Alavi Anaipakos Venue Update: New Fifth Circuit Precedent Helps Patent Owners

December 2022

“There are three things that matter in [intellectual] property: location, location, location.”

This isn’t precisely the famous expression initially coined by the late Lord Harold Samuel, but at Alavi Anaipakos, we obsess over the venue and positioning our clients for success. Fights over patent venues aren’t just common; they are virtually ubiquitous. And that won’t change.

That’s because the stakes are too high: venues impact every meaningful aspect of a patent infringement case based on the experience of the Court, pretrial discovery and Markman hearings, post-grant procedures and possible stays, time to trial, time spent in the trial, jury pools, the list goes on . . .

Fights over patent venue frequently turn on whether a particular venue is more or less convenient, as described in the venue provisions of Section 1404(a) of the U.S. Code. And because the Eastern and Western Districts of Texas have been the dominant venues for patent cases, 1404(a) transfer motions are increasingly like taxes or death.

But patent owners fighting over the convenience of their chosen venue may have received an early Christmas gift from the Fifth Circuit. In In re Planned Parenthood Fedn. of Am., Inc., 52 F.4th 625 (5th Cir. 2022), the Fifth Circuit recently denied mandamus in a petition that complained about the refusal of the trial court to transfer the qui tam False Claims Act allegations against Planned Parenthood.

Planned Parenthood requested that the case be moved from the Amarillo Division of the U.S. District Court for the Northern District of Texas, where the complaint was originally filed, to the Austin Division of the U.S. District Court for the Western District of Texas.

In the Fifth Circuit’s ruling, the Court emphasized that the “standard for reversing that holding (denying a venue transfer) is high” and “reiterate[d] that district courts have broad discretion in deciding motions to transfer; they need only grant such a motion where the evidence demonstrates that the destination venue is “clearly more convenient” than the chosen venue. Id. at 632. The Fifth Circuit characterized its review on mandamus as limited and “only for clear abuses of discretion that produce patently erroneous results.” Id. (quoting In re Volkswagen, 545 F.3d 304, 315 (5th Cir. 2008)).

In denying mandamus, the Fifth Circuit’s discussion of the public interest factors weighing against transfer is notable, particularly given how this discussion will be used in transfer fights involving the Eastern and Western Districts of Texas.

For instance, the Court observed that the fact that the underlying case “appears to be timely proceeding to trial . . . counsels against transfer.” Id. at 631. Despite having extremely active patent dockets, both the Eastern and Western Districts of Texas move patent cases much more expeditiously to trial than most other venues. In Planned Parenthood, the trial court found that “the forum’s familiarity with the law” was a factor weighing against transfer, and the Fifth Circuit did not find this to be an abuse of discretion by the district court. Id. at 632. Of course, the judges in the Eastern and Western Districts of Texas have extensive expertise in patent law.

The discussion of the private interest factors was equally interesting. The district court found that private interest factors weighed against transfer for various reasons, including that “the vast majority of evidence was electronic, and therefore equally accessible in either forum”; that compulsory process did not favor transfer because no one had identified “any witnesses who would be unwilling to testify”; and that certain of the costs required to have witnesses attend proceedings in the original venue were lower (including airfare, hotels, and restaurants). Id. at 630-31.

Similar fact patterns are likely present in cases where, for instance, defendants seek 1404(a) transfer to the Northern or Central Districts of California and away from the Eastern or Western Districts of Texas.

Of course, when the Eastern and Western Districts of Texas have denied transfer under 1404(a), mandamus petitions have regularly followed. The U.S. Court of Appeals for the Federal Circuit follows Fifth Circuit precedent for cases pending in Texas. That means Planned Parenthood will be prominently discussed in motions to transfer venue and in mandamus actions resulting from denials of these motions. Because the discussion in Planned Parenthood is a departure from how certain Federal Circuit decisions have evaluated venue transfers, the effects could be significant.

Key Takeaways from Planned Parenthood & How It Differs from Some Federal Circuit Decisions:

  • Time to trial matters when evaluating venue.
  • The Court’s familiarity with the law can weigh against transfer.
  • If evidence is available electronically, then the physical location of the evidence does not weigh in favor of transfer.
  • The venue’s relative costs can be considered by the trial court when evaluating whether to transfer.
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Alavi & Anaipakos, PLLC

3417 Mercer St., Suite C

Houston, TX  77027

Phone (713) 751-2362

Fax (713) 751-2341

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