SCHALL, Circuit Judge.
Vistaprint Limited (Vistaprint) and OfficeMax Incorporated (OfficeMax), the defendants in a patent infringement action, seek a writ of mandamus directing the United States District Court for the Eastern District of Texas to vacate its July 22, 2010 order and transfer the case to the United States District Court for the District of Massachusetts. The plaintiff in the action, ColorQuick, L.L.C. (ColorQuick), opposes.
ColorQuick, a New Jersey limited liability company, brought this suit in the Eastern District of Texas, charging the petitioners with infringement of its patent relating to preparing production data for printing. Although Vistaprint is a foreign corporation, one of its wholly-owned subsidiaries, Vistaprint USA, Inc., which is not a party to these proceedings, apparently has a large presence in Massachusetts. A motion was made to transfer to the federal district court in that venue, which, according to the petitioners, is close to the residences of many of Vistaprint USA, Inc.'s employees who may serve as witnesses at trial and where many of the petitioners' documents that may be evidence are stored. OfficeMax is a Delaware corporation with its principal place of business in Illinois. The accused OfficeMax services are operated by Vistaprint for OfficeMax.
Mandamus is an extraordinary remedy, available only upon a demonstration by the petitioner of a "clear and indisputable" right to the relief sought. Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980). In this case, that requires the petitioners to demonstrate that the court's denial of transfer was so patently erroneous as to amount to a clear abuse of discretion. In re Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir.2008) (en banc) (Volkswagen I). Because this petition does not raise issues unique to our jurisdiction, we apply the law of the regional circuit in which the district court sits, in this case the law of the Fifth Circuit. In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed.Cir.2008). In determining whether the transferee venue is clearly more convenient, the Fifth Circuit applies the public and private factors used in forum non conveniens analysis. Volkswagen I, 545 F.3d at 314 n. 9.
A trial court has broad discretion in transfer decisions pursuant to 28 U.S.C. § 1404(a),
We cannot say, however, that the weight the court afforded judicial economy here amounted to a "patently erroneous result." Volkswagen I, 545 F.3d at 310. Even if it was the magistrate and not the trial judge who gained substantial experience in construing the patent claims during prior litigation, it was not plainly incorrect to conclude that having the same magistrate judge handle this and the co-pending case involving the same patent would be more efficient than requiring another magistrate or trial judge to start from scratch. Similarly, even if trying these two related cases before the same court may not involve the same defendants and accused products, it does not appear on its face erroneous to conclude that maintaining these two cases before the same court may be beneficial from the standpoint of judicial resources.
Because the district court has taken the plausible position that denial of transfer would preserve judicial economy, the petitioners are only left with their arguments
As the petitioners see it, under § 1404(a), the convenience factors are deserving of "most importance." We have certainly noted the importance of the convenience factors. See In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed.Cir.2009) (noting that the convenience of the witnesses is "important"); In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir.2009) ("As in Volkswagen [I], TS Tech, and our most recent decision, In re Genentech, Inc., 566 F.3d 1338 (Fed.Cir.2009), there is a stark contrast in relevance, convenience, and fairness between the two venues."). In fact, In re Nintendo Co., 589 F.3d 1194, 1198 (Fed.Cir.2009), held that "in a case featuring most witnesses and evidence closer to the transferee venue with few or no convenience factors favoring the venue chosen by the plaintiff, the trial court should grant a motion to transfer."
However, Volkswagen I, TS Tech, Genentech, Hoffmann, and Nintendo did not present the court with a showing of judicial economy comparable to that in this case. In Volkswagen I, TS Tech, and Nintendo, considerations of judicial administration/judicial economy were neutral or were otherwise inapplicable to the outcome of the petition. At the same time, in Hoffmann, the court was presented with a case where there was no evidence that judicial economy favored venue in the Eastern District of Texas. Moreover, the plaintiff in Hoffmann was found to have "manipulate[d] the propriety of venue" in the Eastern District by transferring some 75,000 pages of documents to the district. 587 F.3d at 1337. Finally, in Genentech, this court was not faced with the analysis relating to judicial economy that is presented in this case. In contrast, as noted above, here the district court correctly held a denial of transfer would produce gains in judicial economy.
For those reasons, we find unpersuasive the petitioners' argument that their proposed bright-line rule favoring convenience factors would bring about more uniformity and fairness. In American Dredging Co. v. Miller, 510 U.S. 443, 455, 114 S.Ct. 981, 127 L.Ed.2d 285 (1994), the Supreme Court explained that "[t]he discretionary nature of the doctrine, combined with the multifariousness of the factors relevant to its application ... make uniformity and predictability of outcome almost impossible." To that end, the Court has repeatedly rejected the use of per se rules in forum non conveniens analyses. See, e.g., Piper Aircraft Co. v. Reyno, 454 U.S. 235, 249-50, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981); Koster v. Lumbermens Mut. Cas. Co., 330 U.S. 518, 527, 67 S.Ct. 828, 91 L.Ed. 1067 (1947).
Petitioners further note that failure to adopt their rule may allow for inconvenient and costly trials and provide a safe harbor for defendants that artificially manipulate venue. While these are perhaps valid concerns, we cannot say that there is enough justification here to depart from the above-mentioned principles. First, there is no evidence that such manipulation has occurred in this case. Second, courts have consistently held that judicial economy plays a paramount role in trying to maintain an orderly, effective, administration of justice. See Cont'l Grain Co. v. Barge FBL-585, 364 U.S. 19, 26, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960) (emphasizing the importance that judicial economy and efficiency play in a § 1404(a) analysis); Volkswagen II, 566 F.3d at 1351; Coffey, 796 F.2d at 220.
The only matter left for the court to decide is whether the trial court improperly balanced judicial economy against convenience in this specific case. Although Zimmer demonstrates that a clear abuse of discretion in balancing convenience against judicial economy under § 1404 is not outside the scope of correctable error on mandamus review, 609 F.3d at 1382, the gain in judicial economy from keeping this case in the Eastern District of Texas is more than negligible. Here, the trial court became very familiar with the only asserted patent and the related technology during a prior litigation. That, coupled with the fact there is co-pending litigation before the trial court involving the same patent and underlying technology, provides a substantial justification for maintaining suit in the Eastern District of Texas. In addition, although some potential witnesses and sources of proof located in the transferee venue warrant weighing convenience factors in favor of transfer, no defendant party is actually located in the
In sum, there are cases where to hold a trial court to a meaningful application of the § 1404(a) factors presents only one correct outcome. In those cases, mandamus may be appropriate. A case such as this, however, shows that a meaningful application of the factors often creates a reasonable range of choice. Under such circumstances, it is entirely within the district court's discretion to conclude that in a given case the § 1404(a) factors of public interest or judicial economy can be of "paramount consideration," Volkswagen II, 566 F.3d at 1351, and as long as there is plausible support of record for that conclusion we will not second guess such a determination, even if the convenience factors call for a different result.
Accordingly,
IT IS ORDERED THAT:
The petition for a writ of mandamus is denied.