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IP Litigation

Lack of specific evidence regarding convenience of witnesses and sources of proof supported denial of transfer

March 7, 2014

IP Litigation

Lack of specific evidence regarding convenience of witnesses and sources of proof supported denial of transfer

March 7, 2014

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A divided Fed. Cir. panel denied a pair of petitions for writ of mandamus seeking transfer to the Northern District of California.

In re Apple Inc., __ F.3d __ (Fed Cir. Feb. 27, 2014) (Newman (dissenting), Prost, REYNA) (E.D. Tex.: Davis) (3 of 5 stars)

In re Barnes & Noble, Inc., __ F.3d __ (Fed. Cir. Feb. 27, 2014) (Newman (dissenting), Prost, REYNA) (W.D. Tenn.: McCalla) (2 of 5 stars)

In the Apple case, denial of transfer was upheld because Apple failed to provide specific evidence as to why the transfer factors favored California.  Apple failed to identify witnesses who would need to travel to Texas or would not be subject to the compulsory process, and offered vague assertions as to the location and potential sources of proof.  The remaining factors failed to tip the balance in favor or transfer.

Applying Sixth Circuit law, the same panel majority in Barnes & Noble (B&N) upheld another transfer denial because B&N failed to meet its “exacting burden” required for mandamus.  The transfer factors did not strongly favor transfer: plaintiff’s CEO and relevant evidence were located in Tennessee and there was no indication that the plaintiff’s connection was manufactured in anticipation of litigation. B&N further failed to show that its employees would be unwilling or unable to testify at trial if the case was not transferred.  Because the facts supported both parties’ positions, the district court did not abuse its discretion in denying transfer.

Judge Newman dissented in both cases.  Relying on In re Genentech, Judge Newman would have transferred both cases to California because of the “extreme imbalance of convenience” between the venues. Apple dissent at 2, B&N dissent at 2.  Most of the witnesses and evidence were located in California and, in the Barnes & Noble case, the plaintiff’s choice of forum should have been given minimal deference in light of Fed. Cir. precedent.

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