Federal Circuit disposition — 25-118

United States Court of Appeals
for the Federal Circuit
______________________
In Re SAP AMERICA, INC., SAP SE,
Petitioners
______________________
2025-118
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 2:24-
cv-00021-JRG, Chief Judge J. Rodney Gilstrap.
______________________
ON PETITION
______________________
K ATHERINE VIDAL , Winston & Strawn LLP, Washing-
ton, DC, for petitioners SAP America, Inc., SAP SE. Also
represented by MICHAEL A. BITTNER, M. B RETT J OHNSON,
T HOMAS M. MELSHEIMER , T HANH D INH N GUYEN, Dal-
las, TX; SEAN H. SUBER, Chicago, IL.
MATT BERKOWITZ , Reichman Jorgensen Lehman &
Feldberg LLP, Redwood Shores, CA, for respondents Val-
trus Innovations Ltd., Key Patent Innovations Ltd. Also
represented by N AVID CYRUS BAYAR ; BRIAN C. BARAN,
Washington, DC; PATRICK ROBERT COLSHER, K HUE V.
HOANG, New York, NY.
______________________
Before D YK, P ROST , and CHEN, Circuit Judges.
P ER CURIAM .
Case: 25-118 Document: 21 Page: 1 Filed: 04/10/2025

-- 1 of 6 --

IN RE SAP AMERICA, INC. 2
O R D E R
SAP America, Inc. and SAP SE (collectively, “SAP”) pe-
tition for a writ of mandamus seeking to compel the district
court to transfer the underlying case from the Marshall di-
vision of the United States District Court for the Eastern
District of Texas to the Sherman division of that same dis-
trict and to require random reassignment of the case
within the Sherman division. Valtrus Innovations Ltd. and
Key Patent Innovations Ltd. (collectively, “Valtrus”) op-
pose. We deny the petition.
BACKGROUND
On January 15, 2024, Valtrus brought this suit against
SAP in the United States District Court for the Eastern
District of Texas, Marshall division. On March 20, 2024,
SAP moved for intra-district transfer to the Sherman divi-
sion pursuant to 28 U.S.C. § 1404(a), arguing that SAP
America maintained offices in Sherman, a witness associ-
ated with Valtrus’s patent licensing agent resides there,
and two SAP employees in Sherman have “potentially rel-
evant knowledge.” Appx7. Valtrus opposed, relying, in
part, on co-pending litigation in Marshall against AT&T
et al. involving one of the same asserted patents.
Appx569–70.
On December 13, 2024, nine months after the motion
was filed, the district court denied the motion after consid-
ering the traditional transfer factors.1 The court rejected
1 The private interest factors are: (1) the relative
ease of access to sources of proof; (2) the availability of com-
pulsory process to secure the attendance of witnesses;
(3) the cost of attendance for willing witnesses; and (4) all
other practical problems that make trial of a case easy, ex-
peditious and inexpensive. And the public interest factors
are: (1) the administrative difficulties flowing from court
congestion; (2) the local interest in having localized
Case: 25-118 Document: 21 Page: 2 Filed: 04/10/2025

-- 2 of 6 --

IN RE SAP AMERICA, INC. 3
SAP’s argument that the willing-witness factor favors
transfer, finding most of the witnesses were located outside
of Texas (many outside of the United States), and both fo-
rums would be similarly convenient for those witnesses; a
witness in Sherman declared she would not find Marshall
to be inconvenient; and SAP failed to “show that [the two
other] identified [witnesses in Sherman] have relevant
knowledge . . . [or] explain that knowledge and why it is
relevant.” Appx7 n.3 (emphasis omitted). The court fur-
ther criticized SAP for “never stat[ing] that [its Sherman-
based employees] will be witnesses for trial.” Appx8 (em-
phasis in original).
The court similarly found the sources of proof and com-
pulsory-process factors neutral because the evidence was
maintained outside the United States and electronically
available, Appx3–5, and SAP “fail[ed] to show or even al-
lege that any [non-party] witnesses would be unwilling to
testify in this case,” Appx5. As to the practical-problems
factor, despite acknowledging that the co-pending AT&T
litigation in Marshall had been closed with all defendants
dismissed and that the court had not “considered substan-
tive filings in [that case] by the time the Motion to Transfer
had been filed,” the court found that “the potential future
efficiencies achieved with keeping this case in this Court
weigh against transfer.” Appx10 & n.5.
As to the public-interest transfer factors, the district
court determined that Sherman had a slightly greater local
interest based on SAP America’s offices in that division.
However, because “the case was (and continues to be)
‘smoothly proceeding’ to trial,” the court determined that
the court-congestion factor “weigh[ed] slightly against
interests decided at home; (3) the familiarity of the forum
with the law that will govern the case; and (4) the avoid-
ance of unnecessary problems of conflict of laws or in the
application of foreign law. See In re Volkswagen of Am.,
Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc).
Case: 25-118 Document: 21 Page: 3 Filed: 04/10/2025

-- 3 of 6 --

IN RE SAP AMERICA, INC. 4
transfer.” Appx11. The district court found the rest of the
factors neutral. On balance, the district court concluded
that SAP had failed to show that Sherman was a clearly
more convenient forum than Marshall and denied transfer.
SAP then filed this petition challenging the order, which
we have jurisdiction to review. See 28 U.S.C. §§ 1295(a)(1),
1651(a); In re Princo Corp., 478 F.3d 1345, 1351–52
(Fed. Cir. 2007).
D ISCUSSION
A petitioner seeking the extraordinary remedy of man-
damus must show: (1) “no other adequate means to attain
the relief [it] desires,” (2) a “clear and indisputable” right
to relief, and (3) the writ is “appropriate under the circum-
stances.” Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367,
380–81 (2004) (cleaned up). For a transfer decision under
28 U.S.C. § 1404(a), we apply the law of the regional cir-
cuit, here the United States Court of Appeals for the Fifth
Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319
(Fed. Cir. 2008). “[W]e review only for clear abuses of dis-
cretion that produce patently erroneous results.”
Volkswagen, 545 F.3d at 312. Under these circumstances,
we conclude that SAP failed to demonstrate entitlement to
mandamus relief.
To be sure, the district court erred in assigning weight
to Valtrus’s separate AT&T litigation in Marshall after
“acknowledg[ing] [that case was] . . . closed and all defend-
ants . . . dismissed” by the time the motion to transfer was
resolved and that it had not otherwise gained any substan-
tive familiarity that might support denying transfer based
on judicial economy considerations. Appx10 & n.5. Neither
the district court nor the parties have cited precedent, and
we are aware of none, that would require a court to ignore
this reality. Of course, courts must generally guard
against manipulation and not needlessly delay resolution
of a motion to transfer only to “turn around and use the
progress the case has made while the § 1404(a) motion was
pending as a reason to deny transfer.” In re TikTok, Inc.,
Case: 25-118 Document: 21 Page: 4 Filed: 04/10/2025

-- 4 of 6 --

IN RE SAP AMERICA, INC. 5
85 F.4th 352, 362–63 & n.10 (5th Cir. 2023). But here, the
AT&T litigation was dismissed for unrelated reasons, and
once dismissed, its earlier pendency was irrelevant and
could not be relied on to deny transfer.
The court also erred in weighing the court congestion
factor against transfer solely on the basis that the case, in
its view, is “smoothly proceeding” to trial. To the extent
that was a suggestion that the case’s progress after filing
is a relevant consideration, TikTok rejected this theory.
85 F.4th at 363–64. At most, this public-interest factor
“concerns whether there is an appreciable difference in
docket congestion between the two forums,” and “[n]othing
about the court’s general ability to set a schedule directly
speaks to that issue” in this case. In re Adobe Inc., 823
F. App’x 929, 932 (Fed. Cir. 2020) (citing Parsons v. Chesa-
peake & Ohio Ry. Co., 375 U.S. 71, 73 (1963)); see also Gates
Learjet Corp. v. Jensen, 743 F.2d 1325, 1337 (9th Cir. 1984)
(“The real issue is . . . whether a trial may be speedier in
another court because of its less crowded docket.”). Here,
the district court made no finding regarding court conges-
tion that could have plausibly supported weighing this fac-
tor in favor of Marshall.
Nevertheless, SAP failed to show that the denial of
transfer was patently erroneous, particularly given that it
was SAP’s burden to show Sherman would be a “clearly
more convenient” forum. In re Radmax, Ltd., 720 F.3d 285,
288 (5th Cir. 2013). The district court plausibly declined to
give significant weight to relative access to sources of proof
or availability of compulsory process given SAP failed to
identify physical evidence, document custodians, or unwill-
ing witnesses in the Sherman division. See In re Planned
Parenthood Fed’n of Am., Inc., 52 F.4th 625, 630–31
(5th Cir. 2022). Additionally, while SAP America may
have offices in Sherman, those offices appear to have little-
to-no connection to this case and thus do not merit signifi-
cant weight. See Def. Distributed v. Bruck, 30 F.4th 414,
435 (5th Cir. 2022) (holding that this factor “most notably
regards not merely the parties’ significant connections to
Case: 25-118 Document: 21 Page: 5 Filed: 04/10/2025

-- 5 of 6 --

IN RE SAP AMERICA, INC. 6
each forum writ large, but rather the significant connec-
tions between a particular venue and the events that gave
rise to a suit” (citation omitted)).
Moreover, SAP has not shown that the willing-witness
factor clearly favors transfer. We agree with SAP that the
district court expressed an overly demanding standard in
criticizing SAP for failing to specifically identify individu-
als as trial witnesses. “Requiring a defendant to show that
the potential witness has more than relevant and material
information at this point in the litigation or risk facing de-
nial of transfer on that basis is unnecessary.” In re Genen-
tech, Inc., 566 F.3d 1338, 1343–44 (Fed. Cir. 2009) (citing
Volkswagen, 545 F.3d at 317 n.12). Even so, the district
court did not clearly abuse its discretion in determining
that this factor was neutral. It plausibly found that the
convenience of the two divisions was comparable for most
of the potential witnesses, who reside outside of Texas; that
SAP merely argued its two Sherman-based employees “po-
tentially have relevant knowledge” without “explain[ing]
that knowledge and why it is relevant,” Appx7 n.3 (empha-
sis in original); and that the only other Sherman-based wit-
ness would not find it inconvenient to travel to Marshall
for trial. Based on SAP’s petition, we are not prepared to
disturb those findings on limited mandamus review.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
April 10, 2025
Date
F OR THE COURT
Case: 25-118 Document: 21 Page: 6 Filed: 04/10/2025

-- 6 of 6 --