United States Court of Appeals 

for the Federal Circuit 

__________________________ 

IN RE VISTAPRINT LIMITED AND OFFICEMAX 

INCORPORATED, 

Petitioners. 

__________________________ 

Miscellaneous Docket No. 954 

__________________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

case no. 09-CV-0323, Judge Leonard Davis. 

__________________________ 

ON PETITION FOR WRIT OF MANDAMUS 

__________________________ 

THOMAS J. FRIEL, JR., Cooley LLP, of Palo Alto, California, for petitioners Vistaprint Limited and Officemax 

Incorporated. With him on the petition were LORI R.E.

PLOEGER and MATTHEW P. GUBIOTTI. Of counsel on the 

petition was CHRISTOPHER C. CAMPBELL, of Reston, Virginia. 

MICHAEL W. SHORE, Shore Chan Bragalone DePumpo 

LLP, of Dallas, Texas, for respondent Colorquick, L.L.C. 

With him on the response were ALFONSO GARCIA CHAN, 

JUSTIN B. KIMBLE, THERESA DAWSON and DANIEL F.

OLEJKO. 

__________________________ 
IN RE VISTAPRINT 2

Before GAJARSA, SCHALL, and MOORE, Circuit Judges. 

SCHALL, Circuit Judge. 

O R D E R 

Vistaprint Limited (Vistaprint) and OfficeMax Incorporated (OfficeMax), the defendants in a patent infringement action, seek a writ of mandamus directing the 

United States District Court for the Eastern District of 

Texas to vacate its July 22, 2010 order and transfer the 

case to the United States District Court for the District of 

Massachusetts. The plaintiff in the action, ColorQuick, 

L.L.C. (ColorQuick), opposes. 

I. 

ColorQuick, a New Jersey limited liability company, 

brought this suit in the Eastern District of Texas, charging the petitioners with infringement of its patent relating to preparing production data for printing. Although 

Vistaprint is a foreign corporation, one of its whollyowned subsidiaries, Vistaprint USA, Inc., which is not a 

party to these proceedings, apparently has a large presence in Massachusetts. A motion was made to transfer to 

the federal district court in that venue, which, according 

to the petitioners, is close to the residences of many of 

Vistaprint USA, Inc.’s employees who may serve as witnesses at trial and where many of the petitioners’ documents that may be evidence are stored. OfficeMax is a 

Delaware corporation with its principal place of business 

in Illinois. The accused OfficeMax services are operated 

by Vistaprint for OfficeMax. 

The district court denied the motion, weighing considerations of convenience in favor of transfer, but ultimately 

concluding that such considerations did not outweigh the 

importance of judicial economy. Specifically, the court 

noted that it had substantial experience with the patent-
3 IN RE VISTAPRINT

in-suit based on prior litigation involving the plaintiff, 

which included a hearing and lengthy opinion construing 

various claim terms. The court further noted that there 

was also a second, co-pending case before the court between the plaintiff and another defendant involving the 

same patent-in-suit, pertaining to the same underlying 

technology, and involving similar accused services. 

II. 

A. 

Mandamus is an extraordinary remedy, available only 

upon a demonstration by the petitioner of a “clear and 

indisputable” right to the relief sought. Allied Chem. 

Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). In this case, 

that requires the petitioners to demonstrate that the 

court’s denial of transfer was so patently erroneous as to 

amount to a clear abuse of discretion. In re Volkswagen of 

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

(Volkswagen I). Because this petition does not raise 

issues unique to our jurisdiction, we apply the law of the 

regional circuit in which the district court sits, in this case 

the law of the Fifth Circuit. In re TS Tech USA Corp., 

551 F.3d 1315, 1319 (Fed. Cir. 2008). In determining 

whether the transferee venue is clearly more convenient, 

the Fifth Circuit applies the public and private factors 

used in forum non conveniens analysis. Volkswagen I, 545 

F.3d at 314 n.9. 

B. 

A trial court has broad discretion in transfer decisions 

pursuant to 28 U.S.C. § 1404(a),1 but that is not the same 

 1 For the convenience of parties and witnesses, in 

the interest of justice, a district court may transfer any 

civil action to any other district court or division where it 

might have been brought.” 28 U.S.C. § 1404(a). 
IN RE VISTAPRINT 4

as saying that it may accord weight simply as it pleases. 

Our recent decision in In re Zimmer Holdings, Inc., 609 

F.3d 1378 (Fed. Cir. 2010), makes clear that where the 

convenience factors strongly weigh in favor of the transferee venue, a decision to deny transfer based solely on 

“negligible” judicial efficiencies may be such a clear abuse 

of discretion as to warrant extraordinary relief. According 

to the petitioners, the trial court here gave inappropriate 

weight to judicial economy considerations. 

We cannot say, however, that the weight the court afforded judicial economy here amounted to a “patently 

erroneous result.” Volkswagen I, 545 F.3d at 310. Even if 

it was the magistrate and not the trial judge who gained 

substantial experience in construing the patent claims 

during prior litigation, it was not plainly incorrect to 

conclude that having the same magistrate judge handle 

this and the co-pending case involving the same patent 

would be more efficient than requiring another magistrate or trial judge to start from scratch. Similarly, even 

if trying these two related cases before the same court 

may not involve the same defendants and accused products, it does not appear on its face erroneous to conclude 

that maintaining these two cases before the same court 

may be beneficial from the standpoint of judicial resources. 

C. 

Because the district court has taken the plausible position that denial of transfer would preserve judicial 

economy, the petitioners are only left with their arguments that the balance of considerations was improper. 

In this regard, the petitioners essentially urge that it is 

always improper for a district court to deny transfer based 

on judicial economy when all of the convenience factors 

clearly favor transfer. ColorQuick cites several cases, 
5 IN RE VISTAPRINT

specifically In re Volkswagen of America, Inc., 566 F.3d 

1349 (Fed. Cir. 2009) (Volkswagen II), Regents of the 

University of California v. Eli Lilly & Co., 119 F.3d 1559 

(Fed. Cir. 1997), and Coffey v. Van Dorn Iron Works, 796 

F.2d 217 (7th Cir. 1986), as having already rejected that 

argument.2 Although these cases are relevant, none on 

close inspection actually foreclose the petitioners’ contention. In Volkswagen II, for example, the court never 

addressed or applied the convenience factors and therefore could not have held that judicial economy could be 

determinative when the convenience factors strongly 

weigh in favor of transfer. In Regents, the convenience 

factors did not clearly favor transfer, but were instead 

said to be “in equipoise.” 119 F.3d at 1565. Finally, 

despite the Seventh Circuit’s strong statement in Coffey, 

it was dicta as the court in that case addressed neither 

factors of convenience nor factors of judicial economy. 

As the petitioners see it, under § 1404(a), the convenience factors are deserving of “most importance.” We 

have certainly noted the importance of the convenience 

factors. See In re Genentech, Inc., 566 F.3d 1338, 1343 

 2 In Volkswagen II, 566 F.3d at 1351, this court 

reasoned that “[i]n this case, the existence of multiple 

lawsuits involving the same issues is a paramount consideration when determining whether a transfer is in the 

interest of justice.” Similarly, this court stated in Regents

that “in a case such as this in which several highly technical factual issues are presented and the other relevant 

factors are in equipoise, the interest of judicial economy 

may favor transfer to a court that has become familiar 

with the issues.” 119 F.3d at 1565. The Seventh Circuit 

in Coffey reasoned along the same lines, stating that 

“[t]he ‘interest of justice’ is a separate component of a 

§ 1404(a) transfer analysis . . . and may be determinative 

in a particular case, even if the convenience of the parties 

and witnesses might call for a different result.” 796 F.2d 

at 220. 
IN RE VISTAPRINT 6

(Fed. Cir. 2009) (noting that the convenience of the witnesses is “important”); In re Hoffmann-La Roche Inc., 587 

F.3d 1333, 1336 (Fed. Cir. 2009) (“As in Volkswagen [I], 

TS Tech, and our most recent decision, In re Genentech, 

Inc., 566 F.3d 1338 (Fed. Cir. 2009), there is a stark 

contrast in relevance, convenience, and fairness between 

the two venues.”). In fact, In re Nintendo Co., 589 F.3d 

1194, 1198 (Fed. Cir. 2009), held that “in a case featuring 

most witnesses and evidence closer to the transferee 

venue with few or no convenience factors favoring the 

venue chosen by the plaintiff, the trial court should grant 

a motion to transfer.” 

However, Volkswagen I, TS Tech, Genentech, Hoffman, and Nintendo did not present the court with a 

showing of judicial economy comparable to that in this 

case. In Volkswagen I, TS Tech, and Nintendo, considerations of judicial administration/judicial economy were 

neutral or were otherwise inapplicable to the outcome of 

the petition. At the same time, in Hoffmann, the court 

was presented with a case where there was no evidence 

that judicial economy favored venue in the Eastern District of Texas. Moreover, the plaintiff in Hoffmann was 

found to have “manipulate[d] the propriety of venue” in 

the Eastern District by transferring some 75,000 pages of 

documents to the district. 587 F.3d at 1337. Finally, in 

Genentech, this court was not faced with the analysis 

relating to judicial economy that is presented in this case. 

In contrast, as noted above, here the district court correctly held a denial of transfer would produce gains in 

judicial economy. 

At the end of the day, § 1404(a) balances a number of 

case-specific factors, not just convenience. Further, 

§ 1404(a) commits the balancing determination to the 

sound discretion of the trial court based not on per se 

rules but rather on an “individualized, case-by-case 
7 IN RE VISTAPRINT

consideration of convenience and fairness.” Van Dusen v. 

Barrack, 376 U.S. 612, 622 (1964); see also Volkswagen I, 

545 F.3d at 312 n.7 (“‘Unless it is made clearly to appear 

that the facts and circumstances are without any basis for 

a judgment of discretion, the appellate court will not 

proceed further to examine the district court’s actions in 

the situation.’” (citation omitted)). Our reluctance to 

interfere is not merely a formality, but rather a longstanding recognition that a trial judge has a superior 

opportunity to familiarize himself or herself with the 

nature of the case and the probable testimony at trial, 

and ultimately is better able to dispose of these motions. 

See A. Olinick & Sons v. Dempster Bros., Inc., 365 F.2d 

439, 444 (2d Cir. 1966). 

For those reasons, we find unpersuasive the petitioners’ argument that their proposed bright-line rule favoring convenience factors would bring about more 

uniformity and fairness. In American Dredging Co. v. 

Miller, 510 U.S. 443, 455 (1994), the Supreme Court 

explained that “[t]he discretionary nature of the doctrine, 

combined with the multifariousness of the factors relevant to its application . . . make uniformity and predictability of outcome almost impossible.” To that end, the 

Court has repeatedly rejected the use of per se rules in 

forum non conveniens analyses. See, e.g., Piper Aircraft 

Co. v. Reyno, 454 U.S. 235, 249-50 (1981); Koster v. Lumbermens Mut. Cas. Co., 330 U.S. 518, 527 (1947). 

Petitioners further note that failure to adopt their 

rule may allow for inconvenient and costly trials and 

provide a safe harbor for defendants that artificially 

manipulate venue. While these are perhaps valid concerns, we cannot say that there is enough justification 

here to depart from the above-mentioned principles. 

First, there is no evidence that such manipulation has 

occurred in this case. Second, courts have consistently 
IN RE VISTAPRINT 8

held that judicial economy plays a paramount role in 

trying to maintain an orderly, effective, administration of 

justice. See Cont’l Grain Co. v. Barge FBL-585, 364 U.S. 

19, 26 (1960) (emphasizing the importance that judicial 

economy and efficiency play in a § 1404(a) analysis); 

Volkswagen II, 566 F.3d at 1351; Coffey, 796 F.2d at 220. 

D. 

The only matter left for the court to decide is whether the 

trial court improperly balanced judicial economy against 

convenience in this specific case. Although Zimmer

demonstrates that a clear abuse of discretion in balancing 

convenience against judicial economy under § 1404 is not 

outside the scope of correctable error on mandamus 

review, 609 F.3d at 1382, the gain in judicial economy 

from keeping this case in the Eastern District of Texas is 

more than negligible. Here, the trial court became very 

familiar with the only asserted patent and the related 

technology during a prior litigation. That, coupled with 

the fact there is co-pending litigation before the trial court 

involving the same patent and underlying technology, 

provides a substantial justification for maintaining suit in 

the Eastern District of Texas. In addition, although some 

potential witnesses and sources of proof located in the 

transferee venue warrant weighing convenience factors in 

favor of transfer, no defendant party is actually located in 

the transferee venue and the presence of the witnesses in 

that location is not overwhelming. “Each case turns on its 

facts,” Koster, 330 U.S. at 528, and the court’s thorough 

analysis here suggests that this case was decided based 

on an “individualized, case-by-case consideration” of the 

relevant factors, balancing convenience and efficiency. 

Van Dusen, 376 U.S. at 622. We thus cannot say that the 

trial court’s balancing was so unreasonable as to warrant 

the extraordinary relief of mandamus. 
9 IN RE VISTAPRINT

In sum, there are cases where to hold a trial court to a 

meaningful application of the § 1404(a) factors presents 

only one correct outcome. In those cases, mandamus may 

be appropriate. A case such as this, however, shows that 

a meaningful application of the factors often creates a 

reasonable range of choice. Under such circumstances, it 

is entirely within the district court’s discretion to conclude 

that in a given case the § 1404(a) factors of public interest 

or judicial economy can be of “paramount consideration,” 

Volkswagen II, 566 F.3d at 1351, and as long as there is 

plausible support of record for that conclusion we will not 

second guess such a determination, even if the convenience factors call for a different result.3 

Accordingly, 

IT IS ORDERED THAT: 

The petition for a writ of mandamus is denied. 

FOR THE COURT

 3 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-in-suit, and pertaining to the same underlying technology and accusing similar services, we cannot 

say the trial court clearly abused its discretion in denying 

transfer. 
IN RE VISTAPRINT 10

December 15, 2010

Date 

/s/ Jan Horbaly 

Jan Horbaly 

Clerk 

cc: Thomas J. Friel, Jr., Esq. 

Michael W. Shore, Esq.