January 2010

Spotlight Info

Over the past year, the Federal Circuit has issued multiple opinions on the issue of transfer, including In re TS Tech USA Corp., No. 09-M888 (Fed. Cir. Dec. 29, 2008), and In re Genentech, Inc.,
No. 09-M901 (Fed. Cir. May 22, 2009).  Last month, the Court once again turned its attention to this hotly contested topic.  On two separate occasions, the Federal Circuit overturned decisions of the Eastern District of Texas and transferred the respective cases to more convenient and appropriate jurisdictions.

In In re Hoffmann-La Roche Inc., No. 09-M911 (Fed. Cir. Dec. 2, 2009), Novartis Vaccines and Diagnostics, Inc. (“Novartis”) brought suit against Hoffmann-La Roche Inc. (“Roche”) and Trimeris, Inc. (“Trimeris”) in the Eastern District of Texas, despite the fact that Novartis is a California corporation, and the bulk of the development and testing efforts by Roche and Trimeris took place in North Carolina.  After the district court refused to transfer the case to North Carolina, the Federal Circuit reversed, observing that the Eastern District of North Carolina’s interest in the case was “self-evident,” while the case had virtually no meaningful connection to the Eastern District of Texas.  Slip op. at 8.

Similarly, in In re Nintendo Co., No. 09-M914 (Fed. Cir. Dec. 17, 2009), Motiva, LLC brought suit against Nintendo Co., Ltd. of Japan and Nintendo of America Inc. of Redmond, Washington (collectively "Nintendo"), in the Eastern District of Texas.  Observing that none of the parties were incorporated in Texas or had offices in Texas, no witnesses resided in Texas, and no evidence was located in Texas, the Federal Circuit granted Nintendo’s petition for a writ of mandamus and transferred the case from the Eastern District of Texas to the Western District of Washington.  See full summaries below.