CAFC Denies HPE Mandamus Petition for Transfer from Texas to Massachusetts

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Hewlett Packard’s petition for a writ of mandamus ordering the U.S. District Court for the Western District of Texas to transfer its case to Massachusetts.

Intellectual Ventures (IV) sued Hewlett Packard Enterprises (HPE) in the Western District of Texas, alleging infringement of a patent directed to data storage solutions assigned to IV. HPE moved for transfer, arguing that the development of the accused products occurred mostly in Massachusetts, but the district court denied the motion. Analyzing the factors set forth in In re Volkswagen of Am., Inc., the district court said the court congestion factor weighed against transfer; the willing witness factor weighed slightly in favor of transfer; the local interest factor favored transfer; the sources of proof, compulsory process, and practical problem factors were neutral; and the remaining factors were neutral. Because Texas was likely to be a faster forum, the cost only slightly more than adjudicating in Massachusetts, HPE’s financial documents were in Texas and there was insufficient evidence that the relevant documents were in Massachusetts, the district court ultimately denied transfer.

High Mandamus Review Standard Not Met

The CAFC, on appeal, applied In re: TS Tech USA Corp. to review the district court’s decision for abuse of discretion. The court determined that “[h]ere, HPE has not shown the required clear abuse of discretion resulting in a patently erroneous result,” particularly because it failed to show that more documentary evidence existed in Massachusetts than Western Texas. While the development of the alleged infringing HPE products took place in Massachusetts, the district court questioned whether any of the employees who worked on the products would still be in possession of those documents, particularly since the business had moved to India in 2020. No declarations from employees confirming possession of the documents were submitted by HPE, and the district court’s decision to give little weight to IV documents located with its counsel in Massachusetts was reasonable as well, said the CAFC.

As to willing witnesses, the CAFC said that HPE’s identification of only two willing witnesses in Massachusetts, and the district court’s finding that it has compulsory process power over one potential non-party witness in Texas, resulted in only a slightly favorable finding for transfer. HPE argued that the individuals identified in Texas may not have “relevant and material” information, but the CAFC cited the very high standard for granting mandamus in determining that “we cannot say that the trial court’s weighing of the witness factors was unreasonable and warrants the extraordinary relief of mandamus.”

Not Like Genentech

The court finally distinguished this case from In re Genentech, Inc., where mandamus was granted to direct transfer after a finding that several relevant factors weighed in favor of transfer and the remaining factors were neutral. Genentech specified that, in such a case, “the speed of the transferee district court should not alone outweigh all of those other factors.” However, the CAFC said “this case is different because the trial court reasonably found that while the local interest factor favors transfer, the willing witness factor only slightly favors transfer, and the remaining factors (other than court congestion) are neutral.” The CAFC was thus unconvinced that it should extend Genentech to reach the case and denied the petition for mandamus.

Despite the Order’s references to the stringent standards for granting mandamus, the CAFC has granted numerous petitions over the last two years, mostly for cases requesting transfer from the Eastern District of Texas to the Northern District of California.

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