United States Court of Appeals
for the Federal Circuit
__________________________
IN RE VERIZON BUSINESS NETWORK SERVICES
INC. VERIZON ENTERPRISE DELIVERY LLC,
VERIZON SERVICES CORP., AT&T CORP., QWEST
COMMUNICATIONS CORPORATION, AND QWEST
CORPORATION,
Petitioners.
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Miscellaneous Docket No. 956
__________________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
case no. 08-CV-0215, Judge T. John Ward.
__________________________
ON PETITION FOR WRIT OF MANDAMUS
__________________________
Before LOURIE, GAJARSA, and LINN, Circuit Judges.
LINN, Circuit Judge.
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BRYANT C. BOREN, JR., Baker Botts LLP, of Palo Alto,
California, for petitioner AT&T Corporation. With him on
the petition were CHRISTOPHER W. KENNERLY, KEVIN E.
CADWELL and JOSHUA J. PARKER.
IN RE VERIZON BUSINESS 2
BRIAN D. ROCHE, Reed Smith LLP, of Chicago, Illinois,
for petitioners Qwest Communications Corporation, et al.
With him on the petition was DOYLE B. JOHNSON.
GEOFFREY P. EATON, Winston & Strawn LLP, of
Washington, DC, for petitioners Verizon Business
Network Services Inc., et al. With him on the petition
were CHARLES B. MOLSTER, III, PETER C. MCCABE, III and
KURT A. MATHAS. Of counsel were JOHN THORNE, Verizon
Corporation Resources Group LLC, of Arlington, Virginia;
and LEONARD C. SUCHYTA and CAREN K. KHOO, of Basking
Ridge, New Jersey.
DOUGLAS A. CAWLEY, McKool Smith, P.C., of Dallas,
Texas, for respondent Red River Fiber Optic Corporation.
With him on the response were DAVID SOCHIA,
CHRISTOPHER T. BOVENKAMP and STEVEN CALLAHAN.
ORDER
Section 1404(a) of Title 28 of the United States Code
authorizes a change of venue from one district court to
another “[f]or the convenience of parties and witnesses, in
the interest of justice.” The principal question in this
petition for a writ of mandamus is whether the trial court
could plausibly justify denying transfer to a far more
convenient venue based solely on its previous handling of
a lawsuit involving the same patent that settled more
than five years before this suit was filed. Because we
cannot discern a supportable basis for that conclusion, we
grant the petition.
I.
This petition arises out of a patent infringement suit
against the six petitioner-defendants, Verizon Services
Corp., Verizon Business Network Services Inc., Verizon
3 IN RE VERIZON BUSINESS
Enterprise Delivery LLC, AT&T Corp., Qwest
Corporation, and Qwest Communications Corporation,
brought by the respondent-plaintiff, Red River Fiber
Optic Corporation. Red River’s complaint asserts that the
defendants’ end-to-end fiber optic transmission systems
infringe U.S. Patent No. 5,555,478, entitled “Fiber optic
information transmission system.”
Red River brought this suit in the Eastern District of
Texas. Although Red River is operated from Oklahoma, it
incorporated under the laws of Texas and asserts that its
principal place of business is now in Marshall, Texas.
According to Red River, it is “a Texas corporation that
exists to improve the state of technology by licensing [its
patent].” Respondent’s Opp’n at 8.
The petitioners moved to transfer this case to the
Northern District of Texas, Dallas Division,
approximately 150 miles away. The motion was initially
denied by a Magistrate Judge. In his decision, the
Magistrate agreed with the petitioners that the Northern
District of Texas, Dallas Division would likely be more
convenient for the parties and the witnesses. He further
noted that a number of party witnesses resided within
100 miles of Dallas and no witness resided within 100
miles of Marshall, Texas. However, the Magistrate held
that judicial economy favored maintaining this suit in
Marshall, Texas. The Magistrate noted that the court
had previously handled a lawsuit involving the same
patent and had construed 25 of the patent’s terms. That
previous suit settled in 2003.
The petitioners sought review of that order with the
district court, contending that the length of time between
the two cases and the more recent reexamination
warranted a result contrary to the Magistrate’s decision.
The district court agreed with the Magistrate. The court
noted that despite the reexamination, “there would be an
overlap of issues for claim construction allowing the Court
IN RE VERIZON BUSINESS 4
to take advantage of the built-in efficiencies that result
from having the same Court hearing related cases.” Red
River Fiber Optic Corp. v. Verizon Servs. Corp., 08-CV-
0215, slip op. at 2 (E.D. Tex. Aug. 3, 2010). The court
further noted that transferring the case now would not
only waste those built-in efficiencies but in addition “the
past two years of litigation before this Court will have to
be duplicated.” Id.
II.
A motion to transfer under § 1404(a) calls upon the
trial court to weigh a number of case-specific factors based
on the individualized facts on record. See Stewart Org.,
Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). Although a
trial court has great discretion in these matters,
mandamus may issue when the trial court’s application of
those factors creates a patently erroneous result. In re
Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008)
(en banc); see also In re TS Tech USA Corp., 551 F.3d
1315, 1318-19 (Fed. Cir. 2008).
In Volkswagen, the Fifth Circuit sitting en banc
granted mandamus and determined that a significant
number of witnesses and parties were located within 100
miles of the Dallas Division and could be deposed and
testify without significant travel or expense, while no
witness or party was located within the Marshall
Division. 545 F.3d at 316-17. The Fifth Circuit held that
the trial court’s denial of transfer was patently erroneous,
in part because every witness would be required to
expend significant time and cost to attend trial.
This case is in many respects analogous to
Volkswagen. As in that case, there is a stark contrast in
convenience and fairness with regard to the identified
witnesses. It appears that many witnesses reside within
100 miles of the Dallas Division and would also be subject
to the Northern District’s subpoena powers. Meanwhile,
5 IN RE VERIZON BUSINESS
it is undisputed that no witness resides within 100 miles
of the Marshall Division. Thus, maintaining trial in the
Marshall Division would require witnesses to undergo the
cost, time, and expense of travel, which would be
significantly reduced if this case was transferred to the
Dallas Division.
Red River attempts to distinguish this case from
Volkswagen on the grounds that it has a presence in the
Eastern District of Texas and has maintained sources of
proof in Marshall, Texas from its prior litigation in the
Eastern District of Texas that settled in 2003. Red River
itself, however, acknowledges that these documents are
artifacts of its prior litigation and that it has no
employees in its offices in the Eastern District of Texas.
Red River alternatively suggests that perhaps Oklahoma,
where its sole owner resides, should be considered its
actual place of business. See Respondent’s Opp’n at pg.
24, n.20 (“If this Court concludes that Red River’s
Marshall-based location and documents are not entitled to
any weight, it should also conclude that Red River, for
transfer purposes, is located in Oklahoma”). In any event,
it is clear that trial in Dallas would be far more
convenient.
Red River contends that despite the contrast in
convenience between the venues, denial of transfer was
nevertheless plausible. However, Red River’s basis for
that conclusion is the trial court’s previous handling of a
lawsuit involving the same patent that settled more than
five years before this suit was filed. The Eastern District
of Texas would have to relearn a considerable amount
based on the lapse in time between the two suits and
would likely have to familiarize itself with reexamination
materials that were not part of the record during the
previous suit.
To interpret § 1404(a) to hold that any prior suit
involving the same patent can override a compelling
IN RE VERIZON BUSINESS 6
showing of transfer would be inconsistent with the
policies underlying § 1404(a). We recently advised
against such ironclad rules in In re Vistaprint Ltd., 628
F.3d 1342, 1347, n.3 (Fed. Cir. 2010) and we heed that
advice on these facts. In Vistaprint, we stated:
Our holding today does not mean that, once
a patent is litigated in a particular venue the
patent owner will necessarily have a free
pass to maintain all future litigation
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 underlying
technology and accusing similar services, we
cannot say the trial court clearly abused its
discretion in denying transfer.
Id.
In Vistaprint, we denied mandamus to overturn a
denial of transfer and determined that the district court
properly considered both its previous experience
construing claims of the patent at issue and co-pending
litigation before the district court involving the same
patent and underlying technology. In this case, there is
no assertion that there is an additional pending lawsuit in
the Eastern District involving the patent and technology.
Absent that, we deem the Eastern District's previous
claim construction in a case that settled more than five
years before the filing of this lawsuit to be too tenuous a
reason to support denial of transfer.
Accordingly,
IT IS ORDERED THAT:
7 IN RE VERIZON BUSINESS
The petition for a writ of mandamus is granted.
FOR THE COURT
March 23, 2011 /s/ Jan Horbaly
Date Jan Horbaly
Clerk