United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE VERIZON BUSINESS NETWORK SERVICES 

INC. VERIZON ENTERPRISE DELIVERY LLC, 

VERIZON SERVICES CORP., AT&T CORP., QWEST 

COMMUNICATIONS CORPORATION, AND QWEST 

CORPORATION, 

Petitioners. 

__________________________ 

Miscellaneous Docket No. 956 

__________________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

case no. 08-CV-0215, Judge T. John Ward. 

__________________________ 

ON PETITION FOR WRIT OF MANDAMUS 

__________________________ 

Before LOURIE, GAJARSA, and LINN, Circuit Judges. 

LINN, Circuit Judge. 

__________________________ 

BRYANT C. BOREN, JR., Baker Botts LLP, of Palo Alto, 

California, for petitioner AT&T Corporation. With him on 

the petition were CHRISTOPHER W. KENNERLY, KEVIN E.

CADWELL and JOSHUA J. PARKER. 
IN RE VERIZON BUSINESS 2 

BRIAN D. ROCHE, Reed Smith LLP, of Chicago, Illinois, 

for petitioners Qwest Communications Corporation, et al. 

With him on the petition was DOYLE B. JOHNSON. 

GEOFFREY P. EATON, Winston & Strawn LLP, of 

Washington, DC, for petitioners Verizon Business 

Network Services Inc., et al. With him on the petition 

were CHARLES B. MOLSTER, III, PETER C. MCCABE, III and 

KURT A. MATHAS. Of counsel were JOHN THORNE, Verizon 

Corporation Resources Group LLC, of Arlington, Virginia; 

and LEONARD C. SUCHYTA and CAREN K. KHOO, of Basking 

Ridge, New Jersey. 

DOUGLAS A. CAWLEY, McKool Smith, P.C., of Dallas, 

Texas, for respondent Red River Fiber Optic Corporation. 

With him on the response were DAVID SOCHIA, 

CHRISTOPHER T. BOVENKAMP and STEVEN CALLAHAN. 

O R D E R 

Section 1404(a) of Title 28 of the United States Code 

authorizes a change of venue from one district court to 

another “[f]or the convenience of parties and witnesses, in 

the interest of justice.” The principal question in this 

petition for a writ of mandamus is whether the trial court 

could plausibly justify denying transfer to a far more 

convenient venue based solely on its previous handling of 

a lawsuit involving the same patent that settled more 

than five years before this suit was filed. Because we 

cannot discern a supportable basis for that conclusion, we 

grant the petition. 

I. 

This petition arises out of a patent infringement suit 

against the six petitioner-defendants, Verizon Services 

Corp., Verizon Business Network Services Inc., Verizon 
3 IN RE VERIZON BUSINESS

Enterprise Delivery LLC, AT&T Corp., Qwest 

Corporation, and Qwest Communications Corporation, 

brought by the respondent-plaintiff, Red River Fiber 

Optic Corporation. Red River’s complaint asserts that the 

defendants’ end-to-end fiber optic transmission systems 

infringe U.S. Patent No. 5,555,478, entitled “Fiber optic 

information transmission system.” 

Red River brought this suit in the Eastern District of 

Texas. Although Red River is operated from Oklahoma, it 

incorporated under the laws of Texas and asserts that its 

principal place of business is now in Marshall, Texas. 

According to Red River, it is “a Texas corporation that 

exists to improve the state of technology by licensing [its 

patent].” Respondent’s Opp’n at 8. 

The petitioners moved to transfer this case to the 

Northern District of Texas, Dallas Division, 

approximately 150 miles away. The motion was initially 

denied by a Magistrate Judge. In his decision, the 

Magistrate agreed with the petitioners that the Northern 

District of Texas, Dallas Division would likely be more 

convenient for the parties and the witnesses. He further 

noted that a number of party witnesses resided within 

100 miles of Dallas and no witness resided within 100 

miles of Marshall, Texas. However, the Magistrate held 

that judicial economy favored maintaining this suit in 

Marshall, Texas. The Magistrate noted that the court 

had previously handled a lawsuit involving the same 

patent and had construed 25 of the patent’s terms. That 

previous suit settled in 2003. 

The petitioners sought review of that order with the 

district court, contending that the length of time between 

the two cases and the more recent reexamination 

warranted a result contrary to the Magistrate’s decision. 

The district court agreed with the Magistrate. The court 

noted that despite the reexamination, “there would be an 

overlap of issues for claim construction allowing the Court 
IN RE VERIZON BUSINESS 4 

to take advantage of the built-in efficiencies that result 

from having the same Court hearing related cases.” Red 

River Fiber Optic Corp. v. Verizon Servs. Corp., 08-CV0215, slip op. at 2 (E.D. Tex. Aug. 3, 2010). The court 

further noted that transferring the case now would not 

only waste those built-in efficiencies but in addition “the 

past two years of litigation before this Court will have to 

be duplicated.” Id. 

II. 

A motion to transfer under § 1404(a) calls upon the 

trial court to weigh a number of case-specific factors based 

on the individualized facts on record. See Stewart Org., 

Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988). Although a 

trial court has great discretion in these matters, 

mandamus may issue when the trial court’s application of 

those factors creates a patently erroneous result. In re 

Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) 

(en banc); see also In re TS Tech USA Corp., 551 F.3d 

1315, 1318-19 (Fed. Cir. 2008). 

In Volkswagen, the Fifth Circuit sitting en banc 

granted mandamus and determined that a significant 

number of witnesses and parties were located within 100 

miles of the Dallas Division and could be deposed and 

testify without significant travel or expense, while no 

witness or party was located within the Marshall 

Division. 545 F.3d at 316-17. The Fifth Circuit held that 

the trial court’s denial of transfer was patently erroneous, 

in part because every witness would be required to 

expend significant time and cost to attend trial. 

This case is in many respects analogous to 

Volkswagen. As in that case, there is a stark contrast in 

convenience and fairness with regard to the identified 

witnesses. It appears that many witnesses reside within 

100 miles of the Dallas Division and would also be subject 

to the Northern District’s subpoena powers. Meanwhile, 
5 IN RE VERIZON BUSINESS

it is undisputed that no witness resides within 100 miles 

of the Marshall Division. Thus, maintaining trial in the 

Marshall Division would require witnesses to undergo the 

cost, time, and expense of travel, which would be 

significantly reduced if this case was transferred to the 

Dallas Division. 

Red River attempts to distinguish this case from 

Volkswagen on the grounds that it has a presence in the 

Eastern District of Texas and has maintained sources of 

proof in Marshall, Texas from its prior litigation in the 

Eastern District of Texas that settled in 2003. Red River 

itself, however, acknowledges that these documents are 

artifacts of its prior litigation and that it has no 

employees in its offices in the Eastern District of Texas. 

Red River alternatively suggests that perhaps Oklahoma, 

where its sole owner resides, should be considered its 

actual place of business. See Respondent’s Opp’n at pg. 

24, n.20 (“If this Court concludes that Red River’s 

Marshall-based location and documents are not entitled to 

any weight, it should also conclude that Red River, for 

transfer purposes, is located in Oklahoma”). In any event, 

it is clear that trial in Dallas would be far more 

convenient. 

Red River contends that despite the contrast in 

convenience between the venues, denial of transfer was 

nevertheless plausible. However, Red River’s basis for 

that conclusion is the trial court’s previous handling of a 

lawsuit involving the same patent that settled more than 

five years before this suit was filed. The Eastern District 

of Texas would have to relearn a considerable amount 

based on the lapse in time between the two suits and 

would likely have to familiarize itself with reexamination 

materials that were not part of the record during the 

previous suit. 

To interpret § 1404(a) to hold that any prior suit 

involving the same patent can override a compelling 
IN RE VERIZON BUSINESS 6 

showing of transfer would be inconsistent with the 

policies underlying § 1404(a). We recently advised 

against such ironclad rules in In re Vistaprint Ltd., 628 

F.3d 1342, 1347, n.3 (Fed. Cir. 2010) and we heed that 

advice on these facts. In Vistaprint, we stated: 

Our holding today does not mean that, once 

a patent is litigated in a particular venue the 

patent owner will necessarily have a free 

pass to maintain all future litigation 

involving that patent in that venue. 

However, where, as here, the trial court 

performed a detailed analysis explaining 

that it is very familiar with the only asserted 

patent and the related technology, and 

where there is a co-pending litigation before 

the trial court involving the same patent-insuit, and pertaining to the same underlying 

technology and accusing similar services, we 

cannot say the trial court clearly abused its 

discretion in denying transfer. 

Id. 

In Vistaprint, we denied mandamus to overturn a 

denial of transfer and determined that the district court 

properly considered both its previous experience 

construing claims of the patent at issue and co-pending 

litigation before the district court involving the same 

patent and underlying technology. In this case, there is 

no assertion that there is an additional pending lawsuit in 

the Eastern District involving the patent and technology. 

Absent that, we deem the Eastern District's previous 

claim construction in a case that settled more than five 

years before the filing of this lawsuit to be too tenuous a 

reason to support denial of transfer. 

Accordingly, 

IT IS ORDERED THAT: 
7 IN RE VERIZON BUSINESS

The petition for a writ of mandamus is granted. 

FOR THE COURT

March 23, 2011 /s/ Jan Horbaly 

 Date Jan Horbaly 

 Clerk