in Re Wyeth and Wyeth Pharmaceuticals Inc v. Dow Chem. Co., 868 F.2d 1428, 1436 5th Cir. 1989

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

IN RE WYETH AND
WYETH PHARMACEUTICALS INC.,
Petitioners.
::

Miscellaneous Docket No. 959
2

On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
case no. 08-CV-0067, Judge T. John Ward.

ON PETITION FOR WRIT OF MANDAMUS

Before LOURIE, MAYER, and DYK, Circuit Judges.
DYK, Circuit Judge.

ORDER

The petitioners, Wyeth et al. (Wyeth), defendants in
this patent infringement action, seek a writ of mandamus
directing the United States District Court for the Eastern
District of Texas to vacate its orders denying Wyeth's
motions to transfer and to direct transfer to the United
States District Court for the Northern District of Califor-
nia. The plaintiff in this infringement action, Novartis

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Vaccines and Diagnostics, Inc. (Novartis) opposes. Wyeth
replies. Novartis moves for leave to file a sur-reply.

This petition arises out of a patent infringement com-
plaint originally filed in the Eastern District of Texas by
Novartis on February 15, 2008. Novartis' original com-
plaint asserted that Wyeth's products infringe Novartis'
U.S. Patent Nos. 6,060,447 and 6,228,620.

Over the next 17 months, the case progressed under
the supervision of the district court. Discovery was con-
ducted, protective orders were issued, individual disclo-
sures were turned over, infringement and invalidity
contentions were exchanged and an extensive amount of
documents were produced. In July of 2009, Novartis also
added a claim in this case that Wyeth's products infringe
U.S. Patent No. 7,135,505 (the '505 patent).

On August 3, 2009, Wyeth moved to transfer this case
to the Northern District of California. Although as many
as 13 potential witnesses had previously been identified
as residents of the Northern District of California, Wyeth
argued that transfer was warranted now because the
addition of the '505 patent meant that eight additional
potential witnesses were also residents of the Northern
District of California.

The Magistrate Judge denied the motion to transfer.
In doing so, the Magistrate Judge recognized that the
convenience factors appeared to weigh in favor of transfer,
but agreed with Novartis that Wyeth had failed to
promptly seek transfer from the district court and that
transferring the case now would be prejudicial and waste
judicial economy. Wyeth sought reconsideration of the
Magistrate's decision with the district court. On August
30, 2010, the district court determined that the Magis-
trate's denial of transfer was not clearly erroneous. Prior

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to the district court's decision on transfer, Wyeth dropped
its infringement claim regarding the '505 patent.

Applying Fifth Circuit law in cases arising from dis-
trict courts in that circuit, this court has held that man-
damus may be used to correct a patently erroneous denial
of transfer. That standard, however, is an exacting one.
See, e.g., In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir.
2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir.
2008); In re Volkswagen of Am., Inc., 545 F.3d 304 (5th
Cir. 2008) (en banc) (granting mandamus and directing
the district court to transfer to a clearly more convenient
forum).

We are not persuaded by Wyeth's attack on the dis-
trict court's analysis. The Fifth Circuit as well as other
circuits have emphasized that a party should not delay
filing of a motion to transfer. Peteet v. Dow Chem. Co.,
868 F.2d 1428, 1436 (5th Cir. 1989); McGraw-Edison Co.
v. Van Pelt, 350 F.2d 361, 364 (8th Cir. 1965). Thus, in
Peteet, the Fifth Circuit stated that "[p]arties seeking a
change of venue should act with 'reasonable promptness."
868 F.2d at 1436. Without reasonable promptness on the
part of the movant, a case proceeds, requiring the court to
expend time and effort that might become wasted upon
transfer.

Wyeth's arguments that such delay was excusable are
similarly unpersuasive. As noted above, Wyeth was
aware that several potential witnesses resided in North-
ern California, yet Wyeth did not promptly file a motion
to transfer. In addition, the '505 infringement claim, the
supposed basis for triggering the motion to transfer, was
dropped against Wyeth. Meanwhile, as Wyeth delayed
filing a motion to transfer, discovery was conducted,
protective orders were issued, individual disclosures were
turned over, infringement and invalidity contentions were

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IN RE WYETH

exchanged, and an extensive amount of documents were
produced. In addition, Novartis contends that if this case
were now transferred, it would be prejudiced in the delay
of its case.

We also reject Wyeth's argument that the district
court improperly balanced the factors or improperly gave
weight to judicial economy. In In re Vistaprint Ltd.,
F.3d _, 2010-M954 (Fed. Cir. Dec. 15, 2010), we rejected
the argument that it is always improper for a district
court to deny transfer based on judicial economy when all
of the convenience factors favor transfer. Here, the dis-
trict court determined that its familiarity with this case
coupled with Wyeth's delay was deserving of more weight
in its § 1404(a) analysis than the potential convenience of
trying this case in the Northern District of California.
Wyeth has not made a compelling showing why this
result was so incorrect as to warrant the extraordinary
relief of mandamus.

Accordingly,

IT IS ORDERED THAT:

(1) The petition for a writ of mandamus is denied.

(2) The motion for leave to file a sur-reply is granted.

DEC 2 0 2010

FOR THE COURT

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: George A. Riley, Esq.
Bradford J. Badke, Esq.
Clerk, United States District Court for the Eastern
District Of Texas
$19

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
DEC 2 0 2010

JAN HORBALY
CLERK