A Continuing Trend in Texas for Transfer Motions in Patent Cases? The Federal Circuit’s Recent Decision in ‘In re Fedex’

In a recent non-precedential decision, the Court of Appeals for the Federal Circuit granted a petition for writ of mandamus and ordered an Eastern District of Texas (EDTX) district court to reconsider a denial of a motion seeking a transfer of venue for convenience. In re Fedex Corporate Services (In re Fedex), No. 2022-156, slip op. at 9 (Fed. Cir. Oct. 19, 2022). The decision is the next in an increasingly long line of mandamus decisions in which the Federal Circuit has reversed or remanded decisions from Texas district courts on this issue, and suggests that the Federal Circuit will continue to carefully scrutinize these decisions on transfer motions going forward.

Change of Venue and 28 U.S.C. §1404(a)

28 U.S.C. §1404(a) provides that, “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” When considering a motion to transfer venue under this section, courts address two main questions. First, a court must determine whether the action could have been brought in the transferee forum. Second, if so, the court then weighs a number of private and public “convenience” factors to determine whether the transferee forum is “clearly more convenient.” The private factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The public factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or the application of foreign law.” Id. If, after analyzing the factors, the court determines that the transferee forum is “clearly more convenient,” the case should be transferred.

The Federal Circuit’s Analysis in ‘In re Fedex’