2011-m995-12-22-11-1-pdf

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NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

IN RE BIOSEARCH TECHNOLOGIES, INC. AND
EUROFINS MWG OPERON INC.,
Petitioners.

Miscellaneous Docket No. 995

On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
case no. 09-CV-0283, Judge T. John Ward.

ON PETITION

Before NEWMAN, LINN, and REYNA, Circuit Judges.
LINN, Circuit Judge.

## ORDER

Biosearch Technologies, Inc. and Eurofins MWG Op-
eron Inc. seek a writ of mandamus directing the United
States District Court for the Eastern District of Texas to
transfer the case to the District Court for the Northern
District of California. Applied Biosystems, LLC and Life
Technologies Corporation (collectively, Life Tech) oppose.
Biosearch and Eurofins reply. Because the district court

abused its discretion in denying Biosearch's motion to
transfer venue under 28 U.S.C. § 1404(a), this court
grants Biosearch's petition for a writ of mandamus.

This case arises out of a patent infringement suit
against the petitioner-defendant, Biosearch, brought by
the respondent-plaintiff, Life Tech. Life Tech asserted
infringement of five of its patents directed to dual-labeled
probe products initially against only Biosearch Technolo-
gies, Inc., and then added defendants Eurofins MWG
Operon, Inc., Midland Certified Reagent Company, Inc.,
and Bio-Synthesis, Inc. Midland was dismissed from the
suit prior to the underlying motion to transfer in the
district court.

Biosearch and Eurofins (collectively, Biosearch)
moved to transfer to the Northern District of California,
where a substantial number of witnesses and documents
are located. The motion was denied by a magistrate
judge, who focused on defendant Bio-Synthesis' connec-
tions to the Eastern District of Texas. The magistrate
determined that all of Bio-Synthesis' evidence was located
in the Eastern District of Texas. Given that Life has
facilities in Austin, Texas, California, Maryland, and New
York, and Eurofin is in Alabama, the magistrate deter-
mined the Eastern District of Texas was a proper central
location. The magistrate acknowledged that the avail-
ability of compulsory process to secure the attendance of
non-party witnesses favored transfer because of the large
number of likely witnesses in the Northern District of
California, but decided that the cost of attendance for
willing witnesses weighed against transfer due to the
number of Bio-Synthesis witnesses in Texas and the
increased travel distances for other witnesses that Cali-

fornia would require. Biosearch sought review of the
magistrate's order by the district court, which upheld the
decision.

## II.

The remedy of mandamus is available only in ex-
traordinary situations to correct a clear abuse of discre-
tion or usurpation of judicial power. In re Calmar, Inc.,
854 F.2d 461, 464 (Fed. Cir. 1988). In reviewing a district
court's ruling of a motion to transfer pursuant to
§ 1404(a), we apply the law of the regional circuit, in this
case the Fifth Circuit. See Storage Tech. Corp. v. Cisco
Sys., Inc., 329 F.3d 823, 836 (Fed. Cir. 2003).

A motion to transfer under § 1404(a) calls upon the
trial court to weigh a number of case-specific factors
based on the individualized facts on record. See Stewart
Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, (1988). Al-
though a trial court has great discretion in these mat-
ters, mandamus may issue when the trial court's
application of those factors creates a patently erroneous
result. In re Volkswagen of Am., Inc., 545 F.3d 304, 310
(5th Cir. 2008) (en banc); see also In re TS Tech USA
Corp., 551 F.3d 1315, 1318-19 (Fed. Cir. 2008).

In assessing whether a defendant has met its burden
of demonstrating the need to transfer, the Fifth Circuit
applies the "public" and "private" factors for determin-
ing forum non conveniens. Volkswagen, 545 F.3d at 314 n.
9. 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." 551

F.3d at 1319 (citing Piper Aircraft Co. v. Reyno, 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 inter-
ests 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." Id.

Both plaintiffs in this case are headquartered in Cali-
fornia, and one is in the Northern District of California.
One of the moving defendants, Biosearch, is also incorpo-
rated and headquartered in the Northern District of
California. It cannot be disputed therefore that such
venue would have a strong interest in trying this case and
be convenient with regard to the location of likely sources
of evidence.
.

The district court recognized that at least 19 potential
witnesses, among them the patents' inventors and prose-
cuting attorneys, reside in or near the transferee venue.
If all of these witnesses were required to travel to the
Eastern District of Texas, the parties would likely incur
significant expenses for airfare, meals, and lodging, as
well as losses in productivity from time spent away from
work. See Volkswagen, 545 F.3d at 317. In addition,
these witnesses will suffer the "personal costs associated
with being away from work, family, and community." Id.
These costs would be significantly minimized or avoided
by transferring the case to Northern California. Moreover
given the large number of witnesses that reside in that
venue, the subpoena powers of the Northern District of
California may be expected to be invaluable in the event
process is required to hale relevant witnesses into court.

In contrast, the district court acknowledged that "nei-
ther party has identified any witness subject to compul-
sory process in the Marshall Division of the Eastern
District of Texas." The court nonetheless held that this
case should remain in the plaintiff's chosen venue. In
doing so, the district court predominantly relied on Bio-
Synthesis' presence in the Eastern District for many of
the § 1404(a) factors.

Bio-Synthesis, however, has entered into an agree-
ment with the plaintiff to play only a peripheral role in
this litigation by, inter alia, limiting its discovery re-
quests and agreeing not to challenge the validity of the
patents-in-suit. While in theory the Agreement leaves
open the possibility that Bio-Synthesis can expend the
costs of litigation to reduce its liability under the "high-
low" agreement by challenging the infringement allega-
tions, the reality of the situation is that Life has limited
its own discovery of Bio-Synthesis, and Bio-Synthesis's
behavior implies that it appears content not to expend the
costs necessary to prove its non-infringement case at
trial-failing even to participate in the claim construction
proceedings that are so critical to the outcome of the
infringement determinations. Thus, whatever documents
of Bio-Synthesis are present in the Eastern District of
Texas, we cannot say they are deserving of any significant
weight.

In analogous situations, where an invention has no
connection with Texas, we have determined that the
asserted geographical centrality of Texas did not out-
weigh the many aspects of convenience to the defendant.
In In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009)
the plaintiff, a company which had no connection to
Eastern Texas, brought suit in Texas against Genentech
and another company, both of which had principal places

of business in California. The bulk of the defendants'
witnesses resided in California, and a substantial amount
of the defendants' evidence was situated in California.
Similar to this case, in Genentech, neither the plaintiff
company, the inventors, nor any witness of the plaintiff
had any connection with Texas. This court required
transfer to the Northern District of California, ruling that
"the district court clearly erred in not determining [the
convenience] factor to weigh substantially in favor of
transfer." Id. at 1345. This court observed that the
plaintiff's witnesses "will be required to travel a signifi-
cant distance no matter where they testify." Id. at 1344.
More recently, in cases such as In re Nintendo Co., 589
F.3d 1194 (Fed. Cir. 2009) and In re Hoffmann-La Roche,
587 F.3d 1333 (Fed. Cir. 2009), this court ordered transfer
from the plaintiff's chosen Eastern Texas forum, noting "a
stark contrast in relevance, convenience, and fairness
between the two venues." 587 F.3d at 1336. This prece-
dent is persuasive authority for transfer to the Northern
District of California, for the facts of the present case are
as compelling as for this precedent.

Although transfer is within the discretion of the trial
court, "in a case featuring most witnesses and evidence
closer to the transferee venue with few or no convenience
factors favoring the venue chosen by the plaintiff, the
trial court should grant a motion to transfer." Nintendo,
589 F.3d at 1198. This is such a case. Despite the limited
involvement that defendant Bio-Synthesis will have in
this litigation, it is not strong enough to maintain the
case in the Eastern District of Texas, given the other
factors weighing in favor of transfer. We grant the peti-
tion.

Accordingly,

IT IS ORDERED THAT:

The petition for writ of mandamus is granted. The
United States District Court for the Eastern District of
Texas is directed to vacate its order denying petitioners'
motion to transfer venue, and to direct transfer to the
United States District Court for the Northern District of
California.

FOR THE COURT

DEC 2 2 2011

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

cc: Thomas M. Peterson, Esq.
Kenneth E. Keller, Esq.
Clerk, United States District Court for the Eastern
District of Texas
s24

PILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
DEC 2 2 2011

JAN HORBALY
CLERK

Federal Circuit disposition — 2011-m995-12-22-11-1-pdf

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