In Re: HP INC.

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: HP INC.,
Petitioner
______________________
2018-149
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 6:17-cv-00462-RWS, Judge Robert Schroeder III.
______________________
ON PETITION
______________________
Before PROST, Chief Judge, NEWMAN and LOURIE, Circuit
Judges.
LOURIE, Circuit Judge.
ORDER
HP Inc. petitions for a writ of mandamus seeking an
order directing the United States District Court for the
Eastern District of Texas to vacate its order denying
transfer and to transfer this case to the United States
District Court for the Northern District of California.
Cypress Lake Software, Inc. opposes. HP replies. Be-
cause the district court committed a clear abuse of discre-
tion in denying transfer, we grant the petition.
2 IN RE: HP INC.
BACKGROUND
This petition arises out of a complaint filed at the
Eastern District of Texas by Cypress Lake against HP.
Cypress Lake has its principal place of business in Wood-
ville, Texas. HP is a Delaware corporation with head-
quarters in the Northern District of California. The
complaint alleges that, by employing third-party Google
LLC’s Chrome operating system, HP’s Chromebook lap-
tops infringe seven of Cypress Lake’s patents.
HP moved to transfer the case to the Northern Dis-
trict of California for the convenience of the parties pur-
suant to 28 U.S.C. § 1404(a). HP identified nine potential
employee witnesses who reside in the Northern District of
California and noted that it has no employee in the East-
ern District of Texas with primary decisionmaking re-
sponsibility over its Chromebooks, its relationship with
Google, or the sales and marketing of the accused prod-
ucts. HP also identified potential witnesses from non-
party Google who reside in Northern California, while
noting that Google “does not have any employees with
responsibility for the Chrome operating system in [the
Eastern District of Texas].” HP argued that documents
and evidence relevant to the case would most likely come
from either Google or HP’s headquarters in the Northern
District of California. HP further noted that the inventor
of the patents resides outside of Texas, in North Carolina.
Cypress Lake opposed transfer, arguing that the
Eastern District of Texas was appropriate because it is
Cypress Lake’s home forum, the court had become famil-
iar with the patents-in-suit and relevant technology based
on previously-filed lawsuits, and it is where HP maintains
an office. Cypress Lake noted that its relevant documents
are stored in the Eastern District of Texas and that its
manager, who could be a potential witness in the case,
resides in the Eastern District of Texas. Cypress Lake
also argued that HP’s and Google’s evidence was “digital
IN RE: HP INC. 3
and easily transportable.” Cypress Lake further argued
that HP had failed to specify what testimony its potential
witnesses might provide and thus those witnesses should
not be given any real consideration in the district court’s
analysis.
The district court analyzed the motion by considering
the public and private interest factors first enunciated in
Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). The
district court found that the local interest factor favored
transfer of the case to the Northern District of California
“where HP is headquartered and where over 3,000 em-
ployees are located, including employees responsible for
the sales, project development, project management, and
financial accounting relating to the HP Chromebooks.”
The district court also found that the sources of proof
factor favored transfer, albeit only slightly. The court
found that the remaining factors, including the availabil-
ity of compulsory process and the cost of attendance for
willing witnesses factors, did not weigh in favor of either
venue. The district court even rejected Cypress Lake’s
argument that judicial economy considerations warranted
keeping the case, noting that it had yet to address any
substantive issues regarding these patents. Nonetheless,
the court denied HP’s motion to transfer, finding that HP
had not shown that the Northern District of California
would be clearly more convenient to try the case.
DISCUSSION
To obtain mandamus relief, HP must demonstrate
that (1) it has no other adequate means to obtain the
relief it desires, (2) the district court’s decision amounted
to a judicial usurpation of power or a clear abuse of dis-
cretion, and (3) we are satisfied that granting the writ is
appropriate. See Cheney v. U.S. Dist. Court for the Dist. of
Columbia, 542 U.S. 367, 380–81 (2004); In re TS Tech
USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (noting
that mandamus may be granted to direct transfer when
4 IN RE: HP INC.
the denial was a clear abuse of discretion such that refus-
ing transfer produced a patently erroneous result).
We apply regional circuit law to review orders deny-
ing motions to transfer under § 1404(a). See TS Tech, 551
F.3d at 1319. In the Fifth Circuit, the legal standard for
determining whether to grant a change of venue motion is
well settled. The transfer statute authorizes a district
court to transfer a civil action to another district if the
transfer would serve “the convenience of parties and
witnesses” and would be “in the interest of justice.”
§ 1404(a). Under Fifth Circuit law, “[a] motion to transfer
venue pursuant to § 1404(a) should be granted if ‘the
movant demonstrates that the transferee venue is clearly
more convenient.’” In re Radmax, Ltd., 720 F.3d 285, 288
(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc., 545
F.3d 304, 315 (5th Cir. 2008) (en banc)).
HP argues that the district court clearly abused its
discretion in denying transfer. According to HP, the
district court failed to follow our decision in In re Toyota
Motor Corp., 747 F.3d 1338 (Fed. Cir. 2014), in refusing to
transfer despite weighing several factors in favor of
transfer and no factor in favor of keeping the case. HP
argues that the district court also clearly erred in finding
that the compulsory process and cost of attendance for
willing witness factors did not favor transfer. Cypress
Lake responds that the district court’s decision to deny
transfer was correct because transfer would simply shift
the burden of inconvenience to Cypress Lake and wit-
nesses in or closer to the Eastern District of Texas, the
district court correctly found that HP had not shown that
its employees were likely to be called to testify in the case,
and the district court correctly noted that “HP has not
even communicated with” the identified Google employees
and “can provide no further information regarding them.”
We agree with HP that the district court abused its
discretion in denying its motion to change venue. In
IN RE: HP INC. 5
Toyota, the district court denied transfer despite finding
that no factor favored retaining the case in the Eastern
District of Texas, the sources of proof factor slightly
favored transfer, and the local interest factor favored
transfer. Am. Vehicular Scis. LLC v. Toyota Motor Corp.,
No. 6:12-cv-404, 2013 WL 8180623, at *6, *8 (E.D. Tex.
June 12, 2013). We granted mandamus, explaining that
while the district court’s analysis in that case “may not
show that the transferee forum is far more convenient,”
such a showing was not required to compel transfer.
Toyota, 747 F.3d at 1341. Rather, “[w]ith nothing on the
transferor-forum side of the ledger, the analysis shows
that the transferee forum is ‘clearly more convenient.’”
Id. (citation omitted).
Just as in Toyota, the district court here found that
the relative ease of access to sources of proof factor and
the local interest factor favored transferring the case to
the Northern District of California, while no factor actual-
ly favored keeping the case in the Eastern District of
Texas. Thus, even “[t]aken on its own terms, the district
court’s analysis presents a clear overall picture: nothing
favors the transferor forum, whereas several factors favor
the transferee forum.” Id. Consistent with Toyota, while
the facts here may not show that the California court is
far more convenient, it was more than sufficient to estab-
lish good cause to transfer the case.
For good measure, we also agree with HP that, if
anything, the district court erred in not weighing more
factors in favor of transfer. The court acknowledged that
three named Google employees and one of the HP employ-
ees who had left the company after the transfer motion
was filed reside in the Northern District of California and
were identified as having potentially relevant infor-
mation, while no party identified a third party witness in
the Eastern District of Texas. While HP could not at the
time affirmatively indicate that it would call those wit-
nesses or the nature of the testimony they would give, it
6 IN RE: HP INC.
was not required to do so. See Volkswagen, 545 F.3d at
317 n.12. It also appears that HP was not even permitted
at the time to discuss specific issues with the identified
Google employees because Cypress Lake designated its
infringement contentions confidential. Thus, the compul-
sory process factor should have been weighed in favor of
granting transfer rather than neutral. 1
Moreover, contrary to Cypress Lake’s arguments,
transfer here would not merely shift the burden of incon-
venience to its willing witnesses. 2 The district court
acknowledged that Cypress Lake identified only one of its
employees in the Eastern District of Texas as a potential
witness. On the other hand, HP identified eight employ-
ees in the transferee venue that had relevant knowledge
regarding the accused products, although it was not clear
to the court how many of those witnesses would actually
1 The district court also noted that HP had not
identified any Google witness as being unwilling to travel
to the Eastern District of Texas to testify. However, even
the Eastern District of Texas’s own cases have held that,
when there is no indication that a non-party witness is
willing, the witness is presumed to be unwilling and
considered under the compulsory process factor. See
AGIS Software Dev. LLC v. Huawei Device USA Inc., No.
2:17-cv-00513, 2018 WL 2329752, at *6 (E.D. Tex. May 23,
2018).
2 Cypress Lake also suggests that its choice should
be given more deference because it filed suit in its home
forum where its documents are located and that HP failed
to identify with any specificity the true relevance and
necessity of its documents in the Northern District of
California. However, the district court itself appears to
have rejected this argument by weighing the sources of
proof factor in favor of transfer to Northern California.
IN RE: HP INC. 7
be called to testify and the importance of their testimony. 3
The court also credited against granting transfer that the
inventor resides in North Carolina. However, “[t]he
comparison between the transferor and transferee forums
is not altered by the presence of other witnesses . . . in
places outside both forums.” Toyota, 747 F.3d at 1340.
Having found that the district court’s denial of trans-
fer was clearly incorrect, we now turn to whether to grant
mandamus and conclude that issuance of the writ is
appropriate here. We have followed the Fifth Circuit in
concluding that the no-alternative-means requirement is
satisfied in the motion-to-transfer context because HP
could not obtain meaningful review of the issue on appeal
from a final judgment or through some other means of
interlocutory review. See TS Tech, 551 F.3d at 1322.
This case also shares striking similarities to Toyota and
other cases where we and the Fifth Circuit have granted a
writ of mandamus to direct transfer. See Radmax, 720
F.3d at 290 (noting that the Fifth Circuit has “classified
as an ‘extraordinary error[]’ the ‘fact that not a single
relevant factor favors the [plaintiffs’] chosen venue.’”
(quoting Volkswagen, 545 F.3d at 318)).
Accordingly,
3 Cypress Lake insists in its response that it is like-
ly to call Justin Biddle, an HP employee who resides in
the Eastern District of Texas, as a witness in the case.
HP is equally insistent that Mr. Biddle has no infor-
mation that would be relevant to this case. We note that,
even counting Mr. Biddle, there are far more potential
employee witnesses of HP in the Northern District of
California and no indication that Mr. Biddle is unwilling
to travel to the Northern District of California if called
upon to testify.
8 IN RE: HP INC.
IT IS ORDERED THAT:
The petition is granted. The district court’s order
denying HP’s motion to transfer is vacated, and the
district court is directed to grant the transfer motion.
FOR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
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