in the united states court of appeals for the … · jay p. kesan & gwendolyn g. ball, how are...

Miscellaneous Docket No. 142 ___________________________

IN THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

______________________________

IN RE EMC CORP., DECHO CORP., IOMEGA CORP., AND CARBONITE, INC.

Petitioners. _____________________________

On Petition for Writ of Mandamus to the United States District Court for the Eastern District of Texas in Case No. 10-CV-435, Magistrate Judge Amos L. Mazzant

_________________________________

BRIEF FOR AMICI CURIAE CISCO SYSTEMS, INC., COMPUWARE CORPORATION, FACEBOOK, INC., GOOGLE INC., HTC

CORPORATION, LOGITECH INC., MICROSOFT CORPORATION, NEWEGG INC., ORACLE CORPORATION, RESEARCH IN MOTION

CORPORATION, SAP AMERICA, INC., SAS INSTITUTE INC., SYMANTEC CORPORATION, VERIZON COMMUNICATIONS INC.,

AND YAHOO! INC. IN SUPPORT OF DEFENDANTS-PETITIONERS AND IN SUPPORT OF GRANTING A WRIT OF MANDAMUS

______________________________

Matthew D. McGill Principal Attorney GIBSON, DUNN & CRUTCHER LLP 1050 Connecticut Avenue, N.W. Washington, D.C. 20036 Telephone: (202) 955-8500 Facsimile: (202) 530-9662 Counsel for Amici Curiae Cisco Systems, Inc., Compuware Corporation, Facebook, Inc., Microsoft Corporation, Newegg Inc., Research In Motion Corporation, SAP America, Inc., SAS Institute Inc., Symantec Corporation, Verizon Communications Inc., and Yahoo! Inc.

[Additional Counsel Listed on Inside Cover]

Suzanne T. Michel Google Inc. 1101 New York Avenue, N.W. Washington, D.C. 20015 Telephone: (650) 253-0000 Facsimile: (650) 253-0001 Counsel for Amicus Curiae Google Inc. Elizabeth Launer Logitech Inc. 7600 Gateway Boulevard, Newark, CA 94560 Telephone: (510) 713-5156 Facsimile: (510) 713-4645 Counsel for Amicus Curiae Logitech Inc.

Vincent Lam HTC Corporation 13920 SE Eastgate Way, Suite 200 Bellevue, WA 98005 Telephone: (425) 679-5318 Counsel for Amicus Curiae HTC Corporation Matthew Sarboraria Oracle Legal 500 Oracle Parkway MS 5op764 Redwood Shores, CA 94065 Telephone: (650) 506-1372 Facsimile: (650) 506-1774 Counsel for Amicus Curiae Oracle Corporation

CERTIFICATE OF INTEREST

Pursuant to Federal Circuit Rule 47.4, counsel for amici curiae certifies the

following:

1. The full name of every party represented in this case by the under-

signed counsel is: Cisco Systems, Inc., Compuware Corporation, Facebook, Inc.,

Microsoft Corporation, Newegg Inc., Research In Motion Corporation, SAP Amer-

ica, Inc., SAS Institute Inc., Symantec Corporation, Verizon Communications Inc.,

and Yahoo! Inc.

2. The name of the real party in interest (if the party named in the cap-

tion is not the real party in interest) represented by the undersigned counsel is: Not

applicable.

3. All parent corporations and any publicly held companies that own 10

percent or more of the stock of the parties represented by the undersigned counsel

are: SAP AG is the parent corporation of SAP America, Inc.

4. The names of all the law firms and partners or associates who ap-

peared for the parties now represented by the undersigned counsel in the trial court

or are expected to appear in this Court are: Matthew D. McGill and Misha Tsey-

tlin of Gibson, Dunn & Crutcher LLP; John F. Bash, formerly of Gibson, Dunn &

Crutcher, LLP.

DATED: October 23, 2012

By: /s/ Matthew D. McGill Matthew D. McGill

Counsel for Amici Curiae Cisco Systems, Inc., Compuware Corporation, Facebook, Inc., Microsoft Corporation, Newegg Inc., Research In Motion Corporation, SAP America, Inc., SAS Institute Inc., Symantec Corporation, Verizon Communications Inc., and Yahoo! Inc.


Pursuant to Federal Circuit Rule 47.4, counsel for amicus curiae certifies the

following:


signed counsel is: Google Inc.



applicable.



are: None.



or are expected to appear in this Court: Suzanne T. Michel.

DATED: October 23, 2012 By: /s/ Suzanne T. Michel

Suzanne T. Michel Counsel for Amicus Curiae Google Inc.

CERTIFICATE OF AUTHORITY

I, Matthew D. McGill, declare under penalty of perjury that I am authorized

by Suzanne T. Michel, counsel for Google Inc., to sign on her behalf the foregoing

Certificate of Interest.





following:


signed counsel is: Oracle Corporation.



applicable.



are: None.



or are expected to appear in this Court: Matthew Sarboraria.

DATED: October 23, 2012 By: /s/ Matthew Sarboraria

Matthew Sarboraria Counsel for Amicus Curiae Oracle Corporation



by Matthew Sarboraria, counsel for Oracle Corporation, to sign on his behalf the

foregoing Certificate of Interest.





following:


signed counsel is: Logitech Inc.



applicable.



are: Logitech International S.A. is the parent corporation of Logitech Inc.



or are expected to appear in this Court: Elizabeth Launer.


By: /s/ Elizabeth Launer Elizabeth Launer

Counsel for Amicus Curiae Logitech Inc.



by Elizabeth Launer, counsel for Logitech Inc., to sign on her behalf the foregoing






following:


signed counsel is: HTC Corporation.



applicable.



are: None.



or are expected to appear in this Court: Vincent Lam.

DATED: October 23, 2012 By: /s/ Vincent Lam

Vincent Lam Counsel for Amicus Curiae HTC Corporation



by Vincent Lam, counsel for HTC Corporation, to sign on his behalf the foregoing




TABLE OF CONTENTS

Page

INTEREST OF AMICI CURIAE ............................................................................... 1

INTRODUCTION AND SUMMARY OF ARGUMENT ........................................ 1

BACKGROUND ....................................................................................................... 4

A. The District Court’s Denial Of The Transfer Motions ......................... 4

B. Since In re EMC, Courts Have Employed The Consolidation Device And Resulting “Judicial Economy” To Deny Transfer ................................................................ 6

ARGUMENT ............................................................................................................. 8

I. This Court Should Grant Mandamus Relief To Ensure That District Courts Promptly Decide Transfer Motions Based On The Balance Of Private And Public Interest Factors As It Exists At The Time The Motion Is Filed ........................ 8

CONCLUSION ........................................................................................................ 15

TABLE OF AUTHORITIES

Page(s)

ii

CASES

Bright Response, LLC v. EMC Corp., No. 2:12-cv-279-JRG (E.D. Tex. Aug. 17, 2012) ........................................................ 3

eBay v. MercExchange, 547 U.S. 388 (2006) ............................................................................................. 13

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) ............................................................................................. 10

Guardian Media Techs., Ltd. v. Mustek Systems, Inc., 440 F. Supp. 2d 937 (W.D. Wis. 2006) ................................................................. 9

In re EMC, 677 F.3d 1351 (Fed. Cir. 2012) .................................................................... passim

In re Hoffman-La Roche, 587 F.3d 1333 (Fed. Cir. 2009) ............................................................................ 11

In re Horseshoe Entertainment, 337 F.3d 429 (5th Cir. 2003)............................................................... 9, 10, 11, 12

In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010) .............................................................................. 2

Innovative Commc’ns Techs., Inc. v. Vivox, Inc., No. 12cv7 (E.D. Va. July 12, 2012) ....................................................................... 3

Innovative Commc’ns Techs., Inc. v. Vivox, Inc., No. 2:12cv7, 2012 WL 4738979 (E.D. Va. Oct. 3, 2012) .............................. 7, 12

Leroy v. Great Western United Corp., 443 U.S. 173 (1979) ............................................................................................... 8

McDonnell Douglas Corp. v. Polin, 429 F.2d 30 (3rd Cir. 1970) ................................................................................... 9

TABLE OF AUTHORITIES (continued)

Page(s)

iii

Norman IP Holdings, LLC v. Lexmark Int’l, Inc., Nos. 6:12cv508, 6:11-CV-495, 2012 WL 3307942 (E.D. Tex. Aug. 12, 2012) ............................................................................ passim

Oasis Research, LLC v. Adrive, LLC, No. 4:10-CV-435, 2011 WL 3099885 (E.D. Tex. May 23, 2011)....................................................................................................................... 4

Oasis Research, LLC v. Adrive, LLC, No. 4:10-CV-435, 2011 WL 3103972 (E.D. Tex. July 25, 2011)....................................................................................................................... 5

Prestige Wine and Spirits v. Robin, 686 F. Supp. 103 (D. Md. 1988) .......................................................................... 11

Profectus Tech. LLC v. Huawei Techs. Co., No. 6:11-CV-474 (E.D. Tex. Sept. 26, 2012) ........................................................ 3

RMail Ltd. v. Amazon.com, Inc., 2:10-cv-258-JRG (E.D. Tex. Aug. 17, 2012) ........................................................ 3

Rotatable Techs., LLC v. Nokia, Inc., No. 2:12-cv-265-JRG (E.D. Tex. Aug. 17, 2012) ................................................. 3

Unifi Scientific Batteries, LLC v. Research In Motion Corp., No. 6:12cv223 LED-JDL (E.D. Tex. Sept. 18, 2012) ........................................... 3

Van Dusen v. Barrack, 376 U.S. 612 (1964) ........................................................................................ 9, 10

STATUTES

28 U.S.C. § 1404 .............................................................................................. passim

28 U.S.C. § 1407 .............................................................................................. passim

35 U.S.C. § 299 .......................................................................................................... 2

TABLE OF AUTHORITIES (continued)

Page(s)

iv

RULES

Fed. R. Civ. P. 20 .............................................................................................. 2, 4, 5

Fed. R. Civ. P. 21 ....................................................................................................... 4

Fed. R. Civ. P. 42 ...................................................................................................2, 5 OTHER AUTHORITIES

Jay P. Kesan & Gwendolyn G. Ball, How Are Patent Cases Resolved? An Empirical Examination of the Adjudication and Settlement of Patent Disputes, 84 Wash. U. L. Rev. 237 (2006) ................................................................................................................... 15

Mark A. Lemley, Rational Ignorance At The Patent Office, 95 Nw. L. Rev. 1495 (2001) ..................................................................................... 14

INTEREST OF AMICI CURIAE

Amici curiae are leading high-technology and software companies. At vari-

ous times, each has been sued in an inconvenient forum and has faced the argu-

ment that pendency of lawsuits on the same patent, or the same family of patents,

creates “judicial economy” that militates against transfer under 28 U.S.C. § 1404.

Some of them have filed timely motions to transfer pending, yet still are being

compelled to engage in substantive and consequential pretrial litigation activities

such as claim construction—also, supposedly, to promote “judicial economy.” For

these reasons and others, amici have a strong interest in the correct administration

of this Court’s transfer-of-venue principles in patent-infringement actions, includ-

ing the appropriate role of “judicial economy” in that analysis.1

INTRODUCTION AND SUMMARY OF ARGUMENT

For several years now, this Court has been using its mandamus power to

guide district courts in the exercise of their discretion in ruling upon defendants’

motions to transfer venue under 28 U.S.C. § 1404, in order to ensure that patent

cases are not litigated in places with no substantial connection to the parties or the

case. Each exercise of this Court’s authority, however, has been met by a new

1 No person or entity other than the amici curiae listed above and their counsel

authored this brief or contributed money intended to fund the preparation or submission of this brief. Petitioners and Respondent have consented to the filing of this brief.

2

challenge that frustrates proper application of Section 1404. First, some patentees

“artificially [sought] to establish venue” by incorporating in the chosen jurisdic-

tion, renting an empty office, hiring one or a few employees, and/or transferring

documents to that jurisdiction. In re Zimmer Holdings, Inc., 609 F.3d 1378, 1381-

82 (Fed. Cir. 2010). This Court rejected that approach. See id.

Patent holders have also sued in a single action defendants having little con-

nection to a forum with one or few defendants properly venued there—Federal

Rule of Civil Procedure 20 notwithstanding. Congress rejected this approach in

the America Invents Act (“AIA”). See 35 U.S.C. § 299(a)(1). And this Court

likewise ruled that cases against different defendants, even for infringing the same

patent, could not be joined unless there was a “logical relationship” between the

cases, creating a “substantial evidentiary overlap.” In re EMC, 677 F.3d 1351,

1357-58 (Fed. Cir. 2012).

Now, some plaintiffs have filed serial actions against unrelated parties in the

forum of their choice. These plaintiffs then urged pretrial consolidation under

Federal Rule of Civil Procedure 42, and argued that any motion to transfer venue

either be deferred until after claim construction or be denied based on “judicial

economy.” See generally Norman IP Holdings, LLC v. Lexmark Int’l, Inc., Nos.

6:12cv508, 6:11-CV-495, 2012 WL 3307942 (E.D. Tex. Aug. 12, 2012). Some

district court judges, citing “serially filed or severed cases,” have entered pre-trial

3

consolidation orders sua sponte and directed the parties to inform the court of other

cases that should be consolidated.2 And, when the motion to transfer finally is

heard—often, after claim construction—the court may rely upon this “judicial

economy” to deny an otherwise appropriate transfer of venue.

Mandamus is appropriate here both to enforce this Court’s mandate in In re

EMC and to provide district courts with further guidance as to the proper procedure

for addressing motions to transfer venue. If a transfer motion is to offer any hope

of safeguarding the parties from the costs of litigation in an inconvenient forum,

the district court must decide that motion promptly. Deferral of such motions de-

feats the congressional purpose and design of Section 1404—and, when they are

deferred in separately filed cases that are properly venued in other forums, also de-

feats the multi-district litigation procedures of Section 1407.

Likewise, the progress of litigation in an inconvenient forum—particularly

litigation activities that occur as a result of an erroneous denial of a transfer motion 2 See, e.g., Consolidation Order, Profectus Tech. LLC v. Huawei Techs. Co., No.

6:11-CV-474 (E.D. Tex. Sept. 26, 2012); Order, Unifi Scientific Batteries, LLC v. Research In Motion Corp., No. 6:12cv223 LED-JDL (E.D. Tex. Sept. 18, 2012); Consolidation Order, RMail Ltd. v. Amazon.com, Inc., 2:10-cv-258-JRG (E.D. Tex. Aug. 17, 2012); Consolidation Order, Rotatable Techs., LLC v. Nokia, Inc., No. 2:12-cv-265-JRG (E.D. Tex. Aug. 17, 2012); Consolidation Order, Bright Response, LLC v. EMC Corp., No. 2:12-cv-279-JRG (E.D. Tex. Aug. 17, 2012); Order, Innovative Commc’ns Techs., Inc. v. Vivox, Inc., No. 12cv7 (E.D. Va. July 12, 2012).

4

or failure to rule on a transfer motion that is filed within a reasonable time—cannot

itself be the basis for denying a timely motion to transfer. Were it otherwise, a dis-

trict court’s refusal to grant a meritorious transfer motion eventually would become

an adequate basis for denying it.

Such a system is contrary to Section 1404, Section 1407, decisions of the

Supreme Court, the Fifth Circuit, and this Court. Mandamus is warranted.

BACKGROUND

A. The District Court’s Denial Of The Transfer Motions

Plaintiff Oasis Research LLC (“Plaintiff”) joined claims against EMC,

Decho, Iomega and Carbonite (“Petitioners”), and fourteen other defendants in a

single action. See In re EMC Corp., 677 F.3d at 1353. Petitioners, having no spe-

cific connection with the Eastern District of Texas, immediately sought both to

sever their cases under Federal Rules of Civil Procedure 20 and 21, and to transfer

the severed cases to more convenient venues under 28 U.S.C. § 1404(a).

The district court denied these motions, reasoning that “the existence of mul-

tiple lawsuits interpreting the same patent creates an unnecessary risk of incon-

sistent claim construction and adjudication . . . [and] duplicative use of scarce judi-

cial resources.” Oasis Research, LLC v. Adrive, LLC, No. 4:10-CV-435, 2011 WL

3099885, at *4 (E.D. Tex. May 23, 2011) (quotations omitted). The court then de-

nied transfer, which the court viewed as “contingent upon” the severance motions.

5

Id. at *5; see also Oasis Research, LLC v. Adrive, LLC, No. 4:10-CV-435, 2011

WL 3103972 (E.D. Tex. July 25, 2011).

This Court granted mandamus relief, holding that the district court had ap-

plied the incorrect legal standard in denying the motions to sever. See In re EMC,

677 F.3d at 1360. This Court explained that the transaction-or-occurrence test of

Rule 20 requires more than “common questions of claim construction and patent

invalidity” or “claims of infringement of the same patent by independent parties.”

Id. at 1358. Instead, there must be “substantial evidentiary overlap in the facts giv-

ing rise to the cause of action against each defendant.” Id.

This Court, moreover, cast doubt on the district court’s suggestion that “the

existence of multiple lawsuits” itself could justify denial of transfer motions. This

Court observed that inefficiencies presented by multiple lawsuits could be ad-

dressed through a district court’s “considerable discretion to consolidate cases for

discovery and for trial under Rule 42,” but only “where venue is proper.” Id. at

1360 (emphasis added). Otherwise, this Court noted, “common pretrial issues”

could be “adjudicated together through the multidistrict litigation procedures of 28

U.S.C. § 1407.” Id. (emphasis added). Implicit in this analysis is that, when cases

are not properly venued, they should be transferred to a district where venue is

proper, and that any inefficiencies resulting from “the existence of multiple law-

suits” could then be addressed through the procedures Congress provided for mul-

6

tidistrict litigation.

On remand, the district court granted the Petitioners’ motions to sever their

four unrelated cases. But in the same order, the court consolidated the cases for

pretrial purposes without first considering the pending motions to transfer, or oth-

erwise assessing whether venue was proper in the district. A week later, the dis-

trict court denied the Petitioners’ motions to transfer, reasoning that “judicial

economy” counseled against transfer. The court noted that it had “already expend-

ed significant resources in hiring a technical advisor, conducting a Markman hear-

ing, and reviewing the parties’ summary judgment motions” and “negotiating is-

sues of scheduling, discovery, and protective orders.” A-16. If the motion were

granted, the court elaborated, “another court would have to spend significant re-

sources to familiarize itself with the patents, prosecution history, claim construc-

tion, and other issues in this case.” A-18, A-28-A-29.

B. Since In re EMC, Courts Have Employed The Consolidation Device And Resulting “Judicial Economy” To Deny Transfer

The proceedings on remand in this case illustrate a troubling development in

the district courts’ adjudication of transfer motions since this Court issued its In re

EMC decision: the denial of motions to transfer based, in part, on delay in deciding

the transfer motions themselves, often coupled with consolidation of related cases.

For example, after consolidating three separately-filed cases, a district court

in Virginia relied on “the efficiency of the judicial process” and the “economy of

7

judicial resources” arising from its consolidation of the three separately filed cases

to deny the defendants’ motions to transfer. Innovative Commc’ns Techs., Inc. v.

Vivox, Inc., No. 2:12cv7, 2012 WL 4738979, at *8 (E.D. Va. Oct. 3, 2012).

Though it denied the motions to transfer, the district court said it would entertain

renewed motions from the defendants, “if they so desire,” after the claim construc-

tion hearing to be held just ten days later. Id.

Similarly, in a decision issued one day before the court in the present case

issued its severance-and-consolidation order, another district judge, after severing

numerous improperly joined cases, consolidated those same cases for pretrial pur-

poses and then deferred action on timely filed motions to transfer. See Norman IP,

2012 WL 3307942. The court cited its “very busy docket” and the fact that it “has

expended considerable time addressing venue” in other cases to justify its delay.

Id. at *5 (emphasis in original); see also id. (“Venue motions are important, but not

any more important than everything else this court has to do.”). The Court then

declared that, whether or not transfer of a particular case was warranted, the court

“shall retain the case through the Markman phase of the proceedings.” Id. at *4.

Any pending orders to transfer would become effective only “[o]nce the Markman

opinion issues.” Id. This “case management approach,” the Norman court ex-

plained, “requir[es] only one district court to address the underlying disputed claim

terms” and “ensures that the related patent claims proceed initially on a consistent

8

claim construction.” Id. But this approach, the court admonished, “should not be

perceived as an invitation to file motions to transfer venue.” Id.

In effect, the district court had arrogated to itself the role of the multidistrict

litigation panel: Assuming transfer might otherwise be proper, it concluded the

cases would be appropriate for multidistrict consolidation, and then assigned the

cases to itself for pre-trial proceedings.

In this way, “judicial economy”—often created by the delay in deciding a

timely filed transfer motion—has become a central justification for maintaining pa-

tent infringement suits in inconvenient venues. Amici submit that this type of judi-

cial economy is not properly considered by a district court in determining whether

or when to transfer a case to a more convenient venue.

ARGUMENT

I. This Court Should Grant Mandamus Relief To Ensure That District Courts Promptly Decide Transfer Motions Based On The Balance Of Private And Public Interest Factors As It Exists At The Time The Motion Is Filed

The district court’s duty to ensure that the plaintiff has filed its suit in a con-

venient venue is a threshold inquiry, designed “to protect the defendant against the

risk that a plaintiff will select an unfair or inconvenient place of trial.” Leroy v.

Great Western United Corp., 443 U.S. 173, 183-84 (1979) (emphasis in original).

Congress thus enacted the change of venue statute, Section 1404, “to prevent the

waste of time, energy and money, and to protect litigants, witnesses and the public

9

against unnecessary inconvenience and expense.” Van Dusen v. Barrack, 376 U.S.

612, 616 (1964). Under this statute, “[f]or the convenience of parties and witness-

es, in the interest of justice, a district court may transfer any civil action to any oth-

er district or division where it might have been brought.” 28 U.S.C. § 1404(a).

To ensure that the congressional objective of “protect[ing] litigants” from

inconvenient venues is fulfilled, courts have recognized that timely-filed transfer of

venue motions must be addressed before proceeding with other aspects of the case.

See, e.g., McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30-31 (3rd Cir. 1970)

(“[I]t is not proper to postpone consideration of the application for transfer under

§ 1404(a) until discovery on the merits is completed, since it is irrelevant to the de-

termination of the preliminary question of transfer.”); Guardian Media Techs., Ltd.

v. Mustek Systems, Inc., 440 F. Supp. 2d 937, 939 (W.D. Wis. 2006) (“the determi-

nation of which court should conduct the trial naturally precedes the question of

when the trial should be held”). On this point, the Fifth Circuit, which provides the

rule of decision in this case, has been emphatic, explaining that the threshold ques-

tion of venue should take “top priority.” In re Horseshoe Entertainment, 337 F.3d

429, 433 (5th Cir. 2003).

It is, therefore, inappropriate for a court to proceed with pretrial matters, in-

cluding claim construction and non-jurisdictional discovery, when a timely-filed

transfer-of-venue motion is pending before the court. To proceed with substantive

10

litigation when the venue issue has yet to be resolved defeats the core purpose of

Section 1404 of “protect[ing] litigants . . . against unnecessary inconvenience and

expense.” Van Dusen, 376 U.S. at 616. It imposes on the defendant the costs of

litigation in the plaintiff’s chosen forum regardless of the weight of the private and

public interest factors. And far from advancing “judicial economy,” if a transfer

motion is not granted until late in the case, it invites duplicative litigation as each

party litigates afresh in the transferee forum, which is not bound by interlocutory

rulings of another court. See Norman IP, 2012 WL 3307942, at *4 n.3 (recogniz-

ing “the transferee court is of course not bound by the claim construction of this

court,” but “hop[ing] that this court’s claim construction will be of help to the

transferee court”).

For this reason, the Fifth Circuit has rejected the notion that litigation activi-

ties that take place while a transfer motion is pending possibly could justify denial

of the transfer motion. Justifying denial of transfer by reference to litigation activi-

ties the parties were compelled to undertake because of the court’s delay in decid-

ing the motion, the Fifth Circuit explained, is “boot strapping,” and it “should not

be encouraged.” In re Horseshoe, 337 F.3d at 434; cf. Fogerty v. Fantasy, Inc.,

510 U.S. 517, 532 n.18 (1994) (referencing “a long line of bootstrapping from

nothing to something”). Instead, the Fifth Circuit instructed that transfer motions

must be decided based on private and public interest factors as they existed “at the

11

time [the defendant] filed its motion to transfer.” In re Horseshoe, 337 F.3d at

434; see also Prestige Wine and Spirits v. Robin, 686 F. Supp. 103, 107 (D. Md.

1988); cf. In re Hoffman-La Roche, 587 F.3d 1333, 1336-37 (Fed. Cir. 2009) (doc-

uments moved in anticipation of litigation should not be considered in analysis of

private interest factors).

It follows, a fortiori, that litigation activities that occur as a result of a dis-

trict court’s erroneous denial of a motion to transfer also cannot stand as an obsta-

cle to transfer to a more appropriate venue. This is at least as inappropriate a form

of bootstrapping as that so forcefully rejected by the Fifth Circuit in Horseshoe.

Yet, here, in finding that “judicial economy” counseled against transfer, the district

court cited litigation activities that had occurred only because of the court’s denial

of the defendants’ initial motion to sever and transfer that was later reversed. A-

16. Indeed, if the district court were correct that erroneously incurred litigation

activities could justify denial of transfer, then all erroneous denials of transfer mo-

tions eventually would become self-justifying. But the Fifth Circuit has foreclosed

that path by prohibiting courts from bootstrapping litigation activities that occurred

in spite of a timely and meritorious motion to transfer venue, in order to alter the

analysis of private and public interest factors.

For all the same reasons, it is inappropriate for a district court to deny a

transfer motion based on the fact that a case has been consolidated for pretrial pur-

12

poses with other cases in the same district. It is true, as this Court has said, that

district courts have broad discretion to consolidate cases with common facts, but

only “where venue is proper” as to each of the cases to begin with. In re EMC,

677 F.3d at 1360 (emphasis added). For a plaintiff to argue that the fact of consol-

idation alters the transfer analysis is the same type of bootstrapping denounced in

In re Horseshoe, 337 F.3d at 434. Consolidation is not supposed to occur unless it

first is determined that “venue is proper” (In re EMC, 677 F.3d at 1360), and the

venue analysis must look to the facts as they existed when the motion to transfer

was filed, generally prior to any consolidation.

Since In re EMC, some district courts faced with serial suits against several

defendants nevertheless have consolidated those cases, and then conducted sub-

stantial pretrial proceedings such as claim construction, while deferring action on

transfer motions that the courts acknowledge may have merit. See, e.g. Norman,

2012 WL 3307942, at *4-5; Innovative Commc’ns, 2012 WL 4738979, at *7-8.

This course, it has been argued, promotes judicial economy by centralizing in one

court technically-difficult and time-intensive litigation tasks such as claim con-

struction and thereby minimizing the risk of inconsistent rulings. See, e.g., Nor-

man IP, 2012 WL 3307942, at *4. There are at least four significant problems

with this line of argument:

First, in maintaining that the particular demands of patent litigation—

13

specifically, the need to develop an understanding of the relevant technology—

precludes transfer until after claim construction, this approach risks carving out an

exception for patent cases from a general rule of civil procedure, 28 U.S.C. § 1404,

that otherwise demands that transfer motions be decided promptly. See supra at 8-

10. The Supreme Court, however, has instructed that rules of general applicability

must be applied in patent cases just as they are generally, and has cautioned courts

not to develop special exceptions to the general rules for patent cases. See, e.g.,

eBay v. MercExchange, 547 U.S. 388, 391-92 (2006).

Second, by deferring action on transfer motions, a court arrogates substantial

and consequential pretrial activities like claim construction and thereby subverts

the congressionally-designed processes for determining an appropriate forum or

forums for litigation spread across several districts. As this Court recognized in In

re EMC, Section 1407 is the congressionally-prescribed mechanism for deciding

when actions properly venued in different districts “may be transferred to any dis-

trict for coordinated or consolidated pretrial proceedings” to achieve judicial econ-

omy. These transfer decisions must be “made by the judicial panel on multidistrict

litigation” which consists of “seven circuit and district judges designated from time

to time by the Chief Justice of the United States.” 28 U.S.C. § 1407(d). It is this

panel that “assign[s]” such cases to “a judge or judges,” who “conduct[]” “coordi-

nated or consolidated pretrial proceedings.” Id. § 1407(b). When a district court

14

refuses transfer and itself consolidates in its own court cases that are not properly

venued there, it has arrogated the powers Congress instead granted to the MDL

panel.

Third, the “judicial economy” achieved by deferring action on transfer mo-

tions through claim construction is more illusory than real. As a leading propo-

nent of this course of action recognized, “the transferee court is of course not

bound by the claim construction of this court.” Norman IP, 2012 WL 2012 WL

3307942, at *4 n.3. The way to achieve judicial economy would be for courts to

promptly act on the transfer motions placed before them, and then for the litigants

to avail themselves of the multi-district litigation procedures of Section 1407, as

Congress quite plainly contemplated.

Finally, although some parties with meritorious transfer motions may be

compelled to settle their cases if their transfer motions are deferred, that is hardly a

cognizable form of judicial economy. As commentators have elaborated, patent

defendants face substantial incentives to settle cases—particularly when a lawsuit

is brought in a far-flung venue. See Mark A. Lemley, Rational Ignorance At The

Patent Office, 95 Nw. L. Rev. 1495, 1502, 1517 (2001). For this reason, pretrial

litigation such as claim construction and discovery often is the only litigation that

takes place in a patent infringement action. See Jay P. Kesan & Gwendolyn G.

Ball, How Are Patent Cases Resolved? An Empirical Examination of the Adjudi-

15

cation and Settlement of Patent Disputes, 84 Wash. U. L. Rev. 237, 311-12 (2006).

By withholding action on a transfer motion until after claim construction, a district

court improperly takes for itself the entirety of the case in many instances. Thus,

for many defendants, a court’s practice of withholding action on transfer motions

until after claim construction is tantamount to outright elimination of the right to

seek a transfer of venue accorded by Congress in Section 1404.

This Court should not allow its decision in In re EMC—as well as the judg-

ment of Congress as embodied in the AIA—to be rendered dead letters. Granting

mandamus relief will make clear that when a defendant files a timely motion to

transfer its case to a more convenient venue, the district court must decide that mo-

tion without delay, based upon the facts as they existed when the defendant filed its

motion, and without placing undue weight on the plaintiff’s decision to file suits

against unconnected defendants in the same district.

CONCLUSION

For the foregoing reasons, amici curiae respectfully submit that the petition

for writ of mandamus should be granted.

Respectfully submitted this Tuesday, October 23, 2012.

16

/s/ Suzanne T. Michel Suzanne T. Michel Google Inc. 1101 New York Avenue, NW Washington, D.C. 20015 Telephone: (650) 253-0000 Facsimile: (650) 253-0001 Counsel for Amicus Curiae /s/ Elizabeth Launer Elizabeth Launer Logitech Inc. 7600 Gateway Boulevard, Newark, CA 94560 Telephone: (510) 713-5156 Facsimile: (510) 713-4645 Counsel for Amicus Curiae Logitech Inc.

/s/ Matthew D. McGill Principal Attorney GIBSON, DUNN & CRUTCHER LLP 1050 Connecticut Avenue, N.W. Washington, D.C. 20036 Telephone: (202) 955-8500 Facsimile: (202) 530-9662 [email protected] Counsel for Amici Curiae Cisco Systems, Inc., Compuware Corporation, Facebook, Inc., Microsoft Corporation, Newegg Inc., Research In Motion Corporation, SAP America, Inc., SAS Institute Inc., Symantec Corporation, Verizon Communications Inc., and Yahoo! Inc. /s/ Vincent Lam Vincent Lam HTC Corporation 13920 SE Eastgate Way, Suite 200 Bellevue, WA 98005 Telephone: (425) 679-5318 Counsel for Amicus Curiae HTC Corporation /s/ Matthew Sarboraria Matthew Sarboraria Oracle Legal 500 Oracle Parkway MS 5op764 Redwood Shores, CA 94065 Telephone: (650) 506-1372 Facsimile: (650) 506-1774 Counsel for Amicus Curiae Oracle Corp.



by Suzanne T. Michel, counsel for Google Inc., to sign on the foregoing brief on

her behalf.





by Matthew Sarboraria, counsel for Oracle Corporation, to sign on the foregoing

brief on his behalf.





by Elizabeth Launer, counsel for Logitech Inc., to sign on the foregoing brief on

her behalf.





by Vincent Lam, counsel for HTC Corporation, to sign on the foregoing brief on

his behalf.



CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME LIMITATION, TYPEFACE REQUIREMENTS,

AND TYPE STYLE REQUIREMENTS

I hereby certify that:

1. The foregoing Brief For Amici Curiae In Support Of Defendants-

Petitioners complies with the type-volume limitation of Federal Rule of Appellate

Procedure 29(d) because it is 15 pages in length exclusive of the parts of the brief

identified by Rule 32(a)(7).

2. The foregoing Brief For Amici Curiae In Support Of Defendants-

Petitioners complies with the typeface requirements of Federal Rule of Appellate

Procedure 32(a)(5) and the type style requirements of Federal Rule of Appellate

Procedure 32(a)(6) because it has been prepared in a proportionally spaced 14-

Point type using Microsoft Word 2010.

October 23, 2012 By: /s/ Matthew D. McGill

Matthew D. McGill

CERTIFICATE OF SERVICE

I hereby certify that the foregoing Brief For Amici Curiae In Support Of De-

fendants-Petitioners was electronically filed with the Clerk of the Court using

CM/ECF and was served via the CM/ECF system on the following counsel:

Counsel for Petitioners EMC Corporation, Decho Corporation, and Iomega Corporation: Christopher R. Ottenweller Indra Neel Chatterjee Bas De Blank ORRICK, HERRINGTON &

SUTCLIFFE LLP 1000 Marsh Road Menlo Park, CA 94025 Telephone: (650) 614-7400 Fax: (650) 614-7401 [email protected] [email protected] [email protected]

Alyssa Margaret Caridis ORRICK, HERRINGTON &

SUTCLIFFE LLP 777 South Figueroa Street, Suite 3200 Los Angeles, CA 90017 Telephone: (213) 629-2020 Fax: (213) 612-2499 [email protected] Mark S. Davies Katherine M. Kopp ORRICK, HERRINGTON &

SUTCLIFFE LLP Columbia Center 1152 15th Street N.W. Washington, D.C. 20005 Telephone: (202) 339-8631 Fax: (202) 339-8500 [email protected] [email protected]

William R. Clark Paul T. Dacier Krishnendu Gupta EMC CORPORATION 176 South Street Hopkington, MA 01748 Telephone: (508) 293-7225 Fax: (508) 293-7189 [email protected] [email protected] [email protected]

Counsel for Petitioner Carbonite, Inc.: Matthew B. Lowrie FOLEY & LARDNER LLP 111 Huntington Avenue, Suite 2600 Boston, MA 02199 Telephone: (617) 342-4000 Fax: (617) 342-4001 [email protected]

Kevin M. Littman FOLEY & LARDNER LLP 111 Huntington Avenue, Suite 2600 Boston, MA 02199 Telephone: (617) 342-4000 Fax: (617) 342-4001 [email protected]

Counsel for Respondent Oasis Research, LLC: John M. Desmarais DESMARAIS LLP 230 Park Avenue New York, N.Y. 10169 Telephone: (212) 351-3400 Fax: (212) 351-3401 [email protected]

Additionally, two copies of the foregoing Brief For Amici Curiae In Support

Of Defendants-Petitioners were served on the following via commercial carrier for next-day delivery:

Trial Court Judge: The Honorable Amos Mazzant United States District Court for the Eastern District of Texas 221 West Ferguson Number 100 Tyler, TX 75702

October 23, 2012


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