Case: 21-193 Document: 10 Page: 1 Filed: 11/10/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: QUEST DIAGNOSTICS INCORPORATED,
Petitioner
______________________
2021-193
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00972-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before DYK, PROST, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
Quest Diagnostics Incorporated petitions for a writ of
mandamus directing the United States District Court for
the Western District of Texas to transfer this case to the
United States District Court for the Central District of Cal-
ifornia. Ravgen, Incorporated opposes. Because we find the
district court clearly abused its discretion in evaluating the
transfer motion, we grant the petition and direct the dis-
trict court to transfer.
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2 IN RE: QUEST DIAGNOSTICS INCORPORATED
I
Ravgen filed this suit in the federal district court in
Waco, Texas on October 16, 2020, accusing Quest’s QNatal
Advanced test of infringing two patents relating to non-in-
vasive tests for prenatal genetic disorders.
On December 28, 2020, Quest moved to transfer the
case pursuant to 28 U.S.C. § 1404(a), arguing that the Cen-
tral District of California was a more convenient forum.
Quest emphasized that its knowledgeable employees work
in the Central District of California and that third-party
witnesses also reside in the district. And although Quest
maintains patient service centers across the country—in-
cluding in the Western District of Texas—Quest designed,
developed, and continues to perform QNatal Advanced
testing only in the Central District of California. Quest also
argued that Ravgen, headquartered in Maryland, has no
meaningful connections to the Western District of Texas.
Ravgen argued, among other things, that judicial econ-
omy strongly favored denying the motion. Ravgen noted
that it had filed three related complaints in the Western
District of Texas, alleging infringement of the same two pa-
tents. See Complaint at 26, Ravgen, Inc. v. PerkinElmer,
Inc., No. 1:20-cv-822 (W.D. Tex. June 1, 2020), ECF No. 1 1;
Complaint at 18, ¶48, Ravgen, Inc. v. Natera, Inc., No. 1:20-
cv-692 (W.D. Tex. June 1, 2020), ECF No. 1; Complaint at
19, ¶47, Ravgen, Inc. v. Lab’y Corp. of Am. Holdings,
No. 6:20-cv-969 (W.D. Tex. Oct. 16, 2020), ECF No. 1.
After analyzing the public and private interest factors
that govern transfer determinations, the district court de-
nied Quest’s motion on August 20, 2021. The court found
that the local-interest factor slightly favored transfer. But
the court further found that it could likely adjudicate the
1 Ravgen’s case against PerkinElmer was dismissed
on September 30, 2021 based on a joint stipulation.
Case: 21-193 Document: 10 Page: 3 Filed: 11/10/2021
IN RE: QUEST DIAGNOSTICS INCORPORATED 3
case faster than the Central District of California and that
judicial economy considerations weighed strongly against
transfer. In particular, the court noted it was already fa-
miliar with the issues in this case because it had conducted
Markman hearings and construed claims in the earlier-
filed PerkinElmer and Natera cases. Additionally, the court
determined that it could consolidate some proceedings for
this case and the LabCorp case, which were filed on the
same day. The district court found the rest of the transfer
factors neutral. On balance, the district court concluded
that Quest did not show that the transferee venue was
clearly more convenient.
Quest filed this petition on September 30, 2021. We
have jurisdiction under 28 U.S.C. §§ 1651 and 1295.
II
We review transfer determinations in cases arising on
mandamus from district courts in the Fifth Circuit for
“clear abuses of discretion that produce patently erroneous
results.” In re Volkswagen of Am., Inc., 545 F.3d 304, 312
(5th Cir. 2008) (en banc). In general, a writ must satisfy
three conditions: (1) the petitioner must demonstrate a
clear and indisputable right to issuance, (2) the petition
must have no other adequate method of attaining the de-
sired relief, and (3) the writ must be appropriate under the
circumstances. Cheney v. U.S. Dist. Ct., 542 U.S. 367, 380–
81 (2004). “In the § 1404(a) transfer context, however, the
test for mandamus essentially reduces to the first fac-
tor . . . .” In re Apple Inc., 979 F.3d 1332, 1336–37 (Fed. Cir.
2020). Accordingly, on appeal we review whether Quest has
shown a clear and indisputable right to issuance of the writ
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4 IN RE: QUEST DIAGNOSTICS INCORPORATED
by analyzing four public and four private factors that tra-
ditionally govern transfer determinations. 2
First, the district court correctly recognized that “[t]he
convenience of witnesses is the single most important fac-
tor in the transfer analysis.” Order at 6, Ravgen, Inc. v.
Quest Diagnostics Inc., No. 6:20-cv-00972 (W.D. Tex. Aug.
20, 2021), ECF No. 52 (Transfer Order) (citation omitted).
But the court erred in finding that factor neutral. Quest
identified at least five party witnesses located in the Cen-
tral District of California, with one other party witness re-
siding in New Jersey. 3 Ravgen’s witnesses, on the other
hand, all reside in Maryland. Still, the court determined
that this factor was neutral because it found that the
2 The public interest factors are: “(1) the administra-
tive difficulties flowing from court congestion; (2) the local
interest in having disputes regarding activities occurring
principally within a particular district decided in that fo-
rum; (3) the familiarity of the forum with the law that will
govern the case; and (4) the avoidance of unnecessary prob-
lems of conflict of laws or in the application of foreign
law.” In re Juniper Networks, Inc., 14 F.4th 1313, 1317
(Fed. Cir. 2021).
The private interest factors are: “(1) the relative ease
of access to sources of proof; (2) the availability of compul-
sory process to secure the attendance of non-party wit-
nesses whose attendance may need to be compelled by
court order; (3) the relative convenience of the two forums
for potential witnesses; and (4) all other practical problems
that make the trial of a case easy, expeditious, and inex-
pensive.” Id. at 1316–17.
3 The district court presumed that not all of the
listed witnesses would testify at trial. Transfer Order at 7.
We have repeatedly said that discounting witnesses based
on assumptions rather than case-specific evidence is insuf-
ficient. Juniper, 14 F.4th at 1319 (listing cases).
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IN RE: QUEST DIAGNOSTICS INCORPORATED 5
convenience of the Western District of Texas for Ravgen’s
witnesses counterbalanced the convenience of the Central
District of California for Quest’s witnesses.
This analysis is improper. “[W]hen there are numerous
witnesses in the transferee venue and the only other wit-
nesses are far outside the plaintiff’s chosen forum, the wit-
ness-convenience factor favors transfer.” In re Google LLC,
2021-170, 2021 WL 4427899, at *4 (Fed. Cir. Sept. 27,
2021). And even though the physical distance from Mary-
land and New Jersey to the Central District of California
is greater than the distance to Waco, the record does not
show that the total travel time for out-of-district witnesses
would be significantly different. “There is no major airport
in the Waco Division of the Western District of Texas, and
the Waco courthouse is more than 100 miles from the near-
est airport with direct flights to the northeast U.S.” Id.
Streck, Inc., a third party headquartered in Nebraska,
even testified in a sworn declaration that the Central Dis-
trict of California would be more convenient for its wit-
nesses. Ryan Wilkins Declaration at 1–2, Ravgen, Inc. v.
Quest Diagnostics Inc., No. 6:20-cv-00972 (W.D. Tex. Jan.
15, 2021), ECF No. 34, Attachment 1. The district court
clearly abused its discretion by not weighing the witness-
convenience factor in favor of transfer.
Second, the district court erred in its assessment of the
sources-of-proof factor. The court discounted documents lo-
cated in the Central District of California that relate to the
development, validation, testing, and performance of the
accused product. It reasoned that Quest had not shown
that those documents were inaccessible in Western Texas.
Transfer Order at 4–5. While electronic storage makes doc-
uments more widely accessible, this factor remains rele-
vant. See In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir.
2013) (“[T]he question is relative ease of access, not abso-
lute ease of access.”). Moreover, the fact that some evidence
is stored in places outside both forums—like New Jersey,
Maryland, and Nebraska—does not weigh against
Case: 21-193 Document: 10 Page: 6 Filed: 11/10/2021
6 IN RE: QUEST DIAGNOSTICS INCORPORATED
transfer. In re Toyota Motor Corp., 747 F.3d 1338, 1340
(Fed. Cir. 2014). Therefore, the district court clearly abused
its discretion in not weighing this factor slightly in favor of
transfer.
Third, the district court erred in weighing court conges-
tion “strongly against transfer.” Transfer Order at 11. In
doing so, the court relied primarily on a comparison of av-
erage time to trial data for patent cases in the Central Dis-
trict of California against the district court’s “Order
Governing Proceedings,” which “sets patent cases for trial
at 52 weeks after Markman hearings.” Transfer Order at
10. But we have repeatedly explained that “it is improper
to assess the court congestion factor based on the fact that
the Western District of Texas has employed an aggressive
scheduling order for setting a trial date.” In re Juniper, 14
F.4th 1313, 1322 (Fed. Cir. 2021); see also In re Samsung
Elecs. Co., Ltd., 2 F.4th 1371, 1380–81 (Fed. Cir. 2021); Ap-
ple, 979 F.3d at 1344. Because the district court did not
properly find an appreciable difference in docket conges-
tion between the two forums, the district court clearly
abused its discretion in not weighing this factor as neutral.
Fourth, the district court erred in weighing the other-
practical-problems factor “strongly against transfer.”
Transfer Order at 10. The district court pointed to “three
co-pending cases involving the same patents and the sub-
stantial judicial resources this Court has spent on the as-
serted patents, including claim construction.” Transfer
Order at 10. Judicial economy considerations can favor re-
taining a case in the same district as related, co-pending
litigation. See In re Vistaprint Ltd., 628 F.3d 1342, 1346
(Fed. Cir. 2010) (“[I]t 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 magistrate or trial judge
to start from scratch.”). Here, however, the district court
has legally erred in its consideration of this factor.
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IN RE: QUEST DIAGNOSTICS INCORPORATED 7
By the time that Quest filed its motion to transfer with
the district court on December 28, 2020, we had already
instructed the district court on numerous occasions that
“once a party files a transfer motion, disposition of that mo-
tion should take top priority in the case.” Apple, 979 F.3d
at 1343 (listing cases). But instead of promptly considering
the transfer motion, the court waited nearly eight
months—until August 20, 2021—to rule on the transfer
motion. That discovery and Markman hearings in this and
related cases occurred well after the transfer motion was
filed is not a significant factor. The district court gave “un-
due priority to the merits of [the] case” by proceeding
through claim construction despite the pending motion to
transfer. Id. That “should not be counted against that party
in the venue transfer analysis.” Id. Accordingly, the district
court clearly abused its discretion in not weighing this fac-
tor as neutral.
For the foregoing reasons, the district court’s errors
caused a patently erroneous result. We therefore grant
Quest’s petition directing transfer of the case.
IT IS ORDERED THAT:
The petition is granted. The district court’s August 20,
2021 order is vacated, and the district court is directed to
transfer this matter to the United States District Court for
the Central District of California.
FOR THE COURT
November 10, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s25