by Dennis Crouch
In the recent case of In re Microsoft, 23-128 (Fed. Cir. 2023), the Federal Circuit once again granted a writ of mandamus, ordering a patent infringement case to be transferred out of Judge Albright’s courtroom in the Western District of Texas (WDTX). This decision was made under the provisions of 28 U.S.C. § 1404(a), which allows for the transfer of cases for the convenience of the parties and in the interest of justice.
Microsoft, a multinational corporation with a significant presence in many U.S. states, including Texas, is no stranger to litigation in the Lone Star state. The company’s substantial business activities in Texas, which include marketing, selling, and servicing the accused products, did not significantly impact the 1404(a) jurisprudence in this case.
In 2022, Virtru Corporation sued Microsoft for infringing three of its data privacy patents: US8589673, US8874902, and US9578021. Microsoft sought to transfer the case to the Western District of Washington (WDWA) under § 1404(a), citing its incorporation and headquarters in Washington, the location of the accused technology’s development, and the absence of relevant operations by either party in WDTX.
The Judge Albright denied the motion, concluding that while access to sources of proof and local interest slightly favored transfer, administrative difficulties due to court congestion disfavored it. The district court found 27 Microsoft employees in WDWA who were potential witnesses, but it deemed the willing witness factor neutral because Virtru had identified eight potential party witnesses more conveniently located near (but not in) WDTX.
In the § 1404(a) mandamus context, the appellate court reviews only for clear abuses of discretion that produce patently erroneous results. The decision of whether to transfer a case is committed to the district court’s discretion, but the district court should transfer when a movant demonstrates that the transferee forum is clearly more convenient.
The appellate panel concluded that Judge Albright’s denial of transfer was patently erroneous. It noted a clear abuse of discretion in the district court’s assessment of the convenience of potential witnesses. The appellate court concluded that the center of gravity of the action was clearly in the WDWA, where the majority of potential witnesses with relevant and material information resided, where accused product features were researched, designed, and developed, and where physical evidence was located. The court granted the petition, vacated the district court’s order denying transfer, and directed the district court to grant the transfer motion.