In Re FEDEX CORPORATE SERVICES, INC.

Case: 22-156 Document: 13 Page: 1 Filed: 10/19/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: FEDEX CORPORATE SERVICES, INC.,
Petitioner
______________________
2022-156
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in No. 4:21-
cv-00940-ALM, Judge Amos L. Mazzant, III.
______________________
ON PETITION
______________________
Before DYK, REYNA, and TARANTO, Circuit Judges.
PER CURIAM.
ORDER
FedEx Corporate Services, Inc. (“FedEx”) petitions for
a writ of mandamus directing the district court to transfer
the case from the United States District Court for the East-
ern District of Texas (“EDTX”) to the United States District
Court for the Western District of Tennessee (“WDTN”) un-
der 28 U.S.C. § 1404(a). R2 Solutions LLC (“R2”) opposes.
For the reasons provided below, we conclude that the
district court erred in its analysis of the local interest factor
and failed to provide a sufficient explanation for its conclu-
sions regarding the witness-related factors. In light of
Case: 22-156 Document: 13 Page: 2 Filed: 10/19/2022
2 IN RE: FEDEX CORPORATE SERVICES, INC.
those errors, we are unable to effectively conduct manda-
mus review on the present record. We accordingly vacate
the district court’s order denying transfer and remand for
additional proceedings.
BACKGROUND
R2 sued FedEx in EDTX alleging patent infringement.
FedEx moved under § 1404(a) to transfer the case to
WDTN, where it is headquartered and where accused prod-
ucts were researched, designed, and developed. R2 op-
posed but did not seek transfer-related discovery.
The district court denied the motion. The court con-
cluded that access to proof slightly favored transfer, avail-
ability of compulsory process and court congestion favored
transfer; local interest was neutral; and the convenience of
willing witnesses and judicial economy weighed against
transfer. Based on its evaluation and weighing of those
factors, the court concluded that FedEx had not shown
WDTN to be a clearly more convenient forum.
FedEx thereafter filed its petition. We have jurisdic-
tion pursuant to 28 U.S.C. §§ 1651(a) and 1295(a)(1). See
In re Princo Corp., 478 F.3d 1345, 1351 (Fed. Cir. 2007)
(“[B]ecause this court, and only this court, has jurisdiction
over any appeal from a final decision in patent cases, it has
jurisdiction to hear and decide mandamus petitions in such
cases.” (cleaned up)).
DISCUSSION
To obtain the extraordinary remedy of a writ of man-
damus, the petitioner must show: (1) there are no adequate
alternative avenues for relief, (2) the right to issuance of
the writ is clear and indisputable, and (3) issuance of the
writ is appropriate under the circumstances. Cheney v.
U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81 (2004).
When reviewing a § 1404(a) transfer decision on man-
damus, we apply the law of the regional circuit, here, the
Case: 22-156 Document: 13 Page: 3 Filed: 10/19/2022
IN RE: FEDEX CORPORATE SERVICES, INC. 3
Fifth Circuit, In re TS Tech USA Corp., 551 F.3d 1315,
1319 (Fed. Cir. 2008), and “[w]e review only for clear
abuses of discretion that produce patently erroneous re-
sults,” In re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th
Cir. 2008) (en banc). To enable that limited review, the
district court should set forth a sufficient explanation of its
findings and reasons for its transfer decision. See id. (“[W]e
review carefully the circumstances presented to and the de-
cision making process of the district court.” (internal quo-
tation marks and citation omitted)); In re Archer
Directional Drilling Servs., L.L.C., 630 F. App’x 327, 329
(5th Cir. 2016); In re Schlumberger Tech. Corp., 648 F.
App’x 420, 421 (5th Cir. 2016); cf. Uniloc 2017 LLC v. Ap-
ple, Inc., 964 F.3d 1351, 1364 (Fed. Cir. 2020).
Here, the district court’s decision denying transfer
lacks sufficient explanation for its findings and conclusions
such that we cannot presently discern on limited manda-
mus review whether the denial of transfer was a patently
erroneous result.
A
We begin with the local interest factor, which reflects
the importance of “having localized interests decided at
home,” rather than by “a community which has no relation
to the litigation.” In re Volkswagen AG, 371 F.3d 201, 206
(5th Cir. 2004) (citations omitted). We have reiterated that
the focus of this factor looks to the “significant connections
between a particular [forum] and the events that gave rise
to a suit.” In re Apple Inc., 979 F.3d 1332, 1345 (Fed. Cir.
2020) (cleaned up). We agree with FedEx that the district
court clearly abused its discretion when it did not weigh
this factor in favor of transfer.
The district court correctly found that WDTN, where
FedEx is headquartered, had a significant local interest in
resolving this patent infringement dispute because it is
where accused products were researched, designed, devel-
oped, and maintained by individuals who continue to live
Case: 22-156 Document: 13 Page: 4 Filed: 10/19/2022
4 IN RE: FEDEX CORPORATE SERVICES, INC.
and work in that community, Appx 11. See In re Samsung
Elecs. Co., 2 F.4th 1371, 1380 (Fed. Cir. 2021) (noting the
significance of the fact that the accused products were re-
searched, designed, and developed in the transferee fo-
rum); In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336
(Fed. Cir. 2009) (noting the significance when a case “calls
into question the work and reputation of several individu-
als [in] th[e] district and who presumably conduct business
in that community”).
Nevertheless, the district court concluded that this fac-
tor was neutral because “R2 is located in Texas, and [is] the
owner of the patent[s] at issue.” Appx 11. But R2’s general
presence in Texas and mere ownership of the patents does
not reflect a “significant connection[] between [EDTX] and
the events that gave rise to [the] suit,” Apple, 979 F.3d at
1345 (emphasis omitted). Indeed, there is no allegation
that any research or development of the accused products
or patented invention occurred in Texas, let alone EDTX,
and none of the inventors is alleged to reside there. R2’s
only connection to EDTX is a small in-district office suite,
established shortly before R2 brought suit in the district,
shared with numerous other companies, and from which no
officer or employee of R2 appears to regularly work. See
Appx 120–21, 224, 409. “Thus, [R2's] presence in [EDTX]
appears to be recent, ephemeral, and an artifact of litiga-
tion,” In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381
(Fed. Cir. 2010), which is properly afforded “little or no
weight” under this factor, In re Juniper Networks, Inc., 14
F.4th 1313, 1320 (Fed. Cir. 2021). See Samsung, 2 F.4th at
1377–79; In re Microsoft Corp., 630 F.3d 1361, 1364–65
(Fed. Cir. 2011).
Whatever de minimis local interest EDTX may have
based on R2’s recently established, ephemeral in-district
work address, it is nowhere near comparable to the local
interest of WDTN, where “events that gave rise to [the]
suit” largely occurred. Apple, 979 F.3d at 1345 (emphasis
Case: 22-156 Document: 13 Page: 5 Filed: 10/19/2022
IN RE: FEDEX CORPORATE SERVICES, INC. 5
omitted). This factor favors transfer, and the district court
clearly abused its discretion in concluding otherwise.
B
For the witness-related factors, we conclude that, on
the record before us, the district court failed to provide an
adequate explanation for its conclusions.
We have recognized that the convenience of willing wit-
nesses is an “important factor” for the § 1404(a) analysis
and that the “district court should assess the relevance and
materiality of the information the witness may provide,” In
re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009),
“even if it is not possible at present to specify [] how mate-
rial their testimony might be to the yet-undeveloped issues
in the case,” In re Toyota Motor Corp., 747 F.3d 1338, 1340
(Fed. Cir. 2014). That was not done here.
Before the district court (and now before us), the par-
ties vigorously disputed the relevance and materiality of
the information certain willing witnesses might provide. 1
For example, FedEx identified six individuals in WDTN
that it argued had relevant and material information cov-
ering the four accused systems. Appx 93 (citing exhibits).
1 Indeed, there even appears to be a dispute as to
whether any party was interested in potentially seeking
testimony from individuals that R2 identified for consider-
ation under this factor. Compare Pet. at 25 (arguing R2
never “stated that it intended to seek testimony from”
those individuals), with Resp. at 18 (responding that noth-
ing “requir[es] R2 to state that it will seek discovery from
[them]”). This factor considers the convenience of potential
willing witnesses, which contemplates that a party is inter-
ested in potentially seeking their testimony. See Genen-
tech, 566 F.3d at 1343 (“[T]he potential witness [need not
be shown to have] more than relevant and material infor-
mation at this point in the litigation[.]” (emphasis added)).
Case: 22-156 Document: 13 Page: 6 Filed: 10/19/2022
6 IN RE: FEDEX CORPORATE SERVICES, INC.
R2 responded that some of those individuals do not have
relevant information at least because “no one at FedEx re-
searches, designs, or maintains the search functionalities
of the [accused] Job Search Engine,” Appx 232 (citation
omitted), which FedEx contested as “not diminish[ing] the
relevant knowledge [the WDTN witnesses for that system]
do possess,” Appx 420. Separately, R2 argued that it iden-
tified FedEx employees in EDTX that “possess[] knowledge
of the accused Data Analytics Systems while touting their
Hadoop, Spark, and/or Hive skill and expertise—all highly
relevant,” or otherwise “possess information relevant to the
accused Data Analytic Systems.” Appx 232–33. R2 further
provided a declaration collecting the alleged names, title,
location, and relevant knowledge of those individuals.
Appx 248–52. FedEx then challenged the “relevance and
materiality of the information” those individuals possess,
Appx 421 (citation omitted), based largely on a supple-
mental declaration from a “manage[r of] the FedEx team
responsible for . . . the [accused] Data Analytics System,”
Appx 429. The declaration stated that none of individuals
identified by R2 “ever participated in the research, design,
development, operation, management, or maintenance of
the Data Analytics System,” that there were “numerous
FedEx employees across the United States” with similar
general knowledge and experience as the individuals iden-
tified by R2, and that the witnesses FedEx identified in
WDTN had a materially “greater understanding of the” ac-
cused system. Appx 431; see Appx 164–65. R2 responded
that it at least “identified ten FedEx employees located in
Plano who have material information as to the value and
functionality of the accused Data Analytics Systems.”
Appx 439.
Despite these issues being at the very heart of the par-
ties’ disputes regarding this factor, the district court failed
to make any finding or provide any explanation as to
whether or how the potential witnesses had relevant and
material information based on the record evidence.
Case: 22-156 Document: 13 Page: 7 Filed: 10/19/2022
IN RE: FEDEX CORPORATE SERVICES, INC. 7
Appx 7–8. Instead, the district court’s opinion simply com-
pared the number of individuals identified in each forum.
And even that analysis failed to adequately explain the ba-
sis for the court’s conclusions. The court found that FedEx
identified six potential witnesses in WDTN and that while
R2 had identified 18 FedEx employees in EDTX, the court
agreed with FedEx that four of those individuals are not
FedEx employees (not shown to be willing witnesses other-
wise) and another four are in WDTN. Appx 7–8. This sug-
gests that the district court found there to be ten willing
witnesses in each forum (ten identified by R2 in EDTX; six
identified by FedEx and four identified by R2 in WDTN;
and four non-willing witnesses). Nonetheless, the court
concluded that there were more willing witnesses in EDTX,
Appx 8. That conclusion does not match our understand-
ing of the court’s apparent findings. This ambiguity fur-
ther infects the analysis of the compulsory process factor
since the court did not address the four additional non-will-
ing witnesses that R2 alleged were subject to the court’s
compulsory process, Appx 438, although it may be unnec-
essary to resolve for that factor if the district court were to
find the evidence (already found to be incorrect as to those
individuals’ employment status) does not sufficiently es-
tablish their location within the court’s compulsory process
power.
Under the circumstances here, we conclude that the
district court failed to sufficiently explain the bases for its
conclusions regarding the witness-related factors, and we
decline to speculate as to how the district court might have
resolved each of the numerous factual disputes. 2
2 To the extent the district court observed that “the
convenience of the movant’s employees and party wit-
nesses is given little weight,” Appx 7, such a categorical
rule contravenes both the plain text of § 1404(a) (“For the
convenience of parties and witnesses, in the interest of
Case: 22-156 Document: 13 Page: 8 Filed: 10/19/2022
8 IN RE: FEDEX CORPORATE SERVICES, INC.
C
In light of these determinations, we conclude that it is
presently “impossible for us to determine whether the dis-
trict court clearly abused its discretion,” Archer, 630 F.
App’x at 329 (citing Volkswagen, 545 F.3d at 310–11). We
are not prepared to put these issues aside and grant man-
damus based solely on the other factors or deny mandamus
based solely on the district court’s conclusion that judicial
economy considerations strongly disfavored transfer. Alt-
hough the district court noted that R2 had filed earlier ac-
tions in EDTX, the court did not address whether there
were circumstances that diminish the benefits of judicial
economy from retaining the case. For example, related
cases have been brought by R2 and parties in other forums,
and this case involves a different, albeit overlapping, set of
patents, different accused products, and a different defend-
ant, making it potentially “likely that these cases will re-
sult in significantly different discovery, evidence,
proceedings, and trial,” Samsung, 2 F.4th at 1379–80 (cita-
tion omitted). Any incremental gain in judicial economy in
this case may be insufficient to override the benefit of
transfer if there has been a clear imbalance in the parties’
respective presentations on the other transfer factors. See,
e.g., id.
* * *
justice, a district court may transfer [a case.]” (emphasis
added)), and controlling caselaw, see Juniper Networks, 14
F.4th at 1319 (“We have previously rejected the district
court’s reliance on the proposition that the convenience-to-
the-witnesses factor is attenuated when the witnesses are
employees of the party calling them.”). The court must en-
gage in an “individualized, case-by-case consideration of
convenience and fairness.” Stewart Org., Inc. v. Ricoh
Corp., 487 U.S. 22, 29 (1988) (citation omitted).
Case: 22-156 Document: 13 Page: 9 Filed: 10/19/2022
IN RE: FEDEX CORPORATE SERVICES, INC. 9
In further proceedings on FedEx’s motion to transfer,
the district court should provide an adequate explanation
of its findings and rationale for its conclusions regarding
both the willing witness and compulsory process factors
and reconsider FedEx’s motion in light of those determina-
tions and consistent with this order.
Accordingly,
IT IS ORDERED THAT:
The petition is granted to the extent that the district
court’s order denying FedEx’s motion to transfer is vacated
and the case is remanded for further proceedings con-
sistent with this order.
FOR THE COURT
October 19, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court