United States Court of Appeals for
the Federal Circuit
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IN RE MICROSOFT CORPORATION,
Petitioner.
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Miscellaneous Docket No. 944
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On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case no.
09-CV-0366, Judge Leonard Davis.
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NONPRECEDENTIAL ORDER ISSUED: November 8, 2010
PRECEDENTIAL ORDER ISSUED: January 5, 2011
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ON PETITION FOR WRIT OF MANDAMUS
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DAVID J. LENDER, Weil, Gotshal & Manges LLP, of New
York, New York, for petitioner. With him on the petition
were PAUL E. TORCHIA and STEVEN KALOGERAS; AMBER H.
ROVNER, of Houston, Texas; and STACY QUAN, Microsoft
Corporation, of Redmond, Washington.
CHRIS P. PERQUE, Gardere Wynne Sewell LLP, of Hous-
ton, Texas, for respondent Allvoice Developments US, LLC.
With him on the response was STACY R. OBENHAUS, of Dal-
las, Texas.
IN RE MICROSOFT CORP 2
Before NEWMAN, FRIEDMAN, and LOURIE, Circuit Judges.
PER CURIAM.
ORDER
This is a petition for a writ of mandamus from an order
denying a motion to transfer pursuant to 28 U.S.C. §
1404(a). That section authorizes a district court of proper
jurisdiction to nevertheless transfer a case “for the conven-
ience of parties and witnesses, in the interest of justice.”
Because the record plainly shows that the United States
District Court for the Western District of Washington is
clearly more convenient and fair for trial and that the de-
termination of the United States District Court for the
Eastern District of Texas denying transfer was reached by a
clear abuse of discretion, we grant the petition and direct
transfer.
I.
This case arises out of a patent infringement suit
against the petitioner-defendant, Microsoft Corporation,
brought by the respondent-plaintiff, Allvoice Develop-ments
U.S., LLC. Specifically, Allvoice’s complaint asserts that
speech recognition functionality in Microsoft’s XP and Vista
operating systems infringe U.S. Patent No. 5,799,273 enti-
tled “Automated Proofreading Using Interface Linking
Recognized Words to Their Audio Data While Text is Being
Changed.”
Allvoice brought this suit in the Eastern District of
Texas. Allvoice is operated from the United Kingdom by the
patent’s co-inventor and company’s managing member, John
Mitchell. Although Allvoice now maintains an office in
Tyler, Texas, it is not disputed that the entity does not
employ individuals in those offices or anywhere in the
3 IN RE MICROSOFT CORP
United States. Allvoice’s website directs requests and
inquiries to its Texas office, and Mitchell then answers those
requests and inquiries from the U.K.
Microsoft moved to transfer the case to the Western Dis-
trict of Washington, where it maintains its corporate head-
quarters and where a substantial portion of its employees
and its operations are located. Microsoft’s motion indicated
that all of its witnesses relating to sales, marketing and
product direction and prior art speech recognition technology
reside in the Western District of Washington. Microsoft also
indicated that all of its relevant documents and evidence
relating to the marketing, development, and design of the
accused products are located within the Western District of
Washington.
The Eastern District of Texas denied that motion. The
district court explained that both districts had a local inter-
est in adjudicating this matter because Allvoice maintained
offices in the Eastern District of Texas and was incorporated
under the laws of Texas. With regard to the witnesses, the
district court weighed the factor slightly against transfer
because Allvoice had identified potential non-party wit-
nesses not in the Eastern District of Texas but rather in
New York, Massachusetts, and Florida who, according to the
court, would find Texas more convenient for trial. Finally,
with regard to the sources of proof, the district court
weighed this factor only slightly in favor of transfer because
Allvoice had said its documents were maintained in the
Eastern District of Texas.
II.
A motion to transfer under § 1404(a) calls upon the trial
court to weigh a number of case-specific factors relating to
the convenience of the parties and witnesses, and the proper
administration of justice, based on the individualized facts
on record. See Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22,
IN RE MICROSOFT CORP 4
29 (1988). Although a trial court has great discretion in
these matters, we have applied Fifth Circuit law in cases
arising from district courts in that circuit to hold that man-
damus may issue when the trial court’s application of those
factors amounts to a clear abuse of discretion. See, e.g., In re
Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoff-
mann-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).
Thus, in Genentech, this court granted mandamus when
the trial court relied on its central proximity to the wit-
nesses and parties rather than a meaningful application of
the factors. 566 F.3d at 1344. We determined that the
factors should conform to the fact that a significant number
of witnesses and parties were actually located within the
transferee venue and could be deposed and testify without
significant travel or expense, while no witness or party was
located within the plaintiff’s chosen forum. Id. at 1345. We
held that the trial court’s application of the factors was
patently erroneous, in part because a denial of transfer
would require every witness to expend significant time and
cost in order to attend trial.
This case is in many respects analogous to Genentech.
As in that case, there is a stark contrast in convenience and
fairness with regard to the identified witnesses. All indi-
viduals identified by Microsoft as having material informa-
tion relating to the patents reside within 100 miles of the
Western District of Washington. Thus, these witnesses
would not have to undergo considerable cost and expense to
testify and would also be subject to that district’s subpoena
powers. Meanwhile, Allvoice has identified fourteen wit-
nesses, twelve who reside outside Texas and two who are
local Eastern Texas businessmen who bought or used the
accused Microsoft products and are not repre-sented as
having any knowledge of the patent or the issues of the suit.
5 IN RE MICROSOFT CORP
Thus, maintaining trial in the Eastern District of Texas
would similarly require witnesses to undergo the cost, time,
and expense of travel to attend trial, which would be signifi-
cantly minimized if this case were transferred to the West-
ern District of Washington.
Allvoice nevertheless urges that this case is distinguish-
able from Genentech. Allvoice contends that unlike the
plaintiff in that case, it has an established presence in the
Eastern District of Texas. Allvoice’s argument, however,
rests on a fallacious assumption: that this court must honor
connections to a preferred forum made in anticipation of
litigation and for the likely purpose of making that forum
appear convenient.
The Supreme Court has long urged courts to ensure that
the purposes of jurisdictional and venue laws are not frus-
trated by a party’s attempt at manipulation. Thus, in Miller
& Lux, Inc. v. East Side Canal & Irrigation Co., 211 U.S.
293 (1908), the Supreme Court held that a corporation could
not create federal diversity jurisdiction by merely assigning
its claim to an otherwise fictitious subsidiary for just that
purpose. See also Lehigh Min. & Mfg. Co. v. Kelly, 160 U.S.
327 (1895) (same); see also Morris v. Gilmer, 129 U.S. 315,
328 (1889) (“Upon the evidence in this record, we cannot
resist the conviction that the plaintiff had no purpose to
acquire a domicile or settled home in Tennessee and that his
sole object in removing to that state was to place himself in a
situation to invoke the jurisdiction of the circuit court of the
United States.”).
More recently, in Hertz Corp. v. Friend, 130 S.Ct. 1181
(2010) the Court stated in the context of an inquiry into a
corporation’s principal place of business for diversity juris-
diction purposes:
If the record reveals attempts at manipula-
tion ─ for example, that the alleged, ‘nerve
IN RE MICROSOFT CORP 6
center’ is nothing more than a mail drop box,
a bare office with a computer, or the location
of an annual executive retreat ─ the court
should instead take as the ‘nerve center’ the
place of actual direction, control, and coordi-
nation, in the absence of such manipulation.
Id. at 1195.
This court has diligently followed these principles in
matters of transfer. Thus, in Hoffmann-La Roche, we noted
that in anticipation of litigation, the plaintiff’s counsel in
California transferred 75,000 pages of pertinent documents
to the offices of its litigation counsel in Texas and then
asserted that the location of those documents was a factor
that favored not transferring the case from the Eastern
District of Texas. 587 F.3d at 1337. We held that the asser-
tion that those documents were “Texas” documents was a
fiction that appeared to be created to manipulate the propri-
ety of venue and that it was entitled to no weight in the
court’s venue analysis. Id.
Allvoice contends that its connections to the Eastern
District of Texas are distinguishable from Hoffmann-La
Roche. Allvoice explains that its principal place of business
is in the Eastern District of Texas, which is where its docu-
ments are maintained rather than in its counsel’s offices.
This argument was accepted by the trial court without
scrutiny.
But we recently rejected such an argument in In re
Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010).
There, we held that the transfer of documents to a com-
pany’s offices in anticipation of litigation rather than to
litigation counsel was a distinction without a difference for
purposes of a § 1404(a) analysis. Id. at 1381. We further
explained that, similar to Allvoice’s offices here, the offices
in Zimmer staffed no employees, were recent, ephemeral,
7 IN RE MICROSOFT CORP
and a construct for litigation and appeared to exist for no
other purpose than to manipulate venue. Id.
The only added wrinkle is that Allvoice took the extra
step of incorporating under the laws of Texas sixteen days
before filing suit. But that effort is no more meaningful, and
no less in anticipation of litigation, than the others we reject.
In Koster v. Lumbermens Mutual Casualty Co., 330 U.S.
518 (1947), the Supreme Court explained that “[u]nder
modern conditions corporations often obtain their charter
from states where they no more than maintain an agent to
comply with local requirements, while every other activity is
conducted far from the chartering state.” Id. at 527-28. The
Court further explained that the “[p]lace of corporate domi-
cile in such circumstances might be entitled to little consid-
eration” under the doctrine of forum non conveniens, “which
resists formalization and looks to the realities that make for
doing justice.” Id. at 528.
Here, the realities make clear that the Western District
of Washington is comparatively the only convenient and fair
venue in which to try this case.
Allvoice presents arguments why mandamus should not
issue. We have carefully considered these arguments, but
find them unpersuasive. We note that Allvoice asserts that
Microsoft’s attempt to also transfer this case to the United
States District Court for the Southern District of Texas
should be weighed against mandamus. Because the thrust
of that motion was to transfer the case to a court that had
previous experience adjudicating the patent, we cannot say
that any asserted inconsistency with regard to the conven-
ience of trial in the state of Texas as a whole should preclude
transfer to a venue that is far more convenient and fair.
Accordingly,
IT IS ORDERED THAT:
IN RE MICROSOFT CORP 8
The petition for a writ of mandamus is granted. The dis-
trict court shall vacate its order denying Microsoft’s motion
to transfer and transfer the case to the Western District of
Washington.
FOR THE COURT
January 5, 2011 /s/ Jan Horbaly
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Date Jan Horbaly
Clerk
cc: David J. Lender, Esq.
Chris P. Perque, Esq.
Clerk, United States District Court for the Eastern
District of Texas