Federal Circuit Denies Petition for Writ of Mandamus—Sony Cannot Transfer Case Out of Western District of Texas

On October 19, 2023, the Federal Circuit denied Sony’s petition to transfer a case from the Western District of Texas to the Northern District of California.

On July 27, 2023, ACQUIS filed a complaint against Sony, alleging its PlayStation 4 videogame console infringed U.S. Patent Nos. 9,529,768; 9,703,750; 8,977,797; RE44,654; and RE45,140, which are directed to low-voltage differential signaling as a physical transmission medium for serial data transfer in PCI or USB transactions. Instead of answering the complaint, Sony filed a motion to transfer on December 19, 2022, arguing the Northern District of California is a more convenient forum due to the location of potential witnesses and relevant records. In the alternative, Sony moved to transfer from the Waco division of the Western District of Texas to the Austin division for similar reasons and because the complaint alleged Austin-specific facts.

Judge Albright first concluded that the threshold determination was met—this case could initially have been brought in the destination venue because Sony is headquartered in the Northern District of California. Next, Judge Albright examined the private- and public-interest factors to determine whether the Northern District of California was clearly a more convenient forum than the Western District of Texas.

As a result of his analysis, Judge Albright found that Sony had not shown the Northern District of California was clearly a more convenient forum, so its motion was denied in that respect. But because travel from Japan and California to Austin would be more convenient than to Waco and the relevant offices and witnesses were in Austin, Judge Albright granted Sony’s motion to transfer to that forum.

Sony then petitioned the Federal Circuit for a writ of mandamus requiring the court to transfer the case to the Northern District of California. In order to obtain a writ of mandamus, a petitioner must show (1) there are no adequate alternative avenues for relief, (2) the right to issuance of the writ is clear and indisputable, and (3) issuance of the writ is appropriate under the circumstances. Applying Fifth Circuit law, the Federal Circuit reviewed Judge Albright’s § 1404(a) transfer decision on mandamus only for a “clear abuse of discretion such that refusing transfer produced a patently erroneous result.”

A unanimous Federal Circuit panel denied Sony’s petition because the district court had not clearly abused its discretion and had made a plausible determination that judicial-economy considerations weighed in favor of keeping the case in the Western District of Texas. Key factors included the Western District’s prior experience with the patents at issue, the existence of related co-pending litigation, and a significant number of possibly relevant witnesses within that district. Sony’s argument that many more such witnesses were located in the Northern District of California was irrelevant on appeal, the Circuit held, because such considerations were committed to the discretion of the district court.