CPLRG™ 0007 - Hoffmann-La Roche Inc., In re - Dec. 2, 2009

In re Hoffmann-La Roche, Inc., 587 F.3d 1333, 2009 U.S. App. LEXIS 26244 (Fed. Cir. 2009) (GAJARSA, Lourie & Friedman)


MAJOR ISSUES: Transfer of venue from Eastern Texas district
Writ of mandamus–abuse of discretion in denying transfer
Electronic transfer of documents to local counsel in district

The court followed prior appellate decisions finding that the Eastern Texas district court abused its discretion by failing to transfer the case to another district.  In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc), In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008), and In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009).

The Eastern District of Texas has become notoriously popular as a place for patent owners to sue.  Typically, neither the patent owner nor the accused infringers are based in that district, but technical venue is met when an accused infringer’s product is distributed in the district.  28 U.S.C. Section 1404(a) allows a district court to transfer “[f]or the convenience of parties and witnesses, in the interest of justice.”

In this case, the accused drug product (Fuzeon, an HIV inhibitor), was developed at Duke Medical and a start-up company, Trimeris, both in the Eastern District of North Carolina.  The accused infringer, Hoffman La Roche, makes the drug in stages in Colorado, Switzerland and New Jersey and distributes the drug nationally.  The patent owner’s headquarters is in California.  Prior to filing suit, the patent owner transferred electronically 75,000 pages of documents to local counsel in the Eastern District of Texas.  The parties initially identified 25 potential witnesses.  There were four non-party witness in North Carolina and one who resided in Texas (but not in the Eastern District).

In granting mandamus, the Federal Circuit noted that there was “a stark contrast in relevance, convenience, and fairness” between the venue where the suit was filed (Eastern Texas) and the proposed transferee venue (Eastern District of North Carolina).  The latter had a clear interest.  The former had no factual connection with the case.  Citing TS Tech, the Federal Circuit noted that “the sale of an accused product offered nationwide does not give right to a substantial interest in any single venue.”

The Federal Circuit was notably critical of the patent owner’s “tactic” in transferring documents to local counsel in anticipation of suit.  This was an attempt “to manipulate venue.”

For a discussion of venue transfers in patent cases, the three above cited cases from 2008 and 2009 are of prime importance.  See also Chisum, Patent Law Digest § 8220, Chisum on Patents § 21.02[4][e] (collecting case law on convenience transfers).

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