Miscellaneous Docket No. 899 IN RE TELULAR CORPORATION v. United States Dist. Court for Southern Dist. of Iowa 490 U.S. 296, 309 1989

NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
Miscellaneous Docket No. 899
IN RE TELULAR CORPORATION,
Petitioner.
On Writ of Mandamus from the United States District Court for the Eastern
District of Texas in case no. 2:07-CV-282, Judge T. John Ward.
ON PETITION FOR WRIT OF MANDAMUS
Before MAYER, SCHALL, and MOORE, Circuit Judges.
MOORE Circuit Judge.
ORDER
Telular Corporation petitions for a writ of mandamus to direct the United States
District Court for the Eastern District of Texas to vacate its September 10, 2008 order
denying Telular's motion to transfer venue, and to direct the Texas district court to
transfer the case to the United States District Court for the Northern District of Illinois.
Tobi Gellman, trustee of the Mayer Michael Lebowitz Trust, opposes.
Gellman, a resident of Dallas, Texas, filed this suit in the Eastern District of
Texas, alleging that Telular and several other named defendants * infringe a patent
relating to a system for transmitting alarm data through a cellular network. Telular,
Gellman's complaint named ADT Security Services, Inc., a Delaware
corporation with its primary place of business in Boca Raton, Florida, Digital Security
Controls, Inc., a New York corporation with its primary place of business in Ontario,
Canada, Europlex Technologies (USA), Inc., a Georgia corporation with its primary
place of business in Atlanta, Georgia, Napco Security Systems, Inc., a Delaware
corporation with its primary place of business in Amityville, New York, and Telular. Two
other companies, Diebold, Inc. and Protection One, Inc., were originally named in the
complaint but were later dismissed.

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which is incorporated in Delaware and operates principally out of its office in Chicago,
Illinois, asked the district court to transfer the case to the Northern District of Illinois
pursuant to 28 U.S.C. § 1404(a), which authorizes changes of venue "for the
convenience of parties and witnesses, in the interest of justice." Telular argued that it
lacked any significant connection to the Eastern District of Texas and that the Northern
District of Illinois was far more convenient because a number of Telular's witnesses
reside in Chicago and its Chicago offices house a significant amount of the evidence
relevant to the case. The district court denied the motion, finding that the Eastern
District of Texas was far more convenient for Gellman and that a number of Telular's
own witnesses residing in Atlanta would be more inconvenienced by traveling to
Chicago to testify.
Telular now petitions for a writ of mandamus asking this court to vacate the
district court's denial order and direct the court to transfer the case to the Northern
District of Illinois. The writ of mandamus is available in extraordinary situations to
correct a clear abuse of discretion or usurpation of judicial power. In re Calmar, Inc.
854 F.2d 461, 464 (Fed. Cir. 1998). A party seeking a writ bears the burden of proving
that it has no other means of obtaining the relief desired, Mallard v. United States Dist.
Court for Southern Dist. of Iowa 490 U.S. 296, 309 (1989), and that the right to
issuance of the writ is "clear and indisputable," Allied Chem. Corp. v. Daiflon, Inc. 449
U.S. 33, 35 (1980). Because this petition does not involve substantive issues of patent
law, this court applies the laws of the regional circuit in which the district court sits, in
this case the Fifth Circuit. In re TS Tech USA Corp. 551 F.3d 1315, 1319 (Fed. Cir.
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2008) (citing Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 836 (Fed. Cir.
2003)).
The Fifth Circuit applies the public factors and private factors that are used to
determine forum non conveniens when deciding a 1404(a) transfer question. As we
noted in TS Tech, the private interest factors include "(1) the relative ease of access to
sources of proof; (2) the availability of compulsory process to secure the attendance of
witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical
problems that make a trial easy, expeditious and inexpensive." TS Tech 551 F.3d at
1319 (citing Piper Aircraft Co. v. Revno, 454 U.S. 235, 241 n.6 (1981)). The public
interest factors include "(1) the administrative difficulties flowing from court congestion;
(2) the local interest in having localized interests decided at home; (3) the familiarity of
the forum with the law that will govern the case; and (4) the avoidance of unnecessary
problems of conflicts of laws [or in] the application of foreign law." TS Tech 551 F.3d
at 1319 (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en
banc)).
Telular faces an extraordinary burden in this case. First, the equities lie
considerably against granting mandamus. See United States v. Dern, 289 U.S. 352,
359 (1933) ("Although the remedy by mandamus is at law, its allowance is controlled by
equitable principles . . . and it may be refused for reasons comparable to those which
would lead a court of equity in the exercise of a sound discretion, to withhold its
protection of an undoubted legal right."). Telular waited five months after the district
court's ruling to file its petition, which weighs against the need for issuance of an
extraordinary writ. See United States v. Braasch 542 F.2d 442 (7th Cir. 1976) (denying
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mandamus for waiting five months after entry of underlying order to file petition for a
writ); United States v. Olds, 426 F.2d 562 (3d Cir. 1970) (denying writ after three-month
delay); United States v. Carter, 270 F.2d 521 (9th Cir. 1959) (writ denied after a four-
month delay).
Even if Telular had acted diligently, mandamus relief in § 1404(a) cases is only
permitted when the petitioner is able to demonstrate that the denial of transfer was a
"clear" abuse of discretion such that refusing transfer produced a "patently erroneous
result." Volkswagen 545 F.3d at 310. A suggestion that the district court abused its
discretion, which might warrant reversal on a direct appeal, is not a sufficient showing to
receive mandamus relief. Id: see also Bankers Life & Cas. Co. v. Holland, 346 U.S.
379, 383 (1953) ("[I]t is established that the extraordinary writs cannot be used as
substitutes for appeals . . . even though hardship may result from delay and perhaps
unnecessary trial"). Unless it is clear that the facts and circumstances are without any
basis for a judgment of discretion, we will not proceed further in a mandamus petition to
examine the district court's decision. Volkswagen, 545 F.3d at 317 n.7 (citing McGraw-
Edison Co. v. Van Pelt 350 F.2d 361, 363 (8th Cir. 1965)). In other words, we will deny
a petition TN the facts and circumstances are rationally capable of providing reasons
for what the district court has done." Volkswagen, 545 F.3d at 317 n.7; see also In re
Cordis Corp. 769 F.2d 733, 737 (Fed. Cir. 1985) (noting that "if a rational and
substantial legal argument can be made in support of the rule in question, the case is
not appropriate for mandamus").
Telular argues that the only relationship between this case and the Eastern
District of Texas other than Gellman's choice of venue is that a distributor installs
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Telular's cellular alarm security systems in homes in the venue and that those alarms
are capable of transmitting radio waves through the venue to Telular's message center
in Atlanta. We cannot agree with Telular, however, that this necessitates transfer. The
Eastern District of Texas may have no more of an interest in this case than any other
district in which Telular's systems are ultimately installed. This alone, however, does
not mean that Telular's alternative choice of venue, in this case the Northern District of
Illinois, is clearly more convenient. See Action Indus. v. U.S. Fidelity & Guar. Co. 358
F.3d 337, 340 (5th Cir. 2004) ("The determination of 'convenience' turns on a number of
public and private interest factors, none of which can be said to be of dispositive
weight." (internal citation omitted)).
Telular also mentions that a number of its own party witnesses and fact
witnesses residing in Chicago will be inconvenienced by testifying in Texas and that it is
inconvenient to transport its physical and documentary evidence (whether in electronic
or paper form) from Chicago to Texas. However, Gellman asserts that at least two of
Telular's own witnesses reside in Atlanta, and any documents in the Atlanta office
would need to be transported to the court in Illinois if the case was transferred.
Gellman, a resident of Texas, also asserts that it would be far more inconvenient for
him to try his case in Illinois. Based on these circumstances, Telular has not shown
that the district court clearly abused its discretion in denying transfer. The district court
weighed competing positions which were reasonably supported by the facts. This
situation is in stark contrast to the circumstances leading to the grants of mandamus in
TS Tech and Volskwagen in which the facts overwhelmingly supported transfer. In
such situations, courts may be required to grant mandamus to correct an order that
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clearly exceeds the bounds of judicial discretion. Here, however, a rational legal
argument exists in support of the trial court's ruling, and mandamus is inappropriate.
Cordis, 769 F.2d at 737.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is denied.
FOR THE COURT
APR 3 2009 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: James Philip Hanrath, Esq.
Edward W. Goldstein, Esq.
Clerk, United States District Court for the Eastern District of Texas, Marshall
Division
s19
FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
APR 03 2009
Mil HOlibiALY
CLERK
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