Wednesday, December 2, 2009

In Re Hoffmann-La Roche Inc.

The Federal Circuit has once again granted a petition for writ of mandamus and directed a district court (in the Eastern District of Texas) to transfer a patent case to another district. The court had taken basically the same action in similar circumstances recently in both In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) and In re TS Tech USA Corp., 551 .3d 1315, 1322 (Fed. Cir. 2008).

Novartis, a California company, brought a patent infringement suit against defendants with facilities primarily in North Carolina (where the accused product was developed). They moved to transfer the case to the Eastern District of North Carolina and the motion was denied. The Federal Circuit found that there was a “there is a stark contrast in relevance, convenience, and fairness between the two venues” and concluded that the district court’s denial was an abuse of discretion under 5th Circuit law. (p. 5.) Applying these factors, the court found that there was virtually no connection to the Eastern District of Texas. It gave no weight to a “tactic” in which documents related to the patent were transferred to plaintiff’s counsel in Texas. (p. 5-6.)

The court found that “the Eastern District of North Carolina’s local interest in this case remains strong because the cause of action calls into question the work and reputation of several individuals residing in or near that district and who presumably conduct business in that community” and that this interest is “self-evident.” (p. 5, 6.) In contrast, the court again noted that “the sale of an accused product offered nationwide does not give rise to a substantial interest in any single venue.” (p. 8.)