In Re Emc Corp. , 501 F. App'x 973 ( 2013 )


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  • Case: 13-142    Document: 32     Page: 1   Filed: 01/29/2013
    NOTE: This order is nonprecedential.
    United States Court of Appeals
    for the Federal Circuit
    ______________________
    IN RE EMC CORP., DECHO CORP., IOMEGA
    CORP., AND CARBONITE, INC.,
    Petitioners.
    _____________________
    Miscellaneous Docket No. 142
    ______________________
    On Petition for Writ of Mandamus to the United States
    District Court for the Eastern District of Texas in case no.
    10-CV-0435, Magistrate Judge Amos L. Mazzant.
    ______________________
    ON PETITION
    ______________________
    Before RADER, Chief Judge, DYK, and MOORE, Circuit
    Judges.
    DYK, Circuit Judge.
    ORDER
    This is petitioners EMC Corporation, Decho Corpora-
    tion, Iomega Corporation and Carbonite Corporation’s
    second request for a writ of mandamus in this case; as we
    noted before, this matter arose out of a single complaint
    filed by respondent Oasis Research LLC (“Oasis”) charg-
    ing a total of eighteen companies with offering online
    Case: 13-142    Document: 32     Page: 2   Filed: 01/29/2013
    2                                            IN RE EMC CORP
    backup and storage for home or business computer users
    that allegedly infringed its patents. In re EMC Corp., 
    677 F.3d 1351
     (Fed. Cir. 2012). The United States District
    Court for the Eastern District of Texas denied EMC and
    Carbonite’s requests to sever the claims against them in
    separate motions filed shortly after the complaint. In its
    view, Rule 20 of the Federal Rules of Civil Procedure—
    which governs joinder of claims arising out of the same
    transaction or occurrence—was met because the defen-
    dants’ accused services and products were “not dramati-
    cally different.” Oasis Research LLC v. ADrive LLC, No.
    4:10-CV-435, 
    2011 WL 3099885
    , at *2 (E.D. Tex. May 23,
    2011). Given its conclusion that all eighteen claims
    belonged in the same action, the district court also denied
    EMC and Carbonite’s motions to transfer venue to the
    United States District Courts for the Districts of Utah
    and Massachusetts, respectively, on the ground that
    transfer would divide a single action into several “differ-
    ent lawsuits scattered across the country.” Id. at *4.
    On petition this court reversed. We held that claims
    against independent defendants cannot be joined under
    the transaction-or-occurrence test “unless the facts under-
    lying the claim of infringement asserted against each
    defendant share an aggregate of operative facts.” EMC,
    677 F.3d at 1359. Because application of the improper
    joinder test could preclude a proper transfer analysis and
    prevent the defendants from having a “meaningful oppor-
    tunity to present individualized defenses on issues such
    as infringement, willfulness, and damages,” we granted
    the petition to the limited extent that we directed the
    district court to apply the correct test. Id. at 1354-55. We
    did not express any opinion on the issue of transfer of
    venue.
    After our opinion, the district court severed the mat-
    ter into four separate cases, including creating a separate
    Case: 13-142     Document: 32    Page: 3   Filed: 01/29/2013
    IN RE EMC CORP                                           3
    action against Carbonite and a separate action against
    EMC, Decho, and Iomega, consolidated the cases for pre-
    trial proceedings, and again denied the petitioners’ mo-
    tions for transfer in separate orders. In its denial of
    transfer orders, the district court concluded that in each
    case the petitioners had failed to show that the transferee
    venues were clearly more convenient. In so finding, the
    district court acknowledged that at least one party in each
    case had maintained significant operations relating to an
    accused product in the transferee venues and that the
    petitioners had identified five potential witnesses who
    reside in Utah and two potential witnesses who reside in
    Massachusetts. However, the court concluded that the
    petitioners had not met their burden of demonstrating the
    need for transfer, particularly in light of the fact that
    some potential witnesses were located in or closer to the
    Eastern District of Texas, and several witnesses and
    sources of proof were located in various other states,
    including New York, Virginia, Colorado, and Washington,
    D.C. The district court, moreover, concluded in each case
    that judicial economy weighed heavily against transfer.
    In that regard, the district court noted that if it were to
    transfer the cases other courts “would have to spend
    significant resources to familiarize [themselves] with the
    patents, prosecution history, claim construction, and
    other issues in th[ese] case[s].” Taking particular issue
    with that analysis, the petitioners now seek a writ of
    mandamus with regard to those orders.
    The petitioners’ request for a writ directing the dis-
    trict court to transfer these cases runs up against a highly
    deferential standard of review. The question before us on
    mandamus is not whether the transferee venues are more
    convenient and fair; nor is it even whether in our view it
    was an abuse of discretion for the trial court to have
    denied transfer, which is the applicable standard of
    review on direct appeal. See In re TS Tech USA Corp.,
    Case: 13-142    Document: 32      Page: 4    Filed: 01/29/2013
    4                                             IN RE EMC CORP
    
    551 F.3d 1315
    , 1319 (Fed. Cir. 2008). Instead, the ques-
    tion is whether the denial of transfer was such a “‘clear’
    abuse of discretion” that refusing transfer would produce
    a “patently erroneous result.” Id. (quoting In re Volks-
    wagen of Am., Inc., 
    545 F.3d 304
    , 310 (5th Cir. 2008) (en
    banc)). Under this highly deferential standard, we must
    leave the district court’s decision undisturbed unless it is
    clear “that the facts and circumstances are without any
    basis for a judgment of discretion.” Volkswagen, 545 F.3d
    at 317 n.7 (quoting McGraw-Edison Co. v. Van Pelt, 
    350 F.2d 361
    , 363 (8th Cir. 1965)). Here, we cannot say that
    standard has been met.
    This case is a prime example of the importance of ad-
    dressing motions to transfer at the outset of litigation. As
    the Fifth Circuit stated in In re Horseshoe Entm’t, “in our
    view disposition of [a] motion [to transfer] should have
    taken a top priority in the handling of this case by the . . .
    District Court. 1 ” 
    337 F.3d 429
    , 433 (5th Cir. 2003).
    Congress’ intent “to prevent the waste of time, energy and
    money and to protect litigants, witnesses and the public
    against unnecessary inconvenience and expense,” Van
    Dusen v. Barrack, 
    376 U.S. 612
    , 616 (1964) (internal
    quotation marks omitted), may be thwarted where, as
    here, defendants must partake in years of litigation prior
    to a determination on a transfer motion.
    1    Similarly, the Third Circuit has concluded that
    “[j]udicial economy requires that [a] district court should
    not burden itself with the merits of the action until it is
    decided [whether] a transfer should be effected” and thus
    “it is not proper to postpone consideration of the applica-
    tion for transfer under § 1404(a) until discovery on the
    merits is completed.” McDonnell Douglas Corp. v. Polin,
    
    429 F.2d 30
    , 30 (3d Cir. 1970).
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    IN RE EMC CORP                                            5
    Here, the district court based its denial of the peti-
    tioners’ motions to transfer venue in part on considera-
    tions of judicial economy. Petitioners protest that there is
    no “legitimate judicial economy factor” here because the
    district court’s familiarity with the case arises only from
    its earlier error in refusing to sever and transfer claims
    against them. Petition at 11. Petitioners are correct that
    the district court could not properly rely on judicial econ-
    omy involved in retaining the very cases that were the
    subject of the transfer motion. Motions to transfer venue
    are to be decided based on “the situation which existed
    when suit was instituted.” Hoffman v. Blaski, 
    363 U.S. 335
    , 343 (1960) (quoting Paramount Pictures, Inc. v.
    Rodney, 
    186 F.2d 111
    , 119 (3d Cir. 1950) (Hastie, J.,
    dissenting)). Any subsequent familiarity gained by the
    district court is therefore irrelevant.
    It does not follow, however, that the district court’s
    judicial economy rationale was wholly misplaced. While
    considerations of judicial economy arising after the filing
    of a suit do not weigh against transfer, a district court
    may properly consider any judicial economy benefits
    which would have been apparent at the time the suit was
    filed. For example, we have held that a district court’s
    experience with a patent in prior litigation and the co-
    pendency of cases involving the same patent are permis-
    sible considerations in ruling on a motion to transfer
    venue. In re Vistaprint, Ltd., 
    628 F.3d 1342
    , 1346-47 &
    n.3 (Fed. Cir. 2010). The latter consideration is applicable
    here. The district court could properly consider the
    benefits to judicial economy arising from having the same
    judge handle both Oasis’s suits against the petitioners
    and Oasis’s suits against other parties involving the same
    patents and technology as to which there was no issue of
    transfer. Petitioners complain that Oasis’s claims against
    other defendants have since been dismissed, but, as
    discussed above, the relevant inquiry is the state of affairs
    Case: 13-142    Document: 32     Page: 6    Filed: 01/29/2013
    6                                             IN RE EMC CORP
    at the time “when suit was instituted.” Hoffman, 363
    U.S. at 343. Because the dismissal of Oasis’s suits as to
    the other defendants occurred later, it is not relevant to
    the venue inquiry. Accordingly, the district court could
    properly conclude that considerations of judicial economy
    favored retention of the cases.
    To be clear, we are not suggesting that the judicial
    economy of having the same judge handle multiple suits
    involving the same patents should dominate the transfer
    inquiry. After all, the MultiDistrict Litigation Procedures
    exist to effectuate this sort of efficiency. Here, the peti-
    tioners concede that the district court considered all of the
    other relevant interest factors in reaching the conclusion
    that the transferee venues were not clearly more conven-
    ient for trial than the Eastern District of Texas. See
    Petition at 9. The district court found not only that
    judicial economy weighed against transfer, but also that a
    significant number of identified potential sources of proof
    and witnesses are located outside of the transferee ven-
    ues, including at least one witness in Carbonite’s case and
    two witnesses in EMC’s case who reside in the Eastern
    District of Texas. Given these facts, we cannot say that,
    on the whole, the district court’s determination as to
    transfer was so unreasonable as to warrant mandamus
    relief.
    Accordingly,
    (1) The petition for a writ of mandamus is denied.
    (2) The motion for a stay is denied as moot.
    Case: 13-142     Document: 32   Page: 7   Filed: 01/29/2013
    IN RE EMC CORP                                         7
    FOR THE COURT
    /s/ Jan Horbaly
    Jan Horbaly
    Clerk
    s19