This article reminded me of the discussion in chapter 2 about jurisdiction....

Federal Circuit Transfers Patent Infringement Case out of the Eastern District of Texas

Alison Frankel

The American Lawyer

December 07, 2009

There's an old saying in journalism that three examples make a trend. Under those rules, we can now declare a trend in IP litigation. The U.S. Court of Appeals for the Federal Circuit ruled Wednesday that the chief judge of the Eastern District of Texas abused his discretion in refusing to transfer Novartis' patent infringement case (pdf) against Hoffmann-La Roche out of his jurisdiction. This is the third time since the 5th Circuit's October 2008 en banc ruling in In re Volkswagen that the Federal Circuit has granted a writ of mandamus and booted a patent case out of Texas. (The other two were In re TS Tech (pdf) and In re Genentech (pdf).)

Novartis, represented by Morrison & Foerster and McKool Smith, had argued that it was perfectly sensible for its infringement suit to be based in Texas, even though Novartis is a California-based company; Roche is a Swiss company with U.S. operations headquartered in New Jersey; and the drug at issue, Fuzeon, was developed in North Carolina, manufactured primarily in Colorado, and sold nationwide. Novartis' reasoning? Texas was a central location where thousands of documents have already been electronically transferred, and one non-party witness lived in the state and was subject to subpoena there.

The Federal Circuit wasn't buying it. In an emphatic ruling that grants the motion by Roche's lawyers at Fried, Frank, Harris, Shriver & Jacobson to transfer the case to the Eastern District of North Carolina, the three-judge panel concluded that North Carolina was preferable for reasons of "relevance, convenience, and fairness."

Novartis' purported Texas justifications, wrote Judge Arthur Gajarsa for the panel, were red herrings at best. "There appears to be no connection between this case and the Eastern District of Texas except that in anticipation of this litigation, Novartis' counsel in California converted into electronic format 75,000 pages of documents ... and transferred them to the offices of its litigation counsel in Texas," the ruling says. "The assertion that these documents are 'Texas' documents is a fiction which appears to have been created to manipulate the propriety of venue."

Chief Judge David Folsom, the Federal Circuit concluded, "clearly abused [his] discretion" in denying Roche's motion to transfer the case to North Carolina. "The Eastern District of North Carolina's interest in this matter is self-evident," the appellate panel said. "Meanwhile, it is undisputed that this case has no relevant factual connection to the Eastern District of Texas."

We called Sam Baxter of McKool Smith and Rachel Krevins of MoFo (who argued at the Federal Circuit) but didn't hear back.