In re Altair Engineering, Inc.; In re Groupon, Inc.

The U.S. Court of Appeals for the Federal Circuit denied two writs of mandamus filed by defendants requesting the Federal Circuit to direct district courts to transfer patent litigations to other districts. As these were mandamus actions, and the cases were filed in the U.S. District Court for the Eastern District of Texas, the burden on the petitioners was to show that under Federal Circuit test in TS Tech (IP Update, Vol. 13, No. 1) and applying the eight-factor test, the district court’s denial of transfer was so patently erroneous as to amount to a clear abuse of discretion.

In In re Altair Engineering, Inc., Case No. 14-120 (Fed. Cir., Ap. 23, 2014) (Lourie, J.) (non-precedential), the petitioner, Altair, sought a writ of mandamus directing the U.S. District Court for the Eastern District of Texas to transfer its case to the U.S. District Court for the Eastern District of Michigan. While the district court found that the sources of proof factor weighed slightly in favor of transfer, the court denied transfer because there were three then-pending cases in the Eastern District of Texas that involved the same patent and plaintiffs. Accordingly, the Federal Circuit found that the district court properly denied transfer based on the judicial economy of maintaining all four related actions in the same court.

In In re Groupon, Inc., Case No. 14-118 (Fed. Cir., Apr. 23, 2014) (Lourie, J.) (non-precedential), the petitioner, Groupon, sought a writ of mandamus directing the U.S. District Court for the Eastern District of Texas to transfer its case to the U.S. District Court for the Northern District of Illinois. Groupon argued that the bulk of the witnesses were in the Northern District of Illinois and the transferee venue had a stronger local interest. The district court found that the sources of proof factor did not weigh in favor of transfer because plaintiff was headquartered in the Eastern District of Texas, the patented invention was developed in the Eastern District of Texas and multiple witnesses (both plaintiff’s witnesses and third-party witnesses) were located in the Eastern District of Texas. The Federal Circuit found that the district court did not abuse its discretion given that only one more non-party witness was located in the transferee venue than in E.D. Tex.