patent claims
during prior litigation, it was not plainly incorrect to
conclude that having the same magistrate judge handle
this and the co-pending case involving the same patent
would be more efficient than requiring another magis-
trate or trial judge to start from scratch. Similarly, even
if trying these two related cases before the same court
may not involve the same defendants and accused prod-
ucts, it does not appear on its face erroneous to conclude
that maintaining these two cases before the same court
may be beneficial from the standpoint of judicial re-
sources.
C.
Because the district court has taken the plausible po-
sition that denial of transfer would preserve judicial
economy, the petitioners are only left with their argu-
ments that the balance of considerations was improper.
In this regard, the petitioners essentially urge that it is
always improper for a district court to deny transfer based
on judicial economy when all of the convenience factors
clearly favor transfer. ColorQuick cites several cases,
5 IN RE VISTAPRINT
specifically In re Volkswagen of America, Inc., 566 F.3d
1349 (Fed. Cir. 2009) (Volkswagen II), Regents of the
University of California v. Eli Lilly & Co., 119 F.3d 1559
(Fed. Cir. 1997), and Coffey v. Van Dorn Iron Works, 796
F.2d 217 (7th Cir. 1986), as having already rejected that
argument. 2 Although these cases are relevant, none on
close inspection actually foreclose the petitioners’ conten-
tion. In Volkswagen II, for example, the court never
addressed or applied the convenience factors and there-
fore could not have held that judicial economy could be
determinative when the convenience factors strongly
weigh in favor of transfer. In Regents, the convenience
factors did not clearly favor transfer, but were instead
said to be “in equipoise.” 119 F.3d at 1565. Finally,
despite the Seventh Circuit’s strong statement in Coffey,
it was dicta as the court in that case addressed neither
factors of convenience nor factors of judicial economy.
As the petitioners see it, under § 1404(a), the conven-
ience factors are deserving of “most importance.” We
have certainly noted the importance of the convenience
factors. See In re Genentech, Inc., 566 F.3d 1338, 1343
2 In Volkswagen II, 566 F.3d at 1351, this court
reasoned that “[i]n this case, the existence of multiple
lawsuits involving the same issues is a paramount consid-
eration when determining whether a transfer is in the
interest of justice.” Similarly, this court stated in Regents
that “in a case such as this in which several highly techni-
cal factual issues are presented and the other relevant
factors are in equipoise, the interest of judicial economy
may favor transfer to a court that has become familiar
with the issues.” 119 F.3d at 1565. The Seventh Circuit
in Coffey reasoned along the same lines, stating that
“[t]he ‘interest of justice’ is a separate component of a
§ 1404(a) transfer analysis . . . and may be determinative
in a particular case, even if the convenience of the parties
and witnesses might call for a different result.” 796 F.2d
at 220.
IN RE VISTAPRINT 6
(Fed. Cir. 2009) (noting that the convenience of the wit-
nesses is “important”); In re Hoffmann-La Roche Inc., 587
F.3d 1333, 1336 (Fed. Cir. 2009) (“As in Volkswagen [I],
TS Tech, and our most recent decision, In re Genentech,
Inc., 566 F.3d 1338 (Fed. Cir. 2009), there is a stark
contrast in relevance, convenience, and fairness between
the two venues.”). In fact, In re Nintendo Co., 589 F.3d
1194, 1198 (Fed. Cir. 2009), held that “in 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 transfer.”
However, Volkswagen I, TS Tech, Genentech, Hoff-
man, and Nintendo did not present the court with a
showing of judicial economy comparable to that in this
case. In Volkswagen I, TS Tech, and Nintendo, considera-
tions of judicial administration/judicial economy were
neutral or were otherwise inapplicable to the outcome of
the petition. At the same time, in Hoffmann, the court
was presented with a case where there was no evidence
that judicial economy favored venue in the Eastern Dis-
trict of Texas. Moreover, the plaintiff in Hoffmann was
found to have “manipulate[d] the propriety of venue” in
the Eastern District by transferring some 75,000 pages of
documents to the district. 587 F.3d at 1337. Finally, in
Genentech, this court was not faced with the analysis
relating to judicial economy that is presented in this case.
In contrast, as noted above, here the district court cor-
rectly held a denial of transfer would produce gains in
judicial economy.
At the end of the day, § 1404(a) balances a number of
case-specific factors, not just convenience. Further,
§ 1404(a) commits the balancing determination to the
sound discretion of the trial court based not on per se
rules but rather on an “individualized, case-by-case
7 IN RE VISTAPRINT
consideration of convenience and fairness.” Van Dusen v.
Barrack, 376 U.S. 612, 622 (1964); see also Volkswagen I,
545 F.3d at 312 n.7 (“‘Unless it is made clearly to appear
that the facts and circumstances are without any basis for
a judgment of discretion, the appellate court will not
proceed further to examine the district court’s actions in
the situation.’” (citation omitted)). Our reluctance to
interfere is not merely a formality, but rather a long-
standing recognition that a trial judge has a superior
opportunity to familiarize himself or herself with the
nature of the case and the probable testimony at trial,
and ultimately is better able to dispose of these motions.
See A. Olinick & Sons v. Dempster Bros., Inc., 365 F.2d
439, 444 (2d Cir. 1966).
For those reasons, we find unpersuasive the petition-
ers’ argument that their proposed bright-line rule favor-
ing convenience factors would bring about more
uniformity and fairness. In American Dredging Co. v.
Miller, 510 U.S. 443, 455 (1994), the Supreme Court
explained that “[t]he discretionary nature of the doctrine,
combined with the multifariousness of the factors rele-
vant to its application . . . make uniformity and predict-
ability of outcome almost impossible.” To that end, the
Court has repeatedly rejected the use of per se rules in
forum non conveniens analyses. See, e.g., Piper Aircraft
Co. v. Reyno, 454 U.S. 235, 249-50 (1981); Koster v. Lum-
bermens Mut. Cas. Co., 330 U.S. 518, 527 (1947).
Petitioners further note that failure to adopt their
rule may allow for inconvenient and costly trials and
provide a safe harbor for defendants that artificially
manipulate venue. While these are perhaps valid con-
cerns, we cannot say that there is enough justification
here to depart from the above-mentioned principles.
First, there is no evidence that such manipulation has
occurred in this case. Second, courts have consistently
IN RE VISTAPRINT 8
held that judicial economy plays a paramount role in
trying to maintain an orderly, effective, administration of
justice. See Cont’l Grain Co. v. Barge FBL-585, 364 U.S.
19, 26 (1960) (emphasizing the importance that judicial
economy and efficiency play in a § 1404(a) analysis);
Volkswagen II, 566 F.3d at 1351; Coffey, 796 F.2d at 220.
D.
The only matter left for the court to decide is whether the
trial court improperly balanced judicial economy against
convenience in this specific case. Although Zimmer
demonstrates that a clear abuse of discretion in balancing
convenience against judicial economy under § 1404 is not
outside the scope of correctable error on mandamus
review, 609 F.3d at 1382, the gain in judicial economy
from keeping this case in the Eastern District of Texas is
more than negligible. Here, the trial court became very
familiar with the only asserted patent and the related
technology during a prior litigation. That, coupled with
the fact there is co-pending litigation before the trial court
involving the same patent and underlying technology,
provides a substantial justification for maintaining suit in
the Eastern District of Texas. In addition, although some
potential witnesses and sources of proof located in the
transferee venue warrant weighing convenience factors in
favor of transfer, no defendant party is actually located in
the transferee venue and the presence of the witnesses in
that location is not overwhelming. “Each case turns on its
facts,” Koster, 330 U.S. at 528, and the court’s thorough
analysis here suggests that this case was decided based
on an “individualized, case-by-case consideration” of the
relevant factors, balancing convenience and efficiency.
Van Dusen, 376 U.S. at 622. We thus cannot say that the
trial court’s balancing was so unreasonable as to warrant
the extraordinary relief of mandamus.
9 IN RE VISTAPRINT
In sum, there are cases where to hold a trial court to a
meaningful application of the § 1404(a) factors presents
only one correct outcome. In those cases, mandamus may
be appropriate. A case such as this, however, shows that
a meaningful application of the factors often creates a
reasonable range of choice. Under such circumstances, it
is entirely within the district court’s discretion to conclude
that in a given case the § 1404(a) factors of public interest
or judicial economy can be of “paramount consideration,”
Volkswagen II, 566 F.3d at 1351, and as long as there is
plausible support of record for that conclusion we will not
second guess such a determination, even if the conven-
ience factors call for a different result. 3
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is denied.
3 Our holding today does not mean that, once a pat-
ent is litigated in a particular venue the patent owner will
necessarily have a free pass to maintain all future litiga-
tion involving that patent in that venue. However, where,
as here, the trial court performed a detailed analysis
explaining that it is very familiar with the only asserted
patent and the related technology, and where there is a
co-pending litigation before the trial court involving the
same patent-in-suit, and pertaining to the same underly-
ing technology and accusing similar services, we cannot
say the trial court clearly abused its discretion in denying
transfer.
IN RE VISTAPRINT 10
FOR THE COURT
December 15, 2010 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: Thomas J. Friel, Jr., Esq.
Michael W. Shore, Esq.