This past December, the Federal Circuit held in two separate patent cases, one of which involved biotechnology patents, that district courts had abused their discretion in refusing to transfer the cases out of their districts. In these cases, In re Biosearch Techs., Inc. v. Eurofins MWG Operon Inc., 2011 WL 6445102 (Fed. Cir. Dec. 22, 2011), and In re Link_A_Media Devices Corp., 602 F.3d 1221 (Fed. Cir. 2011), the Federal Circuit found that the convenience of the witnesses and interests of the forum predominated over the “centrality” of the venue and over plaintiff’s choice of forum, even where the defendant was incorporated in the transferor forum.
Biosearch involved a motion to transfer out of the Eastern District of Texas to the Northern District of California. In Biosearch, which involved patents directed to fluorescently labeled oligonucleotide probes, the Federal Circuit found that the district court had erred in refusing to transfer on the grounds that Eastern District of Texas was a “proper central location” for the suit. 2011 WL 6445102 at *1. The plaintiffs had initially sued only Biosearch, but subsequently expanded the suit to include three additional defendants, including one Texas-based defendant. The Federal Circuit found that because the Texas-based defendant had agreed not to challenge infringement and had not participated in claim construction, any of its documents located in Texas were not entitled to significant weight in the analysis. See id. at *2. Furthermore, because both the plaintiffs and one defendant were headquartered in California, “[i]t cannot be disputed therefore that such venue would have a strong interest in trying this case and be convenient with regard to the location of likely sources of evidence.” Id. at *2. The Federal Circuit, evaluating the established transfer factors according to governing Fifth Circuit law, found that the fact that at least 19 witnesses, among them the inventors and prosecuting attorneys, resided in California weighed heavily in favor of transfer. See id. Neither party identified any witnesses subject to compulsory process in the Marshall Division of the Eastern District of Texas. See id. The Federal Circuit emphasized that it had previously found that the “asserted geographical centrality” of a venue “did not outweigh the many aspects of convenience to the defendant” and that it had previously ordered transfer from the plaintiff’s chosen Eastern Texas forum where, as here, there was “a stark contrast in relevance, convenience, and fairness between the two venues.” Id. at *3.
In Link_A_Media, the petitioner sought to transfer out of the District of Delaware, also to the Northern District of California. The Federal Circuit, applying governing Third Circuit law, held that the district court had “placed far too much weight on the plaintiff’s choice of forum.” 602 F.3d at 1223. Here, the defendant’s sole connection to the District of Delaware was its incorporation in Delaware. The defendant was headquartered in the Northern District of California, where nearly all of its 130 employees worked. See id. at 1222. Furthermore, because Delaware was not the plaintiff’s home forum, the Federal Circuit noted that its choice of forum was “entitled to less deference.” Id. at 1223. The Federal Circuit found that the district court had erred in relying heavily on the defendant’s state of incorporation, which “is certainly not a dispositive fact in the venue transfer analysis.” Id. at 1224. The Federal Circuit also held that the district court erred in failing to consider the convenience of the witnesses and the location of books and records, and in its analysis of the public interest factors. In particular, the Federal Circuit emphasized that Delaware had no ties to the dispute or to either party, beyond the defendant’s incorporation there. See id. The Federal Circuit also stated that the general experience of the transferor forum in hearing and deciding patent cases was irrelevant where there was no co-pending case involving the same patent. See id.