NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

In re: HP INC.,

Petitioner

______________________ 

2018-149

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

No. 6:17-cv-00462-RWS, Judge Robert Schroeder III.

______________________ 

ON PETITION

______________________ 

Before PROST, Chief Judge, NEWMAN and LOURIE, Circuit 

Judges. 

LOURIE, Circuit Judge. 

O R D E R

HP Inc. petitions for a writ of mandamus seeking an 

order directing the United States District Court for the 

Eastern District of Texas to vacate its order denying 

transfer and to transfer this case to the United States 

District Court for the Northern District of California. 

Cypress Lake Software, Inc. opposes. HP replies. Because the district court committed a clear abuse of discretion in denying transfer, we grant the petition.
2 IN RE: HP INC. 

BACKGROUND

This petition arises out of a complaint filed at the 

Eastern District of Texas by Cypress Lake against HP. 

Cypress Lake has its principal place of business in Woodville, Texas. HP is a Delaware corporation with headquarters in the Northern District of California. The 

complaint alleges that, by employing third-party Google 

LLC’s Chrome operating system, HP’s Chromebook laptops infringe seven of Cypress Lake’s patents. 

HP moved to transfer the case to the Northern District of California for the convenience of the parties pursuant to 28 U.S.C. § 1404(a). HP identified nine potential 

employee witnesses who reside in the Northern District of

California and noted that it has no employee in the Eastern District of Texas with primary decisionmaking responsibility over its Chromebooks, its relationship with 

Google, or the sales and marketing of the accused products. HP also identified potential witnesses from nonparty Google who reside in Northern California, while 

noting that Google “does not have any employees with 

responsibility for the Chrome operating system in [the 

Eastern District of Texas].” HP argued that documents 

and evidence relevant to the case would most likely come 

from either Google or HP’s headquarters in the Northern 

District of California. HP further noted that the inventor 

of the patents resides outside of Texas, in North Carolina. 

Cypress Lake opposed transfer, arguing that the 

Eastern District of Texas was appropriate because it is 

Cypress Lake’s home forum, the court had become familiar with the patents-in-suit and relevant technology based 

on previously-filed lawsuits, and it is where HP maintains

an office. Cypress Lake noted that its relevant documents 

are stored in the Eastern District of Texas and that its 

manager, who could be a potential witness in the case, 

resides in the Eastern District of Texas. Cypress Lake 

also argued that HP’s and Google’s evidence was “digital 
IN RE: HP INC. 3

and easily transportable.” Cypress Lake further argued 

that HP had failed to specify what testimony its potential 

witnesses might provide and thus those witnesses should 

not be given any real consideration in the district court’s 

analysis. 

The district court analyzed the motion by considering 

the public and private interest factors first enunciated in 

Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947). The 

district court found that the local interest factor favored 

transfer of the case to the Northern District of California 

“where HP is headquartered and where over 3,000 employees are located, including employees responsible for 

the sales, project development, project management, and 

financial accounting relating to the HP Chromebooks.” 

The district court also found that the sources of proof 

factor favored transfer, albeit only slightly. The court 

found that the remaining factors, including the availability of compulsory process and the cost of attendance for 

willing witnesses factors, did not weigh in favor of either 

venue. The district court even rejected Cypress Lake’s 

argument that judicial economy considerations warranted 

keeping the case, noting that it had yet to address any 

substantive issues regarding these patents. Nonetheless, 

the court denied HP’s motion to transfer, finding that HP 

had not shown that the Northern District of California 

would be clearly more convenient to try the case.

DISCUSSION

To obtain mandamus relief, HP must demonstrate 

that (1) it has no other adequate means to obtain the 

relief it desires, (2) the district court’s decision amounted 

to a judicial usurpation of power or a clear abuse of discretion, and (3) we are satisfied that granting the writ is 

appropriate. See Cheney v. U.S. Dist. Court for the Dist. of 

Columbia, 542 U.S. 367, 380–81 (2004); In re TS Tech 

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

that mandamus may be granted to direct transfer when 
4 IN RE: HP INC. 

the denial was a clear abuse of discretion such that refusing transfer produced a patently erroneous result). 

We apply regional circuit law to review orders denying motions to transfer under § 1404(a). See TS Tech, 551 

F.3d at 1319. In the Fifth Circuit, the legal standard for 

determining whether to grant a change of venue motion is 

well settled. The transfer statute authorizes a district 

court to transfer a civil action to another district if the 

transfer would serve “the convenience of parties and 

witnesses” and would be “in the interest of justice.” 

§ 1404(a). Under Fifth Circuit law, “[a] motion to transfer 

venue pursuant to § 1404(a) should be granted if ‘the 

movant demonstrates that the transferee venue is clearly 

more convenient.’” In re Radmax, Ltd., 720 F.3d 285, 288 

(5th Cir. 2013) (quoting In re Volkswagen of Am., Inc., 545 

F.3d 304, 315 (5th Cir. 2008) (en banc)). 

HP argues that the district court clearly abused its 

discretion in denying transfer. According to HP, the 

district court failed to follow our decision in In re Toyota 

Motor Corp., 747 F.3d 1338 (Fed. Cir. 2014), in refusing to 

transfer despite weighing several factors in favor of 

transfer and no factor in favor of keeping the case. HP

argues that the district court also clearly erred in finding 

that the compulsory process and cost of attendance for 

willing witness factors did not favor transfer. Cypress

Lake responds that the district court’s decision to deny 

transfer was correct because transfer would simply shift 

the burden of inconvenience to Cypress Lake and witnesses in or closer to the Eastern District of Texas, the 

district court correctly found that HP had not shown that

its employees were likely to be called to testify in the case, 

and the district court correctly noted that “HP has not 

even communicated with” the identified Google employees 

and “can provide no further information regarding them.” 

We agree with HP that the district court abused its 

discretion in denying its motion to change venue. In 
IN RE: HP INC. 5

Toyota, the district court denied transfer despite finding 

that no factor favored retaining the case in the Eastern 

District of Texas, the sources of proof factor slightly 

favored transfer, and the local interest factor favored 

transfer. Am. Vehicular Scis. LLC v. Toyota Motor Corp., 

No. 6:12-cv-404, 2013 WL 8180623, at *6, *8 (E.D. Tex. 

June 12, 2013). We granted mandamus, explaining that

while the district court’s analysis in that case “may not 

show that the transferee forum is far more convenient,” 

such a showing was not required to compel transfer. 

Toyota, 747 F.3d at 1341. Rather, “[w]ith nothing on the 

transferor-forum side of the ledger, the analysis shows 

that the transferee forum is ‘clearly more convenient.’” 

Id. (citation omitted).

Just as in Toyota, the district court here found that 

the relative ease of access to sources of proof factor and 

the local interest factor favored transferring the case to 

the Northern District of California, while no factor actually favored keeping the case in the Eastern District of 

Texas. Thus, even “[t]aken on its own terms, the district 

court’s analysis presents a clear overall picture: nothing 

favors the transferor forum, whereas several factors favor 

the transferee forum.” Id. Consistent with Toyota, while 

the facts here may not show that the California court is 

far more convenient, it was more than sufficient to establish good cause to transfer the case. 

 For good measure, we also agree with HP that, if 

anything, the district court erred in not weighing more 

factors in favor of transfer. The court acknowledged that

three named Google employees and one of the HP employees who had left the company after the transfer motion 

was filed reside in the Northern District of California and 

were identified as having potentially relevant information, while no party identified a third party witness in 

the Eastern District of Texas. While HP could not at the 

time affirmatively indicate that it would call those witnesses or the nature of the testimony they would give, it
6 IN RE: HP INC. 

was not required to do so. See Volkswagen, 545 F.3d at 

317 n.12. It also appears that HP was not even permitted

at the time to discuss specific issues with the identified 

Google employees because Cypress Lake designated its 

infringement contentions confidential. Thus, the compulsory process factor should have been weighed in favor of

granting transfer rather than neutral.1 

Moreover, contrary to Cypress Lake’s arguments, 

transfer here would not merely shift the burden of inconvenience to its willing witnesses.2 The district court

acknowledged that Cypress Lake identified only one of its 

employees in the Eastern District of Texas as a potential 

witness. On the other hand, HP identified eight employees in the transferee venue that had relevant knowledge 

regarding the accused products, although it was not clear

to the court how many of those witnesses would actually 

1 The district court also noted that HP had not 

identified any Google witness as being unwilling to travel 

to the Eastern District of Texas to testify. However, even 

the Eastern District of Texas’s own cases have held that, 

when there is no indication that a non-party witness is 

willing, the witness is presumed to be unwilling and 

considered under the compulsory process factor. See

AGIS Software Dev. LLC v. Huawei Device USA Inc., No. 

2:17-cv-00513, 2018 WL 2329752, at *6 (E.D. Tex. May 23, 

2018).

2 Cypress Lake also suggests that its choice should 

be given more deference because it filed suit in its home 

forum where its documents are located and that HP failed 

to identify with any specificity the true relevance and 

necessity of its documents in the Northern District of 

California. However, the district court itself appears to 

have rejected this argument by weighing the sources of 

proof factor in favor of transfer to Northern California. 

 
IN RE: HP INC. 7

be called to testify and the importance of their testimony.3 

The court also credited against granting transfer that the 

inventor resides in North Carolina. However, “[t]he 

comparison between the transferor and transferee forums 

is not altered by the presence of other witnesses . . . in 

places outside both forums.” Toyota, 747 F.3d at 1340. 

Having found that the district court’s denial of transfer was clearly incorrect, we now turn to whether to grant 

mandamus and conclude that issuance of the writ is 

appropriate here. We have followed the Fifth Circuit in 

concluding that the no-alternative-means requirement is 

satisfied in the motion-to-transfer context because HP 

could not obtain meaningful review of the issue on appeal 

from a final judgment or through some other means of 

interlocutory review. See TS Tech, 551 F.3d at 1322. 

This case also shares striking similarities to Toyota and 

other cases where we and the Fifth Circuit have granted a 

writ of mandamus to direct transfer. See Radmax, 720 

F.3d at 290 (noting that the Fifth Circuit has “classified 

as an ‘extraordinary error[]’ the ‘fact that not a single 

relevant factor favors the [plaintiffs’] chosen venue.’” 

(quoting Volkswagen, 545 F.3d at 318)). 

Accordingly, 

3 Cypress Lake insists in its response that it is likely to call Justin Biddle, an HP employee who resides in 

the Eastern District of Texas, as a witness in the case. 

HP is equally insistent that Mr. Biddle has no information that would be relevant to this case. We note that, 

even counting Mr. Biddle, there are far more potential 

employee witnesses of HP in the Northern District of 

California and no indication that Mr. Biddle is unwilling 

to travel to the Northern District of California if called 

upon to testify. 

 
8 IN RE: HP INC. 

 IT IS ORDERED THAT: 

The petition is granted. The district court’s order 

denying HP’s motion to transfer is vacated, and the 

district court is directed to grant the transfer motion.

 FOR THE COURT

 /s/ Peter R. Marksteiner

 Peter R. Marksteiner

 Clerk of Court

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