NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: CANON INC., CANON U.S.A., INC.,

Petitioners

______________________

2022-131

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:20-

cv-00981-ADA, Judge Alan D. Albright.

______________________

ON PETITION

______________________

Before DYK, REYNA, and CHEN, Circuit Judges. 

DYK, Circuit Judge.

O R D E R

Canon Inc. and Canon U.S.A., Inc. (“CUSA”) (collectively, “Canon”) petition this court for a writ of mandamus 

directing the United States District Court for the Western 

District of Texas (“WDTX”) to transfer the case to the 

United States District Court for the Eastern District of 

New York (“EDNY”) based on improper venue and inconvenient forum. For the reasons below, we deny the petition. 

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2 IN RE: CANON INC.

BACKGROUND

WSOU Investments d/b/a Brazos Licensing and Development (“Brazos”) filed two separate patent infringement 

lawsuits against Canon Inc. and CUSA in the Waco division of WDTX: one alleging infringement of U.S. Patent No. 

7,054,346 (“the ’346 patent”), and the present action alleging infringement of U.S. Patent No. 7,116,714. 

In both cases, Canon moved to transfer to EDNY based 

on (1) improper patent venue over CUSA (28 U.S.C. 

§§ 1400(b), 1406(a)), and (2) inconvenient forum (28 U.S.C. 

§ 1404(a)); the district court denied both motions. The issues concerning whether venue over CUSA is proper in 

WDTX are the same in both cases and are addressed in the 

companion order for Appeal No. 2022-130.

For the § 1404 analysis, the court determined that 

Canon had failed to show that EDNY was clearly more convenient. The court noted, among other things, that judicial 

economy considerations weighed significantly against 

transfer because of the co-pending ’346 patent case “involving the same parties and similar technology, “filed on the 

same day, [ ] proceeding on similar schedules, and hav[ing]

the same Markman hearing date,” Appx 27. 

Canon’s petition challenges the denial of transfer based 

on improper venue and § 1404. We have jurisdiction pursuant to 28 U.S.C. § 1651(a) and 28 U.S.C. § 1295(a)(1). 

DISCUSSION

A writ of mandamus is an extraordinary remedy and

requires the petitioner to show three conditions are met: 

(1) it has no adequate alternative means for relief, (2) it has 

a clear and indisputable right to the requested relief, and 

(3) mandamus is appropriate under the circumstances. 

Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380–81

(2004). Canon has not made that showing. 

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IN RE: CANON INC. 3

In a separate order issued today in Appeal No. 2022-

130, we denied Canon’s petition seeking to direct transfer 

of the case involving the ’346 patent out of WDTX. And 

Canon does not dispute the district court’s finding that 

“[s]ignificant judicial economy would be gained by trying 

[this case and the ’346 patent case] in the same court,” 

Appx 27. See Pet. at 25–26 (only arguing error in the 

court’s finding if the ’346 patent case were to be transferred). 

Moreover, the district court’s judicial economy findings 

do not stand alone in supporting its denial of transfer here. 

The district court also found that the design and development of the accused products occurred entirely outside of 

the transferee venue in Japan, where the bulk of the important relative sources of proof would also be located. The 

court further found that WDTX had a comparative advantage over EDNY in being able to compel the testimony 

of potential third-party witnesses. 

Under the particular circumstances of this case, we are 

not convinced the extraordinary remedy of mandamus is 

warranted to direct transfer. See In re Vistaprint Ltd., 628 

F.3d 1342, 1347 (Fed. Cir. 2010) (noting mandamus may be 

denied where “there is plausible support of record” for the 

district court’s transfer decision). 

Accordingly,

IT IS ORDERED THAT:

The petition is denied. 

April 22, 2022

 Date

 FOR THE COURT

 /s/ Peter R. Marksteiner

 Peter R. Marksteiner

 Clerk of Court

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