Brief in Support of Motion to Transfer Venue under 28 U.S.C. § 1404(a)
(Patent Case)

Summary

This template is for a brief in support of a defendant–accused infringer's motion under 28 U.S.C. § 1404(a) to transfer a patent infringement case to another district or division. This template includes practical guidance and drafting notes. Even if the plaintiff's chosen venue meets the requirements for proper venue under 28 U.S.C. 1400(b) (see Venue Rules and Practice for Patent Infringement Litigation), the venue may not be convenient given the location of the parties, likely witnesses and pertinent documents. Under these circumstances, as the defendant's counsel, consider filing a motion to transfer venue. A change of venue may benefit your client (e.g., by the lower costs incurred in litigating closer to home or obtaining a more favorable forum). It may also disrupt the plaintiff's litigation strategy. Under 28 U.S.C. § 1404(a), a district court may transfer a case to any other district or division where the case might have been brought, for the convenience of parties and witnesses, in the interest of justice. Courts evaluate the various private and public interest factors when deciding transfer motions. The private interest factors include access to sources of proof and the court's ability to compel the attendance of witnesses. The public interest factors include the administrative difficulties flowing from court congestion and the interest in having localized interests decided at home. See, e.g., In re TS Tech United States Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). However, circuits may apply these factors differently by, for instance, placing greater weight on certain factors over others. For example, compare In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc) (a district court must grant a transfer motion if the transferee venue is "clearly more convenient" than the venue chosen by the plaintiff), with Shutte v. Armco Steel Corp., 431 F.2d 22 (3d Cir. 1970) (plaintiff's choice of venue is "a paramount consideration in any determination of a transfer request"). Two of the most popular venues for filing patent infringement actions are the Western District of Texas, Waco division, and the Eastern District of Texas, in the Fifth Circuit. These venues are generally perceived as favoring patent owners more than accused infringers. Thus, the volume of venue transfer motions in patent cases in these districts is relatively high. This template recites the private and public interest venue transfer factors articulated by the Fifth Circuit in In re Volkswagen of Am., Inc., 545 F.3d at 315. In Volkswagen, the Fifth Circuit identified the following private and public interest factors to be considered in evaluating a venue transfer motion: • The private interest factors are as follows: ○ The relative ease of access to sources of proof ○ The availability of compulsory process to secure the attendance of witnesses ○ The cost of attendance for willing witnesses ○ All other practical problems that make the trial of a case easy, expeditious, and inexpensive • The public interest factors are as follows: ○ The administrative difficulties flowing from court congestion ○ The local interest in having localized interests decided at home ○ The familiarity of the forum with the law that will govern the case ○ The avoidance of unnecessary problems of conflict of laws or in the application of foreign law These factors are not necessarily exhaustive or exclusive, and none of the factors alone have dispositive weight. In balancing the factors, when the transferee venue is not clearly more convenient than the venue chosen by the plaintiff, the plaintiff's choice should be respected. Volkswagen, 545 F.3d at 315. It is crucial to support your transfer motion with as many detailed facts as possible to bolster your chances of success. See, e.g., In re Apple Inc., 743 F.3d 1377 (Fed. Cir. 2014) (denying writ of mandamus to transfer to the Northern District of California because the defendant, among other things, failed to identify specific witnesses who would need to travel to the Eastern District of Texas or any third party witnesses not subject to compulsory process in Texas, making only "vague assertions" regarding the location and potential relevance of documentary evidence). Consider filing supporting attorney and fact witness declarations. Your brief should also be accompanied by a motion, notice of motion, and proposed order to transfer the case to another district or court division. For cases in other circuits, you should recite and apply the venue transfer factors articulated in that circuit. See Venue Transfer Factors in Patent Litigation Chart (Regional Circuit). For a case in the Western District of Texas, Waco division, before Judge Alan Albright, see Patent Litigation Rules and Practice before Judge Alan Albright W.D. Tex. — Motions to Transfer or Dismiss for Improper Venue, reviewing how Judge Albright handles venue transfer motions. For a general discussion of how and when to move to transfer venue in federal court, see Motion to Transfer Venue: Making the Motion (Federal).