NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: HEWLETT PACKARD ENTERPRISE CO.,

Petitioner

______________________

2022-154

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:21-

cv-00596-ADA, Judge Alan D. Albright.

______________________

ON PETITION

______________________

Before HUGHES, MAYER, and STOLL, Circuit Judges.

STOLL, Circuit Judge.

O R D E R

Hewlett Packard Enterprise Co. (“HPE”) petitions for a 

writ of mandamus directing the United States District 

Court for the Western District of Texas to transfer this case 

to the United States District Court for the District of Massachusetts. Intellectual Ventures I LLC (“IV”) opposes. 

IV filed this suit in the Waco Division of the Western 

District of Texas, alleging that HPE’s SimpliVity data storage solution infringes a patent assigned to IV. According 

to HPE, the accused technology was “mostly” designed and 

developed by SimpliVity Corporation before HPE acquired

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2 IN RE: HEWLETT PACKARD ENTERPRISE CO.

it in 2017 and the development of the accused products occurred primarily in Massachusetts. Appx83. HPE moved 

SimpliVity development work to India in 2020. Appx84. 

HPE sought to transfer the case pursuant to 28 U.S.C. 

§ 1404(a) to the District of Massachusetts. On April 29, 

2022, the district court denied that motion. After determining that this suit could have been brought in the District of Massachusetts, the court analyzed whether HPE 

had shown that the transferee venue was clearly more convenient than the Western District of Texas, following the 

multi-factor approach adopted by the United States Court 

of Appeals for the Fifth Circuit in In re Volkswagen of Am., 

Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc). The court 

found that one factor (court congestion) weighed against 

transfer; one factor (willing witnesses) weighed slightly in 

favor of transfer; one factor (local interest) favored transfer; three factors (sources of proof, compulsory process, and 

practical problems) were neutral, and the parties agreed 

that the remaining two factors were neutral. Among other 

things, the district court determined that: (1) the Texas forum is likely to be faster in adjudicating the matter; (2) the 

cost of attending proceedings in Texas was only slightly 

more costly than in Massachusetts; (3) HPE financial documents are in Texas; and (4) there was insufficient evidence that relevant documents existed in Massachusetts,

given HPE had moved its relevant operations to India in 

2020 (and thus technical documents presumably would be 

easiest to access in India), HPE’s 30(b)(6) witness testified 

about the location of electronic documents with some certainty and none were in Massachusetts, and two developers of the accused product who reside in Massachusetts but 

no longer work on the accused product did not testify that 

they had any documents. 

Applying the law of the regional circuit, In re TS Tech 

USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008), here, the 

Fifth Circuit, our task on mandamus is limited to determining whether the denial of transfer was such a “‘clear’ 

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IN RE: HEWLETT PACKARD ENTERPRISE CO. 3

abuse of discretion” that refusing transfer would produce a 

“patently erroneous result,” id. (citation omitted); see also 

In re Apple Inc., 979 F.3d 1332, 1336 (Fed. Cir. 2020); In re 

Nitro Fluids L.L.C., 978 F.3d 1308, 1310–11 (Fed. Cir. 

2020). Under Fifth Circuit law, we must deny mandamus 

unless it is clear “that the facts and circumstances are 

without any basis for a judgment of discretion.” 

Volkswagen, 545 F.3d at 312 n.7 (citation omitted). Here, 

HPE has not shown the required clear abuse of discretion 

resulting in a patently erroneous result.

HPE has not shown a clear right to having the sources 

of proof factor weighed in favor of transfer. Given the record in this case, the court here reasonably found that HPE 

did not show that more documentary evidence exists in 

Massachusetts than Western Texas. HPE failed to identify 

any specific documents in Massachusetts. And while HPE 

submitted a declaration from an employee who worked on 

the development of the accused products stating to his personal knowledge that technical documents were located 

“primarily with the persons that design, develop, and test 

it,” Appx99, it was reasonable here for the district court to 

question whether any of those employees in Massachusetts, who had not worked on the products in years, would 

still have documents in their possession, given that development had moved to India. HPE notably did not submit 

declarations from any employee confirming possession of 

such technical documents. It was likewise reasonable for 

the district court to give little weight to the existence of IV 

documents located with its counsel in Massachusetts. See

In re Horseshoe Ent., 337 F.3d 429, 434 (5th Cir. 2003)

(“The factor of ‘location of counsel’ is irrelevant and improper for consideration” in a transfer analysis).

Nor has HPE provided compelling reasons to second 

guess the court’s determinations regarding the witness factors. The court reasonably found that the willing witnesses 

factor only slightly weighs in favor of transfer given that 

HPE had only identified two potentially relevant witnesses 

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in Massachusetts with any particularity and IV identified 

one potentially relevant witness in the Western District of 

Texas. The district court also found that it had compulsory 

process power over at least one non-party potential witness. HPE challenges whether these individuals identified 

in Texas have relevant and material information. Mindful 

of the demanding standard of review, however, HPE has 

not shown that we should disturb those findings in this 

case. Accordingly, we cannot say that the trial court’s 

weighing of the witness factors was unreasonable and warrants the extraordinary relief of mandamus.

As such, the court reasonably found that the circumstances of this case are materially different from In re 

Genentech, Inc., 566 F.3d 1338, 1347 (Fed. Cir. 2009), in 

which we granted mandamus to direct transfer. Genentech

held that “when . . . several relevant factors weigh in favor 

of transfer and others are neutral, then the speed of the 

transferee district court should not alone outweigh all of 

those other factors.” Id. But in Genentech, we concluded 

that there was “no rational argument” for keeping that case 

in the Texas forum based on an assessment of the other 

factors. Id. at 1348. This case is different because the trial 

court reasonably found that while the local interest factor 

favors transfer, the willing witness factor only slightly favors transfer, and the remaining factors (other than court 

congestion) are neutral. HPE has not convinced us to extend Genentech to reach this case. Nor can we say that the 

trial court’s balancing of the factors was so unreasonable 

as to warrant the extraordinary relief of mandamus. 

Accordingly,

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IN RE: HEWLETT PACKARD ENTERPRISE CO. 5

 IT IS ORDERED THAT: 

The petition is denied. 

August 9, 2022

 Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

 

 

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