United States Court of Appeals
for the Federal Circuit
______________________
IN RE TOYOTA MOTOR CORPORATION, TOYOTA
MOTOR SALES, U.S.A., INC., TOYOTA MOTOR
ENGINEERING & MANUFACTURING NORTH
AMERICA, INC., TOYOTA MOTOR
MANUFACTURING KENTUCKY, INC., TOYOTA
MOTOR MANUFACTURING, INDIANA, INC., AND
GULF STATES TOYOTA, INC.,
______________________
2014-113
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
Nos. 6:12-cv-404-MHS, 6:12-cv-405-MHS, 6:12-cv-406-
MHS, 6:12-cv-408-MHS, 6:12-cv-409-MHS and 6:12-cv-
410-MHS, Judge Michael H. Schneider.
______________________
ON MOTION
______________________
THOMAS R. MAKIN, Keynon & Keynon LLP, of New
York, New York, for petitioner. With him on the petition
were GEORGE E. BADENOCH, JOHN FLOCK, and A. ANTONY
PFEFFER.
ALISA A. LIPSKI, Ahmad, Zavitsanos, Anaipakos, Alavi
& Mensing P.C. of Houston, Texas, for respondent. With
her on the response was JAMIE ALAN AYCOCK.
______________________
2 IN RE TOYOTA MOTOR CORPORATION
Before PROST, O’MALLEY, and TARANTO, Circuit Judges.
TARANTO, Circuit Judge.
ORDER
In this patent-infringement case, the United States
District Court for the Eastern District of Texas entered an
order denying a motion to sever the claims against the
Gulf States defendant from the claims against all the
remaining defendants (we refer to the latter collectively
as “Toyota”), to transfer the resulting separate action
against Toyota to the United States District Court for the
Eastern District of Michigan, and to stay the retained
claims against Gulf States. Toyota and Gulf States seek a
writ of mandamus directing the district court to grant the
motion. Plaintiff American Vehicular Sciences LLC
(AVS), which owns the patents at issue, opposes.
A district court may “transfer any civil action to any
other district or division where it might have been
brought or to any district or division to which all parties
have consented.” 28 U.S.C. § 1404(a). Applying Fifth
Circuit law in cases from district courts in that circuit,
this court has granted writs of mandamus to correct
denials of transfer that were clear abuses of discretion
under governing legal standards. See In re Microsoft
Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Nintendo,
Ltd., 589 F.3d 1194 (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); accord In re Volkswagen of
Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc).
AVS brought this suit in the Eastern District of Texas
in 2012, five months after AVS was incorporated in the
Western District of Texas. AVS is a subsidiary of patent-
licensing and -enforcing company Acacia Research Inc.
and shares an office in the Eastern District of Texas with
other subsidiaries of Acacia. At least some of the patents
at issue are in the same family as patents that were the
IN RE TOYOTA MOTOR CORPORATION 3
subject of cases litigated in the Eastern District of Michi-
gan from the early 2000s to 2011. See, e.g., Auto. Techs.
Int’l, Inc. v. Delphi Corp., 776 F. Supp. 2d 469 (E.D. Mich.
2011); Auto. Techs. Int’l, Inc. v. Siemens VDO Auto. Corp.,
669 F. Supp. 2d 836 (E.D. Mich. 2009).
A few months after this suit began, Toyota and Gulf
States filed a motion making three related requests.
Invoking Fed. R. Civ. P. 21, they moved to sever the
claims against Gulf States. Invoking 28 U.S.C. § 1404(a),
they moved to transfer the claims against Toyota to the
Eastern District of Michigan. After transfer of the claims
against Toyota, they argued, the remaining claims
against Gulf States should be stayed pending resolution of
the transferred case in Michigan. The transfer and stay
requests are related because, they said, Gulf States could
not be sued in the Eastern District of Michigan. Gulf
States is located in Houston, Texas (i.e., the Southern
District of Texas), and is an independent distributor of
Toyota vehicles in Arkansas, Louisiana, Mississippi,
Oklahoma, and Texas.
The district court, adopting the ruling of the magis-
trate judge, did not rule on the requests to sever and stay
separately from the request to transfer. Instead, it set
Gulf States to one side to consider whether the standards
for transferring the claims against Toyota are met. The
court held that they are not, concluding that “the conven-
ience factors do not indicate that transfer to the Eastern
District of Michigan would be clearly more convenient.”
Based on that transfer denial, the court denied the sever-
ance-and-stay motion, stating that “there is little, if any,
reason to sever and stay the claims against Gulf States.”
In reaching its conclusion about transfer, the court
found no factor favoring retention of the claims against
Toyota in the Eastern District of Texas. In particular, it
did not count the recent opening of an office by AVS as
weighing in favor of the transferor forum. Cf. In re Mi-
4 IN RE TOYOTA MOTOR CORPORATION
crosoft, 630 F.3d at 1364-65. On the other hand, the
district court found that several factors favor transfer to
the Eastern District of Michigan. In particular, the court
determined that the interest in ease of access to sources of
proof weighs in favor of transfer. It also determined that
transfer is supported by the public interest factor that
looks at local interests in the litigation. Those determina-
tions are amply supported.
The district court found that two factors—the availa-
bility of compulsory process to secure attendance of wit-
nesses and the cost of attendance for willing witnesses—
are neutral regarding transfer. That determination
appears to be incorrect. No non-party witnesses have
been identified as being within the Eastern District of
Texas. 1 On the other hand, it appears undisputed that a
number of witnesses in the Eastern District of Michigan
have knowledge potentially relevant to infringement and
validity issues, even if it is not possible at present to
specify further just how material their testimony might be
to the yet-undeveloped issues in the case. The comparison
between the transferor and transferee forums is not
altered by the presence of other witnesses and documents
in places outside both forums. See In re Nintendo, 589
F.3d at 1199-200; In re Genentech, 566 F.3d at 1346. This
comparison appears not to be neutral, but to favor trans-
fer.
1 AVS asserts in its response to the mandamus pe-
tition that “witnesses for AVS are located in the EDTX.”
But the only cited evidence is a document stating no more
than that AVS is “located in Texas” and “any of its wit-
nesses would have to travel to Michigan.” That statement
does not establish that there are witnesses in the Eastern
District of Texas, and the district court did not rely on
AVS’s statement.
IN RE TOYOTA MOTOR CORPORATION 5
We need not draw any definitive conclusion, however,
about the district court’s determination in that respect.
Nor need we disagree with, or further analyze, the district
court’s treatment of certain other related litigation as
neutral regarding transfer here. The court noted that the
Eastern District of Michigan had been home to several
cases involving patents in the same family, breeding
decisions and familiarity of some relevance to the present
case. The district court in this case also noted that the
Eastern District of Texas is currently home to several
other cases involving the patents at issue here, though
AVS initiated those cases more or less simultaneously
with the present case. 2
Taken on its own terms, the district court’s analysis
presents a clear overall picture: nothing favors the trans-
feror forum, whereas several factors favor the transferee
forum. The analysis may not show that the transferee
forum is far more convenient. But that is not what is
required. With nothing on the transferor-forum side of
the ledger, the analysis shows that the transferee forum
is “clearly more convenient.” In re Volkswagen, 545 F.3d
at 315 (emphasis added); In re TS Tech., 551 F.3d at 1320
(“Fifth Circuit precedent clearly forbids treating the
plaintiff’s choice of venue as a distinct factor in the
§ 1404(a) analysis”). In these circumstances, the district
court’s no-transfer conclusion was a clear abuse of discre-
tion.
The district court declined to sever (or stay) the
claims against Gulf States based entirely on its determi-
nation that transfer would not be appropriate in any
event. Because we reverse that premise, the district court
must newly address the severance-and-stay motion on
2 Petitioners state, without contradiction, that one
of those cases has settled and transfer motions are pend-
ing in others.
6 IN RE TOYOTA MOTOR CORPORATION
remand. It must do so on the premise that, putting Gulf
States aside, Toyota has a clear right to transfer. The
district court cited a district court decision, which in turn
cites many other district court decisions, addressing
requests for severance coupled to transfer requests. See
Shifferaw v. Emson USA, No. 2:09-CV-54, 2010 WL
1064380 (E.D. Tex. Mar. 18, 2010). If the district court
severs the claims against Gulf States, the remainder of
the case must be transferred.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is granted, the
order denying the motion to transfer, sever, and stay is
vacated, and the case is remanded for further proceedings
consistent with this Order.
FOR THE COURT
April 3, 2014 /s/ Daniel E. O’Toole
Date Daniel E. O’Toole
Clerk of Court