Case: 20-140 Document: 16 Page: 1 Filed: 09/15/2020
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: HP INC.,
Petitioner
______________________
2020-140
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 4:19-
cv-00696-ALM, Judge Amos L. Mazzant, III.
______________________
ON PETITION AND MOTION
______________________
Before NEWMAN, LOURIE, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
HP Inc. petitions for a writ of mandamus to direct the
United States District Court for the Eastern District of
Texas to transfer this case to the United States District
Court for the Northern District of California. Largan Pre-
cision Co., Ltd. opposes. HP replies. HP also moves with-
out opposition to submit a supplemental appendix. For the
following reasons, we grant HP’s petition.
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2 IN RE: HP INC.
BACKGROUND
Largan, a Taiwanese corporation, brought this suit
against two other Taiwanese corporations, Ability Opto-
Electronics Technology Co., Ltd. (“AOET”) and Newmax
Technology Co., Ltd, as well as against HP, for infringing
four patents based on HP’s incorporation of AOET’s and
Newmax’s optical lenses into HP’s laptops.
HP, joined by AOET and Newmax, moved pursuant to
28 U.S.C. § 1404(a) to transfer the case to the Northern
District of California where HP is headquartered. At-
tached to HP’s motion was a declaration filed by HP’s Sen-
ior Litigation Manager, Anthony Baca. Baca identified ten
HP employees residing in Northern California that had rel-
evant knowledge regarding sales, marketing, revenue, and
profits of the accused products. He added that no employee
responsible for such activity works in the Eastern District
of Texas. Baca additionally stated that documents relating
to the design, development, marketing, and sales of the ac-
cused products were also in the transferee district and else-
where, but not in the Eastern District of Texas.
HP further argued that the only state in the United
States to which Largan has a connection is California, not-
ing that Largan had previously filed two patent infringe-
ment suits in the Northern District of California, including
an action alleging infringement of one of the patents as-
serted in this case as well as other related patents based
on incorporation of Genius Electronic Optical Co., Ltd.’s
lenses into Apple Inc.’s products. HP argued that Apple
and Genius, which both have offices in Northern Califor-
nia, likely had material information relevant to invalidity
and damages that the transferee venue could compel. HP
added that transfer would preserve judicial economy given
the Northern District of California was already familiar
with the technology and one of the patents.
The district court denied the motion. In examining the
factors related to the private interests of the litigants, the
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IN RE: HP INC. 3
court acknowledged that physical sources of proof and po-
tential willing witnesses are in the Northern District of
California, and not the Eastern District of Texas. However,
the court weighed those factors as neutral largely because
more documents and witnesses would be coming from Tai-
wan. The court also recognized that Apple and Genius
would likely be beyond the reach of its compulsory process
powers, but nonetheless weighed the factor against trans-
fer because “Largan identifie[d] specific third-party wit-
nesses, with at least two residing in Texas.” Appx24.
The district court also addressed several factors related
to the public’s interest. The court recognized that the local
interest factor weighed at least slightly in favor of transfer
given “more of the events giving rise to this suit appear to
have occurred in the Northern District of California than
in the Eastern District of Texas—specifically, the develop-
ment of the accused products.” Appx30. However, the
court weighed against transfer that it had “already gained
familiarity with the parties and issues in this case in de-
ciding Defendants’ personal jurisdictional challenge” and
because “AOET indicated its plans to relitigate its personal
jurisdictional challenge if this case is transferred to the
Northern District of California.” Appx28.
Finding that one factor weighed in favor of transfer,
two weighed against transfer, and the rest neutral, the
court concluded that the defendants had failed to show that
transfer is clearly more convenient and in the interest of
justice. Accordingly, the court denied the motion. HP then
filed this petition seeking mandamus review.
DISCUSSION
A party seeking mandamus must: (1) show that it has
a clear and indisputable legal right; (2) show it does not
have any other method of obtaining relief; and (3) convince
the court that the “writ is appropriate under the circum-
stances.” Cheney v. U.S. Dist. Court for D.C.,
542 U.S. 367,
380–81 (2004) (citation omitted). In the transfer context,
Case: 20-140 Document: 16 Page: 4 Filed: 09/15/2020
4 IN RE: HP INC.
these requirements coalesce into one, because the possibil-
ity of an appeal after judgment is not an adequate remedy
and mandamus is deemed an appropriate vehicle to correct
patently erroneous transfer determinations. See In re TS
Tech USA Corp.,
551 F.3d 1315, 1322 (Fed. Cir. 2008).
We review a decision to deny transfer pursuant to
§ 1404(a) under regional circuit law, in this case, the Fifth
Circuit.
Id. at 1319. Fifth Circuit law requires that when
a movant “clearly demonstrate[s] that a transfer is ‘[f]or
the convenience of parties and witnesses, [and] in the in-
terest of justice,’” the district court “should” grant transfer.
In re Volkswagen of Am., Inc.,
545 F.3d 304, 315 (5th Cir.
2008) (en banc) (citation omitted). That determination is
focused on a comparison of the relative convenience of the
two venues based on assessment of the traditional transfer
factors. See In re Radmax, Ltd.,
720 F.3d 285, 288 (5th Cir.
2013) (noting that the critical inquiry “is relative ease of
access, not absolute ease of access.” (emphases omitted));
see also In re Toyota Motor Corp.,
747 F.3d 1338, 1341 (Fed.
Cir. 2014) (granting mandamus, explaining that while an
analysis of the factors in that case “may not show that the
transferee forum is far more convenient,” such a showing
was not required to compel transfer, because “[w]ith noth-
ing on the transferor-forum side of the ledger, the analysis
shows that the transferee forum is ‘clearly more conven-
ient’” (citation and emphases omitted)).
In reviewing that determination on mandamus, we ask
whether the district court clearly abused its discretion. TS
Tech, 551 F.3d at 1319. To answer that question, we may,
under appropriate circumstances, revisit the court’s analy-
sis of the disputed transfer factors (here, largely the willing
witness, source of proof, compulsory process, and practical
problems factors 1), see
Radmax, 720 F.3d at 288, and
1 HP also argues that the district court erred in
weighing the local interest factor only slightly in favor of
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IN RE: HP INC. 5
“review carefully the circumstances presented to and the
decision making process of the district court,”
Volkswagen,
545 F.3d at 312 (internal quotation marks and citation
omitted). Given this suit was brought by a foreign plaintiff,
HP’s presence in the transferee venue, and no readily ap-
parent connection with the Eastern District of Texas, we
conclude that this is one of those cases. In revisiting the
relevant factors and taking due account of the proper in-
quiry, we hold that HP has shown entitlement to manda-
mus because the court’s decision lies far outside the
boundaries of a reasonable exercise of discretion.
A.
1. In its consideration of the willing witness factor, the
district court here acknowledged that “[t]he comparison be-
tween the transferor and transferee forums is not altered
by the presence of other witnesses and documents in places
outside both forums.” Appx27 n.2 (quoting
Toyota, 747
F.3d at 1340). The district court’s analysis, however, failed
to adhere to that legal principle. Specifically, because the
district court recognized that HP had identified several
witnesses in the Northern District of California that could
testify at trial without having to travel away from their res-
idences and that “no key witnesses appear to reside in the
Eastern District of Texas,” Appx27, the district court
should have weighed this factor at least slightly in favor of
transfer. Instead, the court here erred in weighing this fac-
tor as neutral on the ground “that the most numerous and
significant witnesses reside in Taiwan, for whom travel to
either forum is equally inconvenient.”
Id.
transfer as opposed to strongly in favor of transfer given
HP’s presence in the transferee venue and no party or
event giving rise to this suit in the Eastern District of
Texas. While there is force to this contention, we find that
making such a change would not alter the outcome here.
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6 IN RE: HP INC.
2. The district court made a similar error in its assess-
ment that the sources of proof factor here favored neither
of the two venues. The district court reasoned that “HP
will likely produce evidence from its headquarters in the
Northern District of California, but may also [electroni-
cally] access documents located within [other parts of]
Texas, and the bulk of evidence in this case will likely come
from Taiwan rather than any district in the United States.”
Appx23. This again ignored that the critical inquiry “is rel-
ative ease of access, not absolute ease of access.”
Radmax,
720 F.3d at 288 (emphases omitted). Since no party is in
the Eastern District of Texas, and the existence of physical
sources of proof in the Northern District of California
makes that venue more convenient for trial, this factor also
weighs at least slightly in favor of transfer.
3. The district court likewise erred in ruling that the
compulsory process factor weighed against transferring the
case to Northern California. The court acknowledged the
presence of Apple and Genius within the Northern District
of California, which HP believes may have sold and pur-
chased lenses covered by the patents prior to the critical
date. As HP points out, only the transferee venue can com-
pel those companies to provide documentary evidence and
trial and deposition testimony without requiring any
travel. In re Hoffmann-La Roche Inc.,
587 F.3d 1333, 1337
(Fed. Cir. 2009). By contrast, Largan only identified Texas
residents who reside more than 100 miles outside the East-
ern District of Texas, which means that court can only com-
pel testimony if it would not incur a substantial expense.
Fed. R. Civ. P. 45(c)(1)(B).
The district court weighed this factor against transfer
based solely on the fact that Largan had identified its third
parties by name whereas HP identified the corporate enti-
ties without specifying individual employees. However, we
cannot say that should negate the potential benefits of
transfer here with regard to Apple and Genius. To be sure,
it is reasonable to reject vague and unsupported
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IN RE: HP INC. 7
statements regarding the location of potential witnesses or
sources of proof. See In re Apple Inc.,
743 F.3d 1377, 1379
(Fed. Cir. 2014). But here, the court recognized that the
pertinent Apple and Genius information would likely be in
the transferee venue. There was thus no basis to discount
these entities just because individual employees were not
identified. This factor therefore should have been weighed,
at a minimum, as neutral, if not in favor of transfer.
4. Lastly, the district court erred when it weighed the
practical problems factor against transfer. The Eastern
District of Texas rejected transfer to the Northern District
of California, a court that has familiarity with the technol-
ogy and one of the patents, based largely on the Eastern
District of Texas’s own familiarity gained in deciding
AOET’s and Newmax’s personal jurisdiction challenges.
The problem with this analysis is that “[m]otions to trans-
fer venue are to be decided based on ‘the situation which
existed when suit was instituted,’” In re EMC Corp., 501
F. App’x 973, 976 (Fed. Cir. 2013) (quoting Hoffman v.
Blaski,
363 U.S. 335, 343 (1960)). At the time this suit was
instituted, the Northern District of California had gained
familiarity over one of the patents in presiding over Lar-
gan’s earlier suit against Genius, while the district court
here had no familiarity with any of the issues. 2
The district court also expressed some concern over the
possibility that AOET would relitigate personal jurisdic-
tion if the case were transferred. But this fear appears to
be based entirely on the fact that AOET stated that it was
joining HP’s motion “without waiving its defenses of lack of
personal jurisdiction and improper venue.” Appx462.
Given the court had already concluded that the suit could
have been brought in the Northern District of California
2 Even making this assessment at the time the
transfer motion was filed, the transferee venue had at least
as much, if not more, experience with relevant issues.
Case: 20-140 Document: 16 Page: 8 Filed: 09/15/2020
8 IN RE: HP INC.
and AOET joined the motion, we cannot say that this spec-
ulation could justify weighing this factor against transfer.
B.
In summary, the district court’s ruling was clearly
wrong. While it correctly labeled the local interest factor
in favor of transfer, the district court incorrectly labeled
the willing witness and sources of proof factors as neutral
when they clearly weigh at least slightly in favor of trans-
fer, and incorrectly weighed the compulsory process and
practical problems factors against transfer when, at a min-
imum, those factors are neutral.
While mindful that mandamus “does not reach all er-
roneous rulings of the district court,”
Volkswagen, 545 F.3d
at 315 n.11, as in previous cases where this court and the
Fifth Circuit have decided to issue the writ, here there is
such “a stark contrast in relevance, convenience, and fair-
ness between the two venues,”
Hoffmann, 587 F.3d at 1336,
that the only plausible judgment that can be reached under
these facts is that the Northern District of California is
clearly more convenient for trial of this case.
Several witnesses will find the Northern District of
California a less costly and more convenient forum to ap-
pear at trial. Apple and Genius employees can also be com-
pelled to produce documents and trial and deposition
testimony without having to travel. The district court itself
found that the Northern District of California has more of
a local interest in this case. The transferee venue has fa-
miliarity with the underlying technology and patents. And
the Northern District of California is also the only venue
where any of the physical evidence is located. Meanwhile,
the Eastern District of Texas has no direct connection to
any witnesses, source of proof, or interest in this case.
Even measuring against the high standard necessary
to grant a writ of mandamus, under these facts, HP has
established the right to a writ to direct transfer.
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IN RE: HP INC. 9
Accordingly,
IT IS ORDERED THAT:
(1) The petition is granted. The district court’s June
10, 2020 order is vacated, and it is directed to transfer this
matter to the United States District Court for the Northern
District of California.
(2) The motion for leave to submit a supplemental ap-
pendix is granted.
FOR THE COURT
September 15, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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