Evidence in Support of Petition for Venue Transfer Must Be Sufficiently Specific - In re Apple Inc.; In re Barnes & Noble

by McDermott Will & Emery

In two decisions from identical panels, the U.S. Court of Appeals for the Federal Circuit denied mandamus petitions seeking to direct two district courts to vacate their denials of petitioners’ motions to transfer their respective cases.  In re Apple Inc., Misc. Docket No. 156 (Fed. Cir., Feb. 27, 2014) (Reyna, J.) (Newman, J., dissenting); In re Barnes & Noble, Misc. Docket No. 162 (Fed. Cir., Feb. 27, 2014) (Reyna, J.) (Newman, J., dissenting).

The underlying facts are similar in both cases.  In Apple, a patent holding company in Texas with six employees (a wholly-owned subsidiary of a Luxembourg corporation) sued Apple in the U.S. District Court for the Eastern District of Texas.  Apple is a California corporation with a principal place of business and more than 13,000 employees in Cupertino, California.  The accused products were researched, developed and manufactured in California, and Apple has stated that its foreseeable witnesses and documents are located in Cupertino and sought transfer to the U.S. District Court for the Northern District of California.

Similarly, in Barnes and Noble case, a Tennessee entity whose sole employee is the inventor of the patent in issue sued Barnes & Noble in the U.S. District Court for the Western District of Tennessee.  Barnes & Noble is a Delaware company with headquarters in New York, but Barnes & Noble has stated that its witnesses and documents relating to the accused product are located in Palo Alto, California, and sought transfer to the U.S. District Court for the Northern District of California.

Noting that the remedy of mandamus is available only in extraordinary situations, the Federal Circuit held in each case that the district court did not clearly abuse its discretion in denying petitioner’s transfer motion.  Both district courts found that petitioners failed to identify and enumerate specific witnesses who would be required to travel for trial and which witnesses might not be willing or able to do so.  The district court in Barnes & Noble further noted that petitioner did not explain “why deposition testimony would not suffice in lieu of live testimony” for such witnesses.  Moreover, in Apple, the district court found Apple’s arguments regarding the location of documents and other evidence to be “vague” and of “unknown relevance.”  Both district courts concluded that petitioners did not provide sufficiently concrete evidence to demonstrate that petitioners would be more inconvenienced in the original venues than plaintiffs would be in the transferee venue.

Dissenting in both cases, Judge Newman argued that the convenience of the pair of venues in each case “is simply not comparable.”  Citing Genentech for the proposition that “the bulk of the relevant evidence usually comes from the accused infringer,” she found that petitioners convincingly demonstrated that essentially all witnesses and documents were located in California and, thus, did not need to name specific witnesses and individual documents.  In Apple, she further noted that local interest heavily favored the transferee venue, considering that the plaintiff is a “non-United States corporation with one employee that exists solely to license its patent portfolio” and, therefore, has a smaller impact on the local economy than does Apple.

The panel in Apple distinguished Genentech by noting that petitioner in that case had identified at least 10 specific, relevant witnesses in the transferee forum.  The panel explained that the district court did not err by refusing to draw “inferences” from the number of Apple employees in Cupertino, “which only reflects the parties’ relative size and not necessarily the location of potential witnesses.”

Practice Note:  Any party petitioning for a transfer of venue would be well-advised to name specific witnesses and identify particular documents that are located in the transferee venue and to articulate with specificity and granularity why it would be more burdensome to produce those witnesses and documents in the original venue than it would be for the other party in the transferee venue.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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