Case: 21-136 Document: 11 Page: 1 Filed: 04/20/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: TRACFONE WIRELESS, INC.,
Petitioner
______________________
2021-136
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00 303-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before PROST, Chief Judge, O’MALLEY and WALLACH, Cir-
cuit Judges.
PROST, Chief Judge.
ORDER
This is the second petition for a writ of mandamus filed
by TracFone Wireless, Inc. concerning its motion to trans-
fer this patent infringement case brought by Precis Group
LLC in the United States District Court for the Western
District of Texas, Waco Division, to the United States Dis-
trict Court for the Southern District of Florida. On March
8, 2021, this court granted TracFone’s first petition for a
writ of mandamus and ordered the district court to stay all
proceedings and decide the long-pending motion within 30
Case: 21-136 Document: 11 Page: 2 Filed: 04/20/2021
2 IN RE: TRACFONE WIRELESS, INC.
days. In re TracFone Wireless, Inc., No. 2021-118,
2021 WL
865353 (Fed. Cir. Mar. 8, 2021). Three days later, the dis-
trict court denied the motion, rejecting two arguments
TracFone now raises in this petition: (1) that venue was
improper in the Western District of Texas and (2) that
28
U.S.C. § 1404(a) required transfer. Appx178. We now
grant mandamus for a second time. We conclude that the
district court clearly abused its discretion in denying trans-
fer under § 1404(a). Having reached that conclusion, we do
not address TracFone’s improper-venue arguments.
I
Precis is a Delaware limited liability company with no
disclosed place of business. Appx8. Precis owns four pa-
tents entitled “Secured Pre-Payment for Portable Commu-
nication Unit,” which relate to systems and methods for
pre-payment mobile device service. One of the inventors of
the patents is Daniel Karvonen, who resides in Mankato,
Minnesota. Appx108. In April 2020, Precis filed this suit,
alleging that TracFone infringed the asserted patents by
making, using, offering for sale, or selling prepaid phone
cards through contracts. Appx15.
TracFone, a Delaware corporation with its principal
place of business in Miami, Florida, moved to dismiss the
action due to improper venue or, in the alternative, to
transfer it to the Southern District of Florida. Appx80–81.
On March 11, 2021, the district court denied the motion.
Appx178. As to transfer under § 1404(a), the district court
found that the relative ease of access to sources of proof
factor weighed at least slightly in favor of transfer because
the physical location of TracFone’s documents were in Mi-
ami. Appx188. With regard to the compulsory process fac-
tor, the district court found that this transfer consideration
neither weighed for nor against transfer, because no party
had identified any unwilling witness. Appx190.
As to the willing witness factor, the district court
acknowledged that TracFone’s employees with knowledge
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IN RE: TRACFONE WIRELESS, INC. 3
of the alleged infringement work at its headquarters in Mi-
ami, with TracFone “focus[ing] on four party witnesses” re-
siding in Miami that would likely testify. Id. Although no
party identified any witness residing in the Western Dis-
trict of Texas, the district court weighed this factor against
transfer. Appx191. In support of that decision, the court
explained that it “assumes that no more than a few party
witnesses will testify.” Appx190. The court added that
there were two likely non-party witnesses who reside out-
side both districts—Mr. Karvonen as well as an attorney
involved in the patent prosecution who resides in Ari-
zona—who would have to travel “double” or “nearly double”
the distance if the case were held in the Southern District
of Florida as opposed to Waco, Texas. Appx189–91. The
court further explained that those individuals were enti-
tled to “significantly more weight” than the potential wit-
nesses residing within the Southern District of Florida
because the inventor and patent prosecution attorney were
not employees of either party. Appx191.
Regarding the remaining transfer considerations, the
district court found that the court congestion factor
weighed slightly in favor of transfer, Appx192; the local in-
terest factor weighed in favor of neither forum because
“TracFone utilizes the allegedly infringing process
throughout the nation,” Appx193; and the remaining fac-
tors were neutral. On balance, the district court found that
“the Southern District of Florida is slightly more conven-
ient, but [does] not reach the level of clearly more conven-
ient justifying transfer.” Appx186. Accordingly, the
district court denied TracFone’s motion. TracFone then
filed this petition for a writ of mandamus, seeking to re-
verse that order and direct the court to transfer.
II
Under the All Writs Act, federal courts “may issue all
writs necessary or appropriate in aid of their respective ju-
risdictions and agreeable to the usages and principles of
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4 IN RE: TRACFONE WIRELESS, INC.
law.”
28 U.S.C. § 1651(a). Before a court may issue the
writ, three conditions must be satisfied: (1) the petitioner
must have “no other adequate means to [obtain] the relief
he desires”; (2) the petitioner must show that the right to
the writ is “clear and indisputable”; and (3) the court “in
the exercise of its discretion, must be satisfied that the writ
is appropriate under the circumstances.” Cheney v. U.S.
Dist. Court for D.C.,
542 U.S. 367, 380–81 (2004) (citation
and internal quotation marks omitted). In transfer cases,
those requirements generally coalesce into one inquiry:
whether the district court’s denial of transfer amounted to
a clear abuse of discretion under governing legal stand-
ards. See In re TS Tech USA Corp.,
551 F.3d 1315, 1319
(Fed. Cir. 2008).
We follow regional circuit law on § 1404(a) transfer mo-
tions. Id. The Fifth Circuit requires that when a movant
“clearly demonstrate[s] that a transfer is ‘[f]or the conven-
ience of parties and witnesses, [and] in the interest of jus-
tice,’” the district court “should” grant transfer. In re
Volkswagen of Am., Inc.,
545 F.3d 304, 315 (5th Cir. 2008)
(en banc) (“Volkswagen II”) (citing § 1404(a)). “That deter-
mination is focused on a comparison of the relative conven-
ience of the two venues based on assessment of the
traditional transfer factors.” In re HP Inc., 826 F. App’x
899, 901 (Fed. Cir. 2020) (citing In re Radmax, Ltd.,
720 F.3d 285, 288 (5th Cir. 2013)). In asking whether the
district court abused its discretion in making that determi-
nation, we look at whether it “(1) relies on clearly erroneous
factual findings; (2) relies on erroneous conclusions of law;
or (3) misapplies the law to the facts.” Volkswagen II,
545 F.3d at 310 (quoting McClure v. Ashcroft,
335 F.3d 404,
408 (5th Cir. 2003)).
A
The district court appears to have rested its denial of
TracFone’s motion largely, if not entirely, on its conclusion
that the willing witness factor weighed against transfer.
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IN RE: TRACFONE WIRELESS, INC. 5
We agree with TracFone that the court’s conclusion was
clearly flawed. It was reached despite several of
TracFone’s likely employee witnesses residing in the trans-
feree venue and without relying on the location of a single
potential witness within or even close to Waco, Texas.
Instead, the district court based its conclusion on a
rigid and formulaic application of “the Fifth Circuit’s 100-
mile rule,” which resulted in a finding that “doubling the
distance traveled would double the inconvenience to the
non-party witnesses” in Arizona and Minnesota. Appx191.
But that rule, when correctly applied, does not support the
district court’s determination.
In Volkswagen II, the en banc Fifth Circuit, relying on
its earlier precedent, affirmed the principle that “‘[w]hen
the distance between an existing venue for trial of a matter
and a proposed venue under § 1404(a) is more than 100
miles, the factor of inconvenience to witnesses increases in
direct relationship to the additional distance to be trav-
eled.’” 545 F.3d at 317 (quoting In re Volkswagen AG,
371
F.3d 201, 203 (5th Cir. 2004) (“Volkswagen I”)). That ear-
lier precedent explained the rule’s rationale: the ultimate
“task of scheduling fact witnesses” is “to minimize the time
when they are removed from their regular work or home
responsibilities.” Volkswagen I,
371 F.3d at 205. This “gets
increasingly difficult and complicated,” that earlier prece-
dent explained, “when the travel time from their home or
work site to the court facility is five or six hours one-way
as opposed to 30 minutes or an hour.”
Id.
In applying the 100-mile rule, this court has rejected a
rigid approach that would produce results divorced from
that underlying rationale. For example, in In re Genentech,
Inc.,
566 F.3d 1338, 1344 (Fed. Cir. 2009), we held that “the
‘100-mile’ rule should not be rigidly applied” where “wit-
nesses . . . will be required to travel a significant distance
no matter where they testify.” We concluded that wit-
nesses traveling from Europe, Iowa, and the East Coast
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6 IN RE: TRACFONE WIRELESS, INC.
would only be “slightly more inconvenienced by having to
travel to California” than to Texas.
Id. at 1348.
Similarly, in In re Apple Inc.,
979 F.3d 1332, 1342 (Fed.
Cir. 2020), we held that the Western District of Texas had
erred in not weighing this factor in favor of transfer to the
United States District Court for the Northern District of
California where the parties’ witnesses were located. We
rejected the district court giving more weight to the fact
that the inventors and patent prosecutor residing in New
York would “need to travel a greater distance to reach” the
Northern District of California than the Western District
of Texas.
Id. We did so on the ground that those non-party
witnesses “will likely have to leave home for an extended
period” whether or not the case was transferred, and thus
those witnesses would only be slightly more inconven-
ienced by having to travel to California than to Texas.
Id.
In this case, we see no basis to reach a different result
than we reached in both Genentech and Apple: the district
court clearly abused its discretion in concluding that the
willing witness factor did not weigh in favor of transfer.
The facts here are comparable if not indistinguishable from
those in Apple and establish that the district court gave too
much significance to the fact that the inventor and patent
prosecutor live closer to the Western District of Texas than
the Southern District of Florida, as each “will likely have
to leave home for an extended period of time and incur
travel, lodging, and related costs” regardless of the venue.
979 F.3d at 1342. As in Apple, the district court here
clearly misapplied the law in finding that any inconven-
ience to these individuals outweighed the convenience of
having several party witnesses be able to testify at trial
without having to leave home.
B
Having rejected the district court’s conclusion that the
willing-witnesses factor did not weigh in favor of transfer,
we readily conclude that the district court should have
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IN RE: TRACFONE WIRELESS, INC. 7
granted TracFone’s motion. Indeed, the district court
found that the Southern District of Florida was slightly
more convenient than the Western District of Texas even
with its (erroneous) conclusion that the willing witness fac-
tor weighed against transfer.
The district court itself concluded that the sources of
proof and the court congestion factors favored transferring
the case. Moreover, the district court’s conclusion that the
local interest factor was neutral also appears to be incor-
rect. The district court reasoned that TracFone utilizes the
allegedly infringing process throughout the nation. But
this conclusion of neutrality ignores that the Southern Dis-
trict of Florida has far stronger local interest in the case
than the Western District of Texas. For example, TracFone
operates the accused methods and systems relating to pre-
payment from its headquarters located in the Southern
District of Florida. See In re Hoffmann–La Roche Inc.,
587
F.3d 1333, 1338 (Fed. Cir. 2009) (explaining that “[w]hile
the sale of an accused product offered nationwide does not
give rise to a substantial interest in any single venue, if
there are significant connections between a particular
venue and the events that gave rise to a suit, this factor
should be weighed in that venue’s favor” (internal citations
omitted)); Genentech,
566 F.3d at 1347; see also Apple, 979
F.3d at 1345 (holding that the district court erred by failing
to give weight to the significant connections between a
transferee venue and the events that gave rise to a suit).
Regardless, with several factors favoring transfer and no
factor favoring keeping the case in the plaintiff’s chosen fo-
rum, the district court’s decision that the transferee venue
was not clearly more convenient produced a patently erro-
neous result.
Given that conclusion, we grant TracFone’s mandamus
petition and issue the writ.
Accordingly,
IT IS ORDERED THAT:
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8 IN RE: TRACFONE WIRELESS, INC.
TracFone’s petition for a writ of mandamus is granted.
The March 11, 2021 order is vacated, and the district court
is directed to grant TracFone’s motion to the extent that
the case is transferred to the United States District Court
for the Southern District of Florida under § 1404(a).
FOR THE COURT
April 20, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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