In Re Genentech, Inc.
91 U.S.P.Q. 2d (BNA) 1027, 566 F.3d 1338, 2009 U.S. App. LEXIS 10882 (2009)
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Rule of Law:
In a motion to transfer venue under 28 U.S.C. § 1404(a), a district court clearly abuses its discretion by denying transfer when convenience factors—such as the location of the vast majority of witnesses and evidence—overwhelmingly favor the transferee forum, especially when the plaintiff's chosen forum has no connection to the underlying dispute.
Facts:
- Sanofi-Aventis Deutschland GmbH ('Sanofi') is a German corporation.
- Genentech, Inc. ('Genentech') is headquartered in San Francisco, California, within the Northern District of California.
- Biogen Idec Inc. ('Biogen') is headquartered in San Diego, California.
- Sanofi accused Genentech and Biogen of infringing its patents with certain products.
- The Eastern District of Texas, where Sanofi filed suit, has no connection to any of the witnesses or evidence relevant to the infringement claims.
- At least ten potential material witnesses for the petitioners reside in the Northern District of California.
- All of Genentech's corporate documents relating to the development and marketing of the accused products were located in the Northern District of California.
- The six inventors of Sanofi's patents reside in Europe, a potential prior art witness resides in Iowa, and several patent prosecution attorneys reside on the U.S. East Coast.
Procedural Posture:
- Sanofi-Aventis Deutschland GmbH sued Genentech, Inc. and Biogen Idec Inc. for patent infringement in the U.S. District Court for the Eastern District of Texas (trial court).
- On the same day, Genentech and Biogen filed a related declaratory judgment action against Sanofi in the U.S. District Court for the Northern District of California.
- In the Texas action, Genentech and Biogen filed a motion to transfer venue to the Northern District of California pursuant to 28 U.S.C. § 1404(a).
- The U.S. District Court for the Eastern District of Texas denied the motion to transfer.
- Genentech and Biogen (petitioners) petitioned the U.S. Court of Appeals for the Federal Circuit for a writ of mandamus, seeking an order to compel the district court to transfer the case.
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Issue:
Does a district court clearly abuse its discretion in denying a motion to transfer venue under 28 U.S.C. § 1404(a) when the plaintiff's chosen forum has no connection to the parties, witnesses, or evidence, while the proposed transferee forum is where the defendant is headquartered, numerous witnesses reside, and key evidence is located?
Opinions:
Majority - Linn, Circuit Judge
Yes. In denying transfer, the district court clearly abused its discretion and produced a patently erroneous result. The district court misapplied the venue transfer factors by giving insufficient weight to the fact that numerous witnesses and all of the petitioners' evidence were in California, while no witnesses or evidence were in Texas. The court's reasoning that Texas was a convenient 'central location' for witnesses traveling from Europe and the East Coast was improper, as these witnesses would have to travel a significant distance regardless of venue, and their convenience does not outweigh the substantial inconvenience to the numerous California-based witnesses. The court also erred by considering irrelevant factors, such as Genentech's having filed a prior, unrelated suit in the district, and by dismissing the importance of the location of physical evidence in the electronic age, an argument previously rejected by the Fifth Circuit. Because the convenience of witnesses, access to evidence, and availability of compulsory process all weighed significantly in favor of transfer, the district court's denial was a clear abuse of discretion warranting mandamus relief.
Analysis:
This decision, along with others like In re TS Tech and In re Volkswagen, represents a significant check by the Federal Circuit on the tendency of certain district courts, particularly the Eastern District of Texas, to retain patent cases despite a clear lack of connection to the forum. It reinforces that a plaintiff's choice of forum is not dispositive and must yield when the private and public interest factors overwhelmingly favor transfer. The ruling clarifies that a 'central location' is not a substitute for actual convenience and that factors like witness and evidence location must be given substantial weight, thus discouraging forum shopping and promoting the adjudication of cases in venues with a genuine connection to the dispute.
