Federal Circuit again orders Eastern District of Texas to transfer venue of a patent case to a more convenient forum, this time the Eastern District of North Carolina.

In re Hoffman-La Roche Inc., et al., Misc. Docket No. 911 (Fed. Cir. Dec. 2, 2009)

After the Eastern District of Texas denied their motion to transfer venue brought under 28 U.S.C. § 1404(a), defendants Hoffman-La Roche, Inc., Roche Labs., Inc., Roche Colorado Corp., and Trimeris, Inc., petitioned the Federal Circuit for a writ of mandamus ordering transfer of the case to the Eastern District of North Carolina.  Novartis Vaccines and Diagnostics, Inc., which had initiated this patent infringement suit based on Defendants’ manufacture of Fuzeon®, an HIV inhibitor drug, sought to keep the suit in the Eastern District of Texas.

Applying Fifth Circuit law, the Federal Circuit noted that mandamus may issue only if application of the forum non conveniens factors to the facts and circumstances of the case show the District Court reached a “patently erroneous” result or committed a “clear” abuse of discretion.

Here, according to the Federal Circuit, there exists a “stark contrast in relevance, convenience, and fairness between the two venues.”  First, the accused drug product was developed and tested in the Eastern District of North Carolina, and documents and sources of proof remain there.  Next, the Eastern District of North Carolina has a strong local interest in the case, as the case calls into question the work and reputation of several individuals residing in or near that district, and “who presumably conduct business in that community.”  Third, at least four of the eighteen identified potential non-party witnesses could be compelled to provide both deposition and trial testimony in the Eastern District of North Carolina, compared to one such witness for the Eastern District of Texas.  Finally, the Federal Circuit noted that the Eastern District of North Carolina’s relatively less-congested docket could result in a faster resolution of the case.

Conversely, the Federal Circuit found that “there appears to be no connection between this case and the Eastern District of Texas except that in anticipation of this litigation, Novartis’ counsel in California converted into electronic format 75,000 pages” of relevant documents and “transferred them to the offices of its litigation counsel in Texas.”  The Federal Circuit characterized plaintiffs’ assertion that these documents are “Texas” documents was “a fiction which appears to have been created to manipulate the propriety of venue.”

This case follows the Federal Circuit’s December 29, 2008 decision in In re TS Tech USA Corp., 551 F.3d 1315, in which the Federal Circuit ordered the District Court for the Eastern District of Texas to transfer the case to the Southern District of Ohio.  These orders could portend an easier road for defendants seeking to transfer venue from the Eastern District of Texas, a District Court considered by many to be one of the most popular choices of venue for plaintiffs asserting patent infringement.