Clarifying the Standard for Transfer in Eastern Texas

• 3.29.2010

The Eastern District of Texas has developed a reputation among patent practitioners as a plaintiff-friendly jurisdiction, making it a popular court for patent owners to file suit. In many instances, the only connection to the Eastern District has been the fact that sales of allegedly infringing items are occurring there, although often sales of the accused products are taking place nationwide. Until recently, defendants had low odds of succeeding with transfer motions in the Eastern District. However, in the wake of the Fifth Circuit’s transfer ruling in In re Volkswagen of America Inc., the Federal Circuit has taken the unprecedented step of granting four mandamus petitions from unsuccessful defendants seeking transfer out of the Eastern District.

In an article originally published in Law360, WilmerHale Partner Robert J. Gunther, Jr. and Counsel James P. Barabas, both members of the Intellectual Property Litigation Practice, review the rulings in In re TS Tech USA Corp. and In re Genentech Inc., and focus on the recent grants of mandamus this past December in In re: Hoffmann-La Roche Inc. and In re Nintendo. These decisions make clear that, if a more convenient forum exists in terms of access to witnesses and documents, the mere fact of allegedly infringing sales in the district is an insufficient basis on which to deny transfer.

Read the full text of the article: Clarifying The Standard For Transfer In Eastern Texas.

Lawyers in WilmerHale’s Intellectual Property Litigation Practice have considerable experience trying IP cases in the Federal Circuit, federal district courts from coast to coast, and the US International Trade Commission, as well as courts in the United Kingdom and Germany. We have tried jury and non-jury cases involving technologies ranging from complex mathematical algorithms and devices for manufacturing semiconductor chips to recombinant genetics and the construction of golf balls. We also regularly handle patent appeals before the CAFC and appeals of other IP cases before the regional courts of appeals.