United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE TOYOTA MOTOR CORPORATION, TOYOTA 

MOTOR SALES, U.S.A., INC., TOYOTA MOTOR 

ENGINEERING & MANUFACTURING NORTH 

AMERICA, INC., TOYOTA MOTOR 

MANUFACTURING KENTUCKY, INC., TOYOTA 

MOTOR MANUFACTURING, INDIANA, INC., AND

GULF STATES TOYOTA, INC.,

______________________ 

2014-113

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

Nos. 6:12-cv-404-MHS, 6:12-cv-405-MHS, 6:12-cv-406-

MHS, 6:12-cv-408-MHS, 6:12-cv-409-MHS and 6:12-cv410-MHS, Judge Michael H. Schneider.

______________________ 

ON MOTION

______________________ 

THOMAS R. MAKIN, Keynon & Keynon LLP, of New 

York, New York, for petitioner. With him on the petition 

were GEORGE E. BADENOCH, JOHN FLOCK, and A. ANTONY 

PFEFFER. 

ALISA A. LIPSKI, Ahmad, Zavitsanos, Anaipakos, Alavi 

& Mensing P.C. of Houston, Texas, for respondent. With 

her on the response was JAMIE ALAN AYCOCK. 

______________________ 
2 IN RE TOYOTA MOTOR CORPORATION

Before PROST, O’MALLEY, and TARANTO, Circuit Judges. 

TARANTO, Circuit Judge.

O R D E R

In this patent-infringement case, the United States 

District Court for the Eastern District of Texas entered an 

order denying a motion to sever the claims against the 

Gulf States defendant from the claims against all the 

remaining defendants (we refer to the latter collectively 

as “Toyota”), to transfer the resulting separate action 

against Toyota to the United States District Court for the 

Eastern District of Michigan, and to stay the retained 

claims against Gulf States. Toyota and Gulf States seek a 

writ of mandamus directing the district court to grant the 

motion. Plaintiff American Vehicular Sciences LLC

(AVS), which owns the patents at issue, opposes. 

A district court may “transfer any civil action to any 

other district or division where it might have been 

brought or to any district or division to which all parties 

have consented.” 28 U.S.C. § 1404(a). Applying Fifth 

Circuit law in cases from district courts in that circuit, 

this court has granted writs of mandamus to correct 

denials of transfer that were clear abuses of discretion

under governing legal standards. See In re Microsoft 

Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Nintendo, 

Ltd., 589 F.3d 1194 (Fed. Cir. 2009); In re Genentech Inc., 

566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 

551 F.3d 1315 (Fed. Cir. 2008); accord In re Volkswagen of 

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

AVS brought this suit in the Eastern District of Texas

in 2012, five months after AVS was incorporated in the 

Western District of Texas. AVS is a subsidiary of patentlicensing and -enforcing company Acacia Research Inc. 

and shares an office in the Eastern District of Texas with 

other subsidiaries of Acacia. At least some of the patents 

at issue are in the same family as patents that were the 
IN RE TOYOTA MOTOR CORPORATION 3

subject of cases litigated in the Eastern District of Michigan from the early 2000s to 2011. See, e.g., Auto. Techs. 

Int’l, Inc. v. Delphi Corp., 776 F. Supp. 2d 469 (E.D. Mich. 

2011); Auto. Techs. Int’l, Inc. v. Siemens VDO Auto. Corp., 

669 F. Supp. 2d 836 (E.D. Mich. 2009).

A few months after this suit began, Toyota and Gulf 

States filed a motion making three related requests. 

Invoking Fed. R. Civ. P. 21, they moved to sever the 

claims against Gulf States. Invoking 28 U.S.C. § 1404(a), 

they moved to transfer the claims against Toyota to the 

Eastern District of Michigan. After transfer of the claims 

against Toyota, they argued, the remaining claims 

against Gulf States should be stayed pending resolution of 

the transferred case in Michigan. The transfer and stay 

requests are related because, they said, Gulf States could 

not be sued in the Eastern District of Michigan. Gulf 

States is located in Houston, Texas (i.e., the Southern 

District of Texas), and is an independent distributor of 

Toyota vehicles in Arkansas, Louisiana, Mississippi,

Oklahoma, and Texas. 

The district court, adopting the ruling of the magistrate judge, did not rule on the requests to sever and stay 

separately from the request to transfer. Instead, it set 

Gulf States to one side to consider whether the standards 

for transferring the claims against Toyota are met. The 

court held that they are not, concluding that “the convenience factors do not indicate that transfer to the Eastern 

District of Michigan would be clearly more convenient.” 

Based on that transfer denial, the court denied the severance-and-stay motion, stating that “there is little, if any, 

reason to sever and stay the claims against Gulf States.” 

In reaching its conclusion about transfer, the court 

found no factor favoring retention of the claims against 

Toyota in the Eastern District of Texas. In particular, it 

did not count the recent opening of an office by AVS as 

weighing in favor of the transferor forum. Cf. In re Mi-
4 IN RE TOYOTA MOTOR CORPORATION

crosoft, 630 F.3d at 1364-65. On the other hand, the 

district court found that several factors favor transfer to 

the Eastern District of Michigan. In particular, the court

determined that the interest in ease of access to sources of 

proof weighs in favor of transfer. It also determined that

transfer is supported by the public interest factor that 

looks at local interests in the litigation. Those determinations are amply supported. 

The district court found that two factors—the availability of compulsory process to secure attendance of witnesses and the cost of attendance for willing witnesses—

are neutral regarding transfer. That determination 

appears to be incorrect. No non-party witnesses have 

been identified as being within the Eastern District of 

Texas.1 On the other hand, it appears undisputed that a

number of witnesses in the Eastern District of Michigan

have knowledge potentially relevant to infringement and 

validity issues, even if it is not possible at present to 

specify further just how material their testimony might be 

to the yet-undeveloped issues in the case. The comparison 

between the transferor and transferee forums is not 

altered by the presence of other witnesses and documents 

in places outside both forums. See In re Nintendo, 589 

F.3d at 1199-200; In re Genentech, 566 F.3d at 1346. This

comparison appears not to be neutral, but to favor transfer. 

1 AVS asserts in its response to the mandamus petition that “witnesses for AVS are located in the EDTX.” 

But the only cited evidence is a document stating no more 

than that AVS is “located in Texas” and “any of its witnesses would have to travel to Michigan.” That statement 

does not establish that there are witnesses in the Eastern 

District of Texas, and the district court did not rely on 

AVS’s statement. 

 
IN RE TOYOTA MOTOR CORPORATION 5

We need not draw any definitive conclusion, however,

about the district court’s determination in that respect. 

Nor need we disagree with, or further analyze, the district 

court’s treatment of certain other related litigation as 

neutral regarding transfer here. The court noted that the 

Eastern District of Michigan had been home to several 

cases involving patents in the same family, breeding 

decisions and familiarity of some relevance to the present 

case. The district court in this case also noted that the 

Eastern District of Texas is currently home to several 

other cases involving the patents at issue here, though 

AVS initiated those cases more or less simultaneously 

with the present case.2 

Taken 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. The analysis may not show that the transferee 

forum is far more convenient. But that is not what is 

required. With nothing on the transferor-forum side of 

the ledger, the analysis shows that the transferee forum 

is “clearly more convenient.” In re Volkswagen, 545 F.3d 

at 315 (emphasis added); In re TS Tech., 551 F.3d at 1320

(“Fifth Circuit precedent clearly forbids treating the 

plaintiff’s choice of venue as a distinct factor in the 

§ 1404(a) analysis”). In these circumstances, the district 

court’s no-transfer conclusion was a clear abuse of discretion. 

The district court declined to sever (or stay) the 

claims against Gulf States based entirely on its determination that transfer would not be appropriate in any 

event. Because we reverse that premise, the district court 

must newly address the severance-and-stay motion on 

2 Petitioners state, without contradiction, that one 

of those cases has settled and transfer motions are pending in others.

 
6 IN RE TOYOTA MOTOR CORPORATION

remand. It must do so on the premise that, putting Gulf 

States aside, Toyota has a clear right to transfer. The 

district court cited a district court decision, which in turn 

cites many other district court decisions, addressing 

requests for severance coupled to transfer requests. See 

Shifferaw v. Emson USA, No. 2:09-CV-54, 2010 WL 

1064380 (E.D. Tex. Mar. 18, 2010). If the district court 

severs the claims against Gulf States, the remainder of 

the case must be transferred. 

Accordingly, 

 IT IS ORDERED THAT: 

The petition for a writ of mandamus is granted, the 

order denying the motion to transfer, sever, and stay is 

vacated, and the case is remanded for further proceedings 

consistent with this Order. 

 FOR THE COURT

April 3, 2014 /s/ Daniel E. O’Toole 

 Date Daniel E. O’Toole

 Clerk of Court