Monday, May 25, 2009

CAFC grants mandamus, transfer of venue in Sanofi case

In the case IN RE GENENTECH, INC. and BIOGEN IDEC INC., the petitioners sought, and obtained, a writ of mandamus to move the patent case from ED Texas to ND California. The opposing party, Sanofi-Aventis Deutschland GmbH, was represented by McDonnell Boehnen Hulbert & Berghoff LLP, of Chicago.

The CAFC mentioned the TS Tech case:

The use of
mandamus to correct a patently erroneous denial of transfer pursuant to § 1404(a) has
been approved under the rulings of the Fifth Circuit in appropriate circumstances. See
In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008) (issuing mandamus to
transfer patent case out of the Eastern District of Texas where all identified witnesses
and evidence were located in alternative venue); In re Volkswagen of Am., Inc., 545
F.3d 304 (5th Cir. 2008) (en banc) (same).

The CAFC discussed inconvenience to witnesses:

Because it generally
becomes more inconvenient and costly for witnesses to attend trial the further they are
away from home, the Fifth Circuit established the “100-mile” rule, which requires that
“[w]hen the distance between an existing venue for trial of a matter and a proposed
venue under § 1404(a) is more than 100 miles, the factor of inconvenience to witnesses
increases in direct relationship to the additional distance to be traveled.” Id. (quotation
marks omitted).

Of the European witnesses:
However, the “100-mile” rule should not be rigidly applied such
that it creates the result presented here. The witnesses from Europe will be required to travel a significant
distance no matter where they testify.

Of electronic storage of documents:

Finally, the district
court minimized the inconvenience of requiring the petitioners to transport their
documents by noting that “[t]he notion that the physical location of some relevant
documents should play a substantial role in the venue analysis is somewhat antiquated
in the era of electronic storage and transmission.” Sanofi-Aventis, slip op. at 11.
Finally, we note that the court’s antiquated era argument was
essentially rejected in Volkswagen because it would render this factor superfluous. 545
F.3d at 316.

Of 1404:

There is no requirement under § 1404(a) that a
transferee court have jurisdiction over the plaintiff or that there be sufficient minimum
contacts with the plaintiff; there is only a requirement that the transferee court have
jurisdiction over the defendants in the transferred complaint. See Hoffman v. Blaski,
363 U.S. 335, 343-44 (1960) (power of district court to transfer case under § 1404(a)
depends on whether the transferee district was one in which the action “might have
been brought” by the plaintiff);

Of caseload statistics:

Genentech suggests that the most recent Federal Judicial
Caseload Statistics indicate that cases in the Northern District of
California reach disposition more quickly than cases in the
Eastern District of Texas – 9.7 months from filing to disposition
in the Eastern District as opposed to 7.4 months in the Northern
District. While this assertion is true when all cases are factored
in, the disposition time in cases which actually go to trial is lower
in the Eastern District – 18.4 months – than in the Northern
District – 25.5 months. Sanofi also points to a 2008 patent
litigation study, which found that in the twenty most active patent
districts in the country, the fifth-ranked Eastern District had a
much faster median time-to-trial interval – 1.79 years – than the
sixteenth-ranked Northern District – 2.87 years.


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