Case: 14-123 Document: 32 Page: 1 Filed: 05/05/2014
CORRECTED: MAY 5, 2014
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE MICROSOFT CORPORATION,
Petitioner.
______________________
2014-123
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 6:12-cv-00663-LED, Judge Leonard Davis.
______________________
ON PETITION
______________________
Before LOURIE, DYK, and REYNA, Circuit Judge.
LOURIE, Circuit Judge.
ORDER
PersonalWeb Technologies, LLC filed more than a
dozen complaints at the United States District Court for
the Eastern District of Texas, charging among others,
Microsoft Corporation, Yahoo!, Inc., and Apple, Inc. with
infringement of the same patents. Each of those defend-
ants moved to transfer its respective cases to where it was
headquartered, asserting that the locale of evidence and
witnesses would make such venues more convenient for
trial. 28 U.S.C. § 1404(a).
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2 IN RE MICROSOFT CORPORATION
The district court granted Apple’s motion, but denied
Microsoft and Yahoo!’s requests, noting that its familiari-
ty with the patents created judicial economy that favored
keeping those cases together in the Eastern District of
Texas. Microsoft alone has petitioned this court for a writ
of mandamus, arguing, among other things, that if the
court’s familiarity with the patents should not preclude
transfer of Apple’s case then it likewise should not pre-
vent transfer of the case against Microsoft to the Western
District of Washington.
Applying Fifth Circuit law in cases arising from dis-
trict courts in that circuit, this court has held that man-
damus may be used to correct denials of transfer that
were clear abuses of discretion under governing legal
standards. See, e.g., In re Nintendo Co.,
589 F.3d 1194
(Fed. Cir. 2009); In re Hoffmann-La Roche Inc.,
587 F.3d
1333 (Fed. Cir. 2009); In re Genentech, Inc.,
566 F.3d 1338
(Fed. Cir. 2009); In re TS Tech USA Corp.,
551 F.3d 1315
(Fed. Cir. 2008); accord In re Volkswagen of Am., Inc.,
545
F.3d 304 (5th Cir. 2008) (en banc).
Although the question of transfer in this case is close,
we cannot say that the district court’s determination
amounted to a clear abuse of discretion. The Supreme
Court has emphasized that judicial economy should play a
role in transfer matters. See Van Dusen v. Barrack,
376
U.S. 612, 643-46 (1964); Cont’l Grain Co. v. Barge FBL-
585,
364 U.S. 19, 26 (1960). The Yahoo! suit remains in
the Eastern District of Texas and Yahoo! has not filed a
petition seeking transfer. Even though Microsoft and
Apple are similarly situated with regard to the court’s
familiarity with the patents, the court additionally noted
Case: 14-123 Document: 32 Page: 3 Filed: 05/05/2014
IN RE MICROSOFT CORPORATION 3
that Microsoft’s accused technology apparently underlies
at least one of Yahoo!’s products at issue. *
Deference as to the proper administration of justice is
particularly appropriate in this type of circumstance,
where the trial court is “familiar with [an] . . . asserted
patent and the related technology . . . coupled with the
fact there is co-pending litigation before the trial court
involving the same patent and underlying technology”
and, as the district court noted, Microsoft and Yahoo! plan
on calling at least some of the same witnesses. In re
Vistaprint Ltd.,
628 F.3d 1342, 1347 (Fed. Cir. 2010); In
re Volkswagen of Am., Inc.,
566 F.3d 1349 (Fed. Cir.
2009); Regents of the Univ. of Cal. v. Eli Lilly & Co.,
119
F.3d 1559 (Fed. Cir. 1997).
Microsoft attempts to characterize the overlap be-
tween the case against itself and Yahoo! as “minimal.”
Reply to Petition at 11. But by Microsoft’s own prior
admission, “[c]onsiderations of judicial economy and
efficiency here include the fact that defendant Microsoft
has an indemnity relationship with defendant Yahoo!
(with regard to Microsoft’s ‘Bing’ search engine, identified
by PersonalWeb as underlying Yahoo!’s accused search
engine) . . . .” Exhibit 43 to Petition at 10-11. These
statements certainly undermine Microsoft’s argument
that it was unreasonable for the district court to weigh
judicial economy against transfer.
Although judicial economy cannot dominate the
§ 1404(a) analysis, which generally calls for transfer
where the convenience factors strongly weigh in favor of
the transferee forum, the district court’s conclusion did
* Because Yahoo!’s recent motion to sever and stay
the related claims was not raised to the district court with
regard to transfer or addressed in the petition, we will not
consider its impact on the transfer analysis.
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4 IN RE MICROSOFT CORPORATION
not rest entirely on judicial economy. It noted that any
documentary sources of proof and employee witnesses of
PersonalWeb would reside in the Eastern District of
Texas. It further found that the Western District of
Washington had no authority to compel a non-party
witness to testify. Under these circumstances and the
relatedness of the suits against Microsoft and Yahoo!, it is
not entirely self-evident that the transferee venue is more
convenient and that transfer would be in the interest of
justice. We therefore cannot say that Microsoft has met
the demanding standard for mandamus relief.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is denied.
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court
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