EXHIBIT A 

Case 6:20-cv-00366-ADA Document 41-1 Filed 09/17/20 Page 1 of 10
NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: HP INC.,

Petitioner

______________________

2020-140

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 4:19-

cv-00696-ALM, Judge Amos L. Mazzant, III.

______________________

ON PETITION AND MOTION

______________________

Before NEWMAN, LOURIE, and HUGHES, Circuit Judges.

PER CURIAM.

O R D E R

HP Inc. petitions for a writ of mandamus to direct the 

United States District Court for the Eastern District of 

Texas to transfer this case to the United States District 

Court for the Northern District of California. Largan Precision Co., Ltd. opposes. HP replies. HP also moves without opposition to submit a supplemental appendix. For the 

following reasons, we grant HP’s petition.

 

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2 IN RE: HP INC.

BACKGROUND

Largan, a Taiwanese corporation, brought this suit 

against two other Taiwanese corporations, Ability OptoElectronics Technology Co., Ltd. (“AOET”) and Newmax 

Technology Co., Ltd, as well as against HP, for infringing 

four patents based on HP’s incorporation of AOET’s and 

Newmax’s optical lenses into HP’s laptops. 

HP, joined by AOET and Newmax, moved pursuant to 

28 U.S.C. § 1404(a) to transfer the case to the Northern 

District of California where HP is headquartered. Attached to HP’s motion was a declaration filed by HP’s Senior Litigation Manager, Anthony Baca. Baca identified ten 

HP employees residing in Northern California that had relevant knowledge regarding sales, marketing, revenue, and 

profits of the accused products. He added that no employee 

responsible for such activity works in the Eastern District 

of Texas. Baca additionally stated that documents relating 

to the design, development, marketing, and sales of the accused products were also in the transferee district and elsewhere, but not in the Eastern District of Texas. 

HP further argued that the only state in the United 

States to which Largan has a connection is California, noting that Largan had previously filed two patent infringement suits in the Northern District of California, including 

an action alleging infringement of one of the patents asserted in this case as well as other related patents based 

on incorporation of Genius Electronic Optical Co., Ltd.’s 

lenses into Apple Inc.’s products. HP argued that Apple

and Genius, which both have offices in Northern California, likely had material information relevant to invalidity 

and damages that the transferee venue could compel. HP

added that transfer would preserve judicial economy given 

the Northern District of California was already familiar

with the technology and one of the patents. 

The district court denied the motion. In examining the 

factors related to the private interests of the litigants, the 

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IN RE: HP INC. 3

court acknowledged that physical sources of proof and potential willing witnesses are in the Northern District of

California, and not the Eastern District of Texas. However, 

the court weighed those factors as neutral largely because 

more documents and witnesses would be coming from Taiwan. The court also recognized that Apple and Genius 

would likely be beyond the reach of its compulsory process 

powers, but nonetheless weighed the factor against transfer because “Largan identifie[d] specific third-party witnesses, with at least two residing in Texas.” Appx24.

The district court also addressed several factors related 

to the public’s interest. The court recognized that the local 

interest factor weighed at least slightly in favor of transfer 

given “more of the events giving rise to this suit appear to 

have occurred in the Northern District of California than 

in the Eastern District of Texas—specifically, the development of the accused products.” Appx30. However, the 

court weighed against transfer that it had “already gained 

familiarity with the parties and issues in this case in deciding Defendants’ personal jurisdictional challenge” and 

because “AOET indicated its plans to relitigate its personal 

jurisdictional challenge if this case is transferred to the 

Northern District of California.” Appx28. 

Finding that one factor weighed in favor of transfer, 

two weighed against transfer, and the rest neutral, the 

court concluded that the defendants had failed to show that 

transfer is clearly more convenient and in the interest of 

justice. Accordingly, the court denied the motion. HP then 

filed this petition seeking mandamus review. 

DISCUSSION

A party seeking mandamus must: (1) show that it has 

a clear and indisputable legal right; (2) show it does not 

have any other method of obtaining relief; and (3) convince 

the court that the “writ is appropriate under the circumstances.” Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367, 

380–81 (2004) (citation omitted). In the transfer context, 

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these requirements coalesce into one, because the possibility of an appeal after judgment is not an adequate remedy 

and mandamus is deemed an appropriate vehicle to correct 

patently erroneous transfer determinations. See In re TS 

Tech USA Corp., 551 F.3d 1315, 1322 (Fed. Cir. 2008).

We review a decision to deny transfer pursuant to 

§ 1404(a) under regional circuit law, in this case, the Fifth 

Circuit. Id. at 1319. Fifth Circuit law requires that when 

a movant “clearly demonstrate[s] that a transfer is ‘[f]or 

the convenience of parties and witnesses, [and] in the interest of justice,’” the district court “should” grant transfer. 

In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 

2008) (en banc) (citation omitted). That determination is

focused on a comparison of the relative convenience of the

two venues based on assessment of the traditional transfer 

factors. See In re Radmax, Ltd., 720 F.3d 285, 288 (5th Cir.

2013) (noting that the critical inquiry “is relative ease of 

access, not absolute ease of access.” (emphases omitted)); 

see also In re Toyota Motor Corp., 747 F.3d 1338, 1341 (Fed. 

Cir. 2014) (granting mandamus, explaining that while an 

analysis of the factors in that case “may not show that the 

transferee forum is far more convenient,” such a showing 

was not required to compel transfer, because “[w]ith nothing on the transferor-forum side of the ledger, the analysis 

shows that the transferee forum is ‘clearly more convenient’” (citation and emphases omitted)). 

In reviewing that determination on mandamus, we ask 

whether the district court clearly abused its discretion. TS 

Tech, 551 F.3d at 1319. To answer that question, we may, 

under appropriate circumstances, revisit the court’s analysis of the disputed transfer factors (here, largely the willing 

witness, source of proof, compulsory process, and practical

problems factors1), see Radmax, 720 F.3d at 288, and 

1 HP also argues that the district court erred in 

weighing the local interest factor only slightly in favor of 

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IN RE: HP INC. 5

“review carefully the circumstances presented to and the 

decision making process of the district court,” Volkswagen, 

545 F.3d at 312 (internal quotation marks and citation 

omitted). Given this suit was brought by a foreign plaintiff,

HP’s presence in the transferee venue, and no readily apparent connection with the Eastern District of Texas, we 

conclude that this is one of those cases. In revisiting the 

relevant factors and taking due account of the proper inquiry, we hold that HP has shown entitlement to mandamus because the court’s decision lies far outside the 

boundaries of a reasonable exercise of discretion. 

A.

1. In its consideration of the willing witness factor, the 

district court here acknowledged that “[t]he comparison between the transferor and transferee forums is not altered 

by the presence of other witnesses and documents in places 

outside both forums.” Appx27 n.2 (quoting Toyota, 747 

F.3d at 1340). The district court’s analysis, however, failed 

to adhere to that legal principle. Specifically, because the

district court recognized that HP had identified several 

witnesses in the Northern District of California that could 

testify at trial without having to travel away from their residences and that “no key witnesses appear to reside in the 

Eastern District of Texas,” Appx27, the district court

should have weighed this factor at least slightly in favor of 

transfer. Instead, the court here erred in weighing this factor as neutral on the ground “that the most numerous and 

significant witnesses reside in Taiwan, for whom travel to 

either forum is equally inconvenient.” Id. 

transfer as opposed to strongly in favor of transfer given 

HP’s presence in the transferee venue and no party or 

event giving rise to this suit in the Eastern District of 

Texas. While there is force to this contention, we find that 

making such a change would not alter the outcome here. 

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2. The district court made a similar error in its assessment that the sources of proof factor here favored neither

of the two venues. The district court reasoned that “HP 

will likely produce evidence from its headquarters in the 

Northern District of California, but may also [electronically] access documents located within [other parts of] 

Texas, and the bulk of evidence in this case will likely come 

from Taiwan rather than any district in the United States.” 

Appx23. This again ignored that the critical inquiry “is relative ease of access, not absolute ease of access.” Radmax, 

720 F.3d at 288 (emphases omitted). Since no party is in 

the Eastern District of Texas, and the existence of physical 

sources of proof in the Northern District of California

makes that venue more convenient for trial, this factor also

weighs at least slightly in favor of transfer.

3. The district court likewise erred in ruling that the 

compulsory process factor weighed against transferring the 

case to Northern California. The court acknowledged the 

presence of Apple and Genius within the Northern District 

of California, which HP believes may have sold and purchased lenses covered by the patents prior to the critical 

date. As HP points out, only the transferee venue can compel those companies to provide documentary evidence and 

trial and deposition testimony without requiring any 

travel. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1337 

(Fed. Cir. 2009). By contrast, Largan only identified Texas 

residents who reside more than 100 miles outside the Eastern District of Texas, which means that court can only compel testimony if it would not incur a substantial expense. 

Fed. R. Civ. P. 45(c)(1)(B). 

The district court weighed this factor against transfer 

based solely on the fact that Largan had identified its third 

parties by name whereas HP identified the corporate entities without specifying individual employees. However, we 

cannot say that should negate the potential benefits of 

transfer here with regard to Apple and Genius. To be sure,

it is reasonable to reject vague and unsupported 

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statements regarding the location of potential witnesses or 

sources of proof. See In re Apple Inc., 743 F.3d 1377, 1379 

(Fed. Cir. 2014). But here, the court recognized that the 

pertinent Apple and Genius information would likely be in 

the transferee venue. There was thus no basis to discount 

these entities just because individual employees were not 

identified. This factor therefore should have been weighed, 

at a minimum, as neutral, if not in favor of transfer. 

4. Lastly, the district court erred when it weighed the 

practical problems factor against transfer. The Eastern 

District of Texas rejected transfer to the Northern District 

of California, a court that has familiarity with the technology and one of the patents, based largely on the Eastern 

District of Texas’s own familiarity gained in deciding 

AOET’s and Newmax’s personal jurisdiction challenges. 

The problem with this analysis is that “[m]otions to transfer venue are to be decided based on ‘the situation which 

existed when suit was instituted,’” In re EMC Corp., 501 

F. App’x 973, 976 (Fed. Cir. 2013) (quoting Hoffman v. 

Blaski, 363 U.S. 335, 343 (1960)). At the time this suit was 

instituted, the Northern District of California had gained 

familiarity over one of the patents in presiding over Largan’s earlier suit against Genius, while the district court 

here had no familiarity with any of the issues.2

The district court also expressed some concern over the 

possibility that AOET would relitigate personal jurisdiction if the case were transferred. But this fear appears to 

be based entirely on the fact that AOET stated that it was 

joining HP’s motion “without waiving its defenses of lack of 

personal jurisdiction and improper venue.” Appx462. 

Given the court had already concluded that the suit could 

have been brought in the Northern District of California 

2 Even making this assessment at the time the 

transfer motion was filed, the transferee venue had at least 

as much, if not more, experience with relevant issues. 

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and AOET joined the motion, we cannot say that this speculation could justify weighing this factor against transfer.

B.

In summary, the district court’s ruling was clearly 

wrong. While it correctly labeled the local interest factor 

in favor of transfer, the district court incorrectly labeled 

the willing witness and sources of proof factors as neutral 

when they clearly weigh at least slightly in favor of transfer, and incorrectly weighed the compulsory process and 

practical problems factors against transfer when, at a minimum, those factors are neutral. 

While mindful that mandamus “does not reach all erroneous rulings of the district court,” Volkswagen, 545 F.3d 

at 315 n.11, as in previous cases where this court and the 

Fifth Circuit have decided to issue the writ, here there is 

such “a stark contrast in relevance, convenience, and fairness between the two venues,” Hoffmann, 587 F.3d at 1336, 

that the only plausible judgment that can be reached under 

these facts is that the Northern District of California is 

clearly more convenient for trial of this case. 

Several witnesses will find the Northern District of 

California a less costly and more convenient forum to appear at trial. Apple and Genius employees can also be compelled to produce documents and trial and deposition

testimony without having to travel. The district court itself 

found that the Northern District of California has more of 

a local interest in this case. The transferee venue has familiarity with the underlying technology and patents. And

the Northern District of California is also the only venue 

where any of the physical evidence is located. Meanwhile, 

the Eastern District of Texas has no direct connection to 

any witnesses, source of proof, or interest in this case. 

Even measuring against the high standard necessary 

to grant a writ of mandamus, under these facts, HP has 

established the right to a writ to direct transfer.

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Accordingly, 

IT IS ORDERED THAT:

(1) The petition is granted. The district court’s June 

10, 2020 order is vacated, and it is directed to transfer this 

matter to the United States District Court for the Northern 

District of California. 

(2) The motion for leave to submit a supplemental appendix is granted.

September 15, 2020

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

s24

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