N OTE : This order is nonprecedential

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# United States **Court of Appeals**  **for the Federal Circuit**

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In re : HEWLETT PACKARD ENTERPRISE CO., Petitioner

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2022

- 154

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On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas in No. 6:21

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cv

- 00596

- ADA, Judge Alan D. Albright.

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ON PETITION

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Before H UGHES , M AYER , and S TOLL , Circuit Judges

. S TOLL , 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 caseto the United States District Court for the District of Massachusetts. Intellectual Ventures I LLC (“IV”) oppose s

. 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 HP E , t he accused technology was “ mostly ” designed and developed by SimpliVity Corporation before HPE acquired Case: 22-154 Document: 15 Page: 1 Filed: 08/09/2022IN RE : HEWLETT PACKARD ENTERPRISE CO

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it in 2017 and the d evelopment of the accused product s occurred primarily in Ma ssachusetts. 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 den ied that motion. After de termining that this suit could have been brought in the District of Massachusetts, the court analyzed whether HPEhad shown that the transferee venue was clearly more convenient than the Western District of Texas, follow ing the multi

- factor approach adopte d 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 )

, H PE’s 30(b)(6) witness testifiedabout 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 t hat 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, theFifth Circuit, our task on mandamus is limited to determining whether the denial of transfer was such a “‘clear’ Case: 22-154 Document: 15 Page: 2 Filed: 08/09/2022IN RE : HEWLETT PACKARD ENTERPRISE CO

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abuse of discretion” that refusing transfer would produce a “patently erroneous result

, ” i d

. (citation omitted) ; see also In re App le Inc ., 979 F.3d 1332, 133 6 (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 31 2 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 fav or of transfer

. Given the record in this case, the court here reasonably found that HPE did not show that more document ary evidence exists in Massachusetts than Western Texas

. HPE failed to identify any specific document s in Massachusetts. And while HPE submitted a declaration from an employee who worked onthe development of the accused products stating to his personal knowledge that technical documents were located

“ primarily with the persons that design, develop, and t est 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 Ind ia

. 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 Massachu setts. See In re Horseshoe Ent

. , 337 F.3d 429, 43 4 (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 reasonabl y found that the willing witnesses factor only slightly weighs in favor of transfer given that HPE had only identified two potentially relevant witnesses Case: 22-154 Document: 15 Page: 3 Filed: 08/09/2022IN RE : HEWLETT PACKARD ENTERPRISE CO

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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 pot ential witness

. HPE challenges whether the se individuals identified in Texas have relevant and material information. M indful of the demanding standard of rev iew

, 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 , th e court reasonably found that th e 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 th at 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 slight ly favors transfer

, and the remaining factors (other than court congestion) are neutra l. HPE has not convinced us to extend Gene n tech 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, Case: 22-154 Document: 15 Page: 4 Filed: 08/09/2022IN RE : HEWLETT PACKARD ENTERPRISE CO

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I T I S O RDERED T HAT : The petition is denied.

August 9, 2022 Date F OR THE C OURT

/s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court Case: 22-154 Document: 15 Page: 5 Filed: 08/09/2022