Case: 22-154 Document: 15 Page: 1 Filed: 08/09/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: HEWLETT PACKARD ENTERPRISE CO.,
Petitioner
______________________
2022-154
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:21-
cv-00596-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before HUGHES, MAYER, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
ORDER
Hewlett Packard Enterprise Co. (“HPE”) petitions for a
writ of mandamus directing the United States District
Court for the Western District of Texas to transfer this case
to the United States District Court for the District of Mas-
sachusetts. Intellectual Ventures I LLC (“IV”) opposes.
IV filed this suit in the Waco Division of the Western
District of Texas, alleging that HPE’s SimpliVity data stor-
age solution infringes a patent assigned to IV. According
to HPE, the accused technology was “mostly” designed and
developed by SimpliVity Corporation before HPE acquired
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2 IN RE: HEWLETT PACKARD ENTERPRISE CO.
it in 2017 and the development of the accused products oc-
curred primarily in Massachusetts. Appx83. HPE moved
SimpliVity development work to India in 2020. Appx84.
HPE sought to transfer the case pursuant to
28 U.S.C.
§ 1404(a) to the District of Massachusetts. On April 29,
2022, the district court denied that motion. After deter-
mining that this suit could have been brought in the Dis-
trict of Massachusetts, the court analyzed whether HPE
had shown that the transferee venue was clearly more con-
venient than the Western District of Texas, following the
multi-factor approach adopted by the United States Court
of Appeals for the Fifth Circuit in In re Volkswagen of Am.,
Inc.,
545 F.3d 304, 310 (5th Cir. 2008) (en banc). The court
found that one factor (court congestion) weighed against
transfer; one factor (willing witnesses) weighed slightly in
favor of transfer; one factor (local interest) favored trans-
fer; three factors (sources of proof, compulsory process, and
practical problems) were neutral, and the parties agreed
that the remaining two factors were neutral. Among other
things, the district court determined that: (1) the Texas fo-
rum is likely to be faster in adjudicating the matter; (2) the
cost of attending proceedings in Texas was only slightly
more costly than in Massachusetts; (3) HPE financial doc-
uments are in Texas; and (4) there was insufficient evi-
dence that relevant documents existed in Massachusetts,
given HPE had moved its relevant operations to India in
2020 (and thus technical documents presumably would be
easiest to access in India), HPE’s 30(b)(6) witness testified
about the location of electronic documents with some cer-
tainty and none were in Massachusetts, and two develop-
ers of the accused product who reside in Massachusetts but
no longer work on the accused product did not testify that
they had any documents.
Applying the law of the regional circuit, In re TS Tech
USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008), here, the
Fifth Circuit, our task on mandamus is limited to deter-
mining whether the denial of transfer was such a “‘clear’
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IN RE: HEWLETT PACKARD ENTERPRISE CO. 3
abuse of discretion” that refusing transfer would produce a
“patently erroneous result,”
id. (citation omitted); see also
In re Apple Inc.,
979 F.3d 1332, 1336 (Fed. Cir. 2020); In re
Nitro Fluids L.L.C.,
978 F.3d 1308, 1310–11 (Fed. Cir.
2020). Under Fifth Circuit law, we must deny mandamus
unless it is clear “that the facts and circumstances are
without any basis for a judgment of discretion.”
Volkswagen, 545 F.3d at 312 n.7 (citation omitted). Here,
HPE has not shown the required clear abuse of discretion
resulting in a patently erroneous result.
HPE has not shown a clear right to having the sources
of proof factor weighed in favor of transfer. Given the rec-
ord in this case, the court here reasonably found that HPE
did not show that more documentary evidence exists in
Massachusetts than Western Texas. HPE failed to identify
any specific documents in Massachusetts. And while HPE
submitted a declaration from an employee who worked on
the development of the accused products stating to his per-
sonal knowledge that technical documents were located
“primarily with the persons that design, develop, and test
it,” Appx99, it was reasonable here for the district court to
question whether any of those employees in Massachu-
setts, who had not worked on the products in years, would
still have documents in their possession, given that devel-
opment had moved to India. HPE notably did not submit
declarations from any employee confirming possession of
such technical documents. It was likewise reasonable for
the district court to give little weight to the existence of IV
documents located with its counsel in Massachusetts. See
In re Horseshoe Ent.,
337 F.3d 429, 434 (5th Cir. 2003)
(“The factor of ‘location of counsel’ is irrelevant and im-
proper for consideration” in a transfer analysis).
Nor has HPE provided compelling reasons to second
guess the court’s determinations regarding the witness fac-
tors. The court reasonably found that the willing witnesses
factor only slightly weighs in favor of transfer given that
HPE had only identified two potentially relevant witnesses
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4 IN RE: HEWLETT PACKARD ENTERPRISE CO.
in Massachusetts with any particularity and IV identified
one potentially relevant witness in the Western District of
Texas. The district court also found that it had compulsory
process power over at least one non-party potential wit-
ness. HPE challenges whether these individuals identified
in Texas have relevant and material information. Mindful
of the demanding standard of review, however, HPE has
not shown that we should disturb those findings in this
case. Accordingly, we cannot say that the trial court’s
weighing of the witness factors was unreasonable and war-
rants the extraordinary relief of mandamus.
As such, the court reasonably found that the circum-
stances of this case are materially different from In re
Genentech, Inc.,
566 F.3d 1338, 1347 (Fed. Cir. 2009), in
which we granted mandamus to direct transfer. Genentech
held that “when . . . several relevant factors weigh in favor
of transfer and others are neutral, then the speed of the
transferee district court should not alone outweigh all of
those other factors.”
Id. But in Genentech, we concluded
that there was “no rational argument” for keeping that case
in the Texas forum based on an assessment of the other
factors.
Id. at 1348. This case is different because the trial
court reasonably found that while the local interest factor
favors transfer, the willing witness factor only slightly fa-
vors transfer, and the remaining factors (other than court
congestion) are neutral. HPE has not convinced us to ex-
tend Genentech to reach this case. Nor can we say that the
trial court’s balancing of the factors was so unreasonable
as to warrant the extraordinary relief of mandamus.
Accordingly,
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IN RE: HEWLETT PACKARD ENTERPRISE CO. 5
IT IS ORDERED THAT:
The petition is denied.
FOR THE COURT
August 9, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
