The US Court of Appeals for the Federal Circuit denied a mandamus petition requesting transfer from the Marshall division to the Sherman division within the US District Court for the Eastern District of Texas, finding that there was lack of clear error and no abuse of discretion in the district court’s decision to deny transfer. In re SAP America, Inc., Case No. 25-118 (Fed. Cir. Apr. 10, 2025) (Dyk, Prost, Chen, JJ.) (per curiam).
Valtrus Innovations and Key Patent Innovations (collectively, Valtrus) filed a patent infringement lawsuit against SAP. SAP moved for an intra-district transfer from the Marshall division, where the case was originally filed, to the Sherman division. In support of the motion, SAP cited the presence of SAP offices, relevant witness residences, and two SAP employees, all located in Sherman. Valtrus opposed the transfer, pointing out that co-pending litigation in Marshall involved the same asserted patents.
The district court denied SAP’s motion, even though the co-pending case had been closed. The district court also pointed out that most of SAP’s witnesses were out of state or international, making either Texas division equally inconvenient for those witnesses. SAP appealed.
The Federal Circuit reviewed the district court’s ruling under the stringent standards for mandamus relief, which are as follows:
- There is no other adequate means to attain the desired relief.
- There is a clear and indisputable right to relief.
- The writ is appropriate under the circumstances.
Under the Federal Circuit’s 2022 decision in In re Volkswagen, there must be “clear abuses of discretion that produce patently erroneous results.”
Under Volkswagen, a court must consider both private and public factors when deciding whether to transfer venue. The private factors are:
- The relative ease of access to sources of proof.
- The availability of a compulsory process to secure the attendance of witnesses.
- The cost of attendance for willing witnesses.
- All other practical issues that make trial of a case easy, expeditious, and inexpensive.
The public interest factors are:
- The administrative difficulties flowing from court congestion.
- The local interest in having localized issues decided at home.
- The forum’s familiarity with the law that will govern the case.
- The avoidance of unnecessary conflict of laws issues or in the application of foreign law.
The Federal Circuit found that the district court erred in assigning weight to the co-pending litigation in Marshall, which had been closed and had all defendants dismissed by the time the motion to transfer was resolved. The Court added that the district court improperly weighed the court congestion factor against transfer based solely on the case’s smooth progression to trial.
Despite these errors, the Federal Circuit concluded that SAP failed to demonstrate that the denial of transfer was erroneous. The district court had plausibly found the convenience of the two divisions comparable for most potential witnesses who resided outside of Texas, and that SAP had not sufficiently shown that its Sherman-based employees had relevant knowledge or would be trial witnesses. The Court therefore denied SAP’s petition, underscoring the high burden faced by petitioners seeking such extraordinary relief.
