Wednesday, March 23, 2011

Vistaprint decision/distinction leads to mandamus grant/transfer in Verizon

The CAFC in the Verizon case cited Vistaprint:

We recently advised
against such ironclad rules in In re Vistaprint Ltd., 628
F.3d 1342, 1347, n.3 (Fed. Cir. 2010) and we heed that
advice on these facts. In Vistaprint, we stated:
Our holding today does not mean that, once
a patent is litigated in a particular venue the
patent owner will necessarily have a free
pass to maintain all future litigation
involving that patent in that venue.
However, where, as here, the trial court
performed a detailed analysis explaining
that it is very familiar with the only asserted
patent and the related technology, and
where there is a co-pending litigation before
the trial court involving the same patent-in-
suit, and pertaining to the same underlying
technology and accusing similar services, we
cannot say the trial court clearly abused its
discretion in denying transfer.

The mandamus petition in Verizon was granted. Case moved.

Recall, in VistaPrint, mandamus was denied:

In Vistaprint, we denied mandamus to overturn a
denial of transfer and determined that the district court
properly considered both its previous experience
construing claims of the patent at issue and co-pending
litigation before the district court involving the same
patent and underlying technology. In this case, there is
no assertion that there is an additional pending lawsuit in
the Eastern District involving the patent and technology
Absent that, we deem the Eastern District's previous
claim construction in a case that settled more than five
years before the filing of this lawsuit to be too tenuous a
reason to support denial of transfer.


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