## Facts

- Sanofi-Aventis Deutschland GmbH, a German company, sued Genentech, Inc. and Biogen Idec Inc. for patent infringement in the Eastern District of Texas.
- Genentech was headquartered in the Northern District of California, and Biogen had facilities in San Diego, California.
- On the same day, Genentech and Biogen filed a related declaratory-judgment action in the Northern District of California seeking declarations of invalidity and noninfringement.
- Genentech and Biogen moved to transfer the Texas infringement action to the Northern District of California under 28 U.S.C. § 1404(a), identifying multiple potential material witnesses in Northern California and asserting that relevant documents for the accused products were located in Northern California or San Diego.
- Sanofi opposed transfer, arguing Texas was centrally located, certain non-party witnesses were outside California (including inventors in Europe and attorneys on the East Coast), and keeping the case in Texas could avoid inefficiency due to jurisdictional disputes in the California declaratory action.
- The district court denied transfer, reasoning that defendants had not identified “key witnesses” in Northern California and giving weight to Texas’s asserted central location.
- Genentech and Biogen sought mandamus in the Federal Circuit to compel transfer.

## Issues

1. Whether the district court clearly abused its discretion in denying transfer under 28 U.S.C. § 1404(a) when the chosen forum had no meaningful connection to the witnesses or evidence.
2. How the § 1404(a) private and public interest factors should be weighed where the transferee forum contains most material witnesses and evidence and the original forum has little connection to the dispute.
3. Whether mandamus relief is appropriate to correct a patently erroneous denial of transfer.

## Decision

- The Federal Circuit granted the petition for a writ of mandamus.
- The court directed the district court to vacate its transfer denial and transfer the case to the Northern District of California under § 1404(a).
- The court held the district court clearly abused its discretion because the convenience factors strongly favored Northern California and the Texas forum lacked a relevant connection to the dispute.

## Legal Principles

- A motion to transfer under 28 U.S.C. § 1404(a) requires an individualized assessment of convenience and fairness using the governing circuit’s private and public interest factors.
- In patent infringement cases, relevant evidence commonly comes from the accused infringer; the location of the defendant’s documents and witnesses generally weighs in favor of transfer to where they are maintained.
- A court should not require a heightened showing that identified witnesses are “key” or uniquely important; identification of likely material witnesses is sufficient for the convenience analysis.
- Reliance on a forum’s asserted “central location” carries little weight when no identified witnesses reside in the chosen district.
- Deference to the plaintiff’s chosen forum is reduced when the forum has minimal connection to the operative facts.
- Considerations of compulsory process and cost of attendance for witnesses, including application of the Fifth Circuit’s 100-mile rule, can strongly favor transfer when most witnesses are substantially closer to the transferee forum.
- Speculative judicial-economy concerns (such as potential jurisdictional disputes in a parallel case) do not outweigh concrete convenience factors.
- Mandamus may issue to correct a clearly erroneous denial of transfer where the petitioner shows a clear and indisputable right to relief, no adequate alternative remedy, and appropriateness under the circumstances.

## Conclusion

The Federal Circuit ordered transfer to the Northern District of California via mandamus because the Eastern District of Texas had no meaningful ties to the dispute, while Northern California concentrated the relevant witnesses and evidence, making the denial of transfer a clear abuse of discretion under § 1404(a).


In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009)