On January 29, 2013, the Federal Circuit issued its mandamus decision in In re EMC Corp. (available here). This decision, which applies in all patent infringement cases filed within the Fifth Circuit, such as in the Northern District of Texas, provides substantial guidance to judges handling patent cases, as well as patent practitioners.
While the entire decision is worth a read, two principles stand out. First, it is important that Courts address motions to transfer at the outset of litigation. “Congress’ intent ‘to prevent the waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense,’ Van Dusen v. Barrack, 376 U.S. 612, 616 (1964) (internal quotation marks omitted), may be thwarted where * * * defendants must partake in years of litigation prior to a determination on a transfer motion.”
Second, “[m]otions to transfer venue are to be decided based on ‘the situation which existed when suit was instituted.’ Hoffman v. Blaski, 363 U.S. 335, 343 (1960) (quoting Paramount Pictures, Inc. v. Rodney, 186 F.2d 111, 119 (3d Cir. 1950) (Hastie, J., dissenting)). Any subsequent familiarity gained by the district court is therefore irrelevant.” However, “[w]hile considerations of judicial economy arising after the filing of a suit do not weigh against transfer, a district court may properly consider any judicial economy benefits which would have been apparent at the time the suit was filed.”
These principles, taken together, mean that a district court cannot rely on judicial economy principles that arise from the fact that the court had become familiar with the patent in the time the court took to decide the transfer motion. However, the district court need not ignore the fact that several patent infringement cases involving the same plaintiff and same patent had been filed in his or her court, or any familiarity gained from prior cases.