Clarifying the Standard for Transfer in Eastern Texas

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Clarifying the Standard for Transfer in Eastern Texas

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By patenting their innovations, our clients increase the value of their intellectual property and enhance their ability to compete in the marketplace. We work with laboratory and research teams and R&D and product development groups to determine whether, when and where it is in our clients’ business and technical interests to seek patent protection. And we don’t just file patent applications. Drawing on our experience with patent litigation, corporate financings and technology transactions, we implement IP strategies that conserve resources, add measurable value and give our clients a cost-effective and commercially practical competitive edge.

We help clients obtain more than 750 US and foreign patents each year, covering innovations that span the technological spectrum, including aerospace, biochemistry, biotechnology, business methods, chemistry, computer science, fuel cells, genetics, high-speed data communication, integrated circuits, materials science, medical devices, nanotechnology, pharmaceuticals, semiconductor devices and processes, and software.

We also prepare and prosecute patent applications internationally under the Patent Cooperative Treaty and by working with a network of seasoned patent lawyers around the world. Our experience extends to appeals, interferences and opposition proceedings within the US Patent and Trademark Office, the US Court of Appeals for the Federal Circuit and the European Patent Office.

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The Eastern District of Texas has developed a reputation among patent practitioners as a plaintiff-friendly jurisdiction, making it a popular court for patent owners to file suit. In many instances, the only connection to the Eastern District has been the fact that sales of allegedly infringing items are occurring there, although often sales of the accused products are taking place nationwide. Until recently, defendants had low odds of succeeding with transfer motions in the Eastern District. However, in the wake of the Fifth Circuit’s transfer ruling in In re Volkswagen of America Inc., the Federal Circuit has taken the unprecedented step of granting four mandamus petitions from unsuccessful defendants seeking transfer out of the Eastern District.

In an article originally published in Law360, WilmerHale Partner Robert J. Gunther, Jr. and Counsel James P. Barabas, both members of the Intellectual Property Litigation Practice, review the rulings in In re TS Tech USA Corp. and In re Genentech Inc., and focus on the recent grants of mandamus this past December in In re: Hoffmann-La Roche Inc. and In re Nintendo. These decisions make clear that, if a more convenient forum exists in terms of access to witnesses and documents, the mere fact of allegedly infringing sales in the district is an insufficient basis on which to deny transfer.

Read the full text of the article: Clarifying The Standard For Transfer In Eastern Texas.

Lawyers in WilmerHale’s Intellectual Property Litigation Practice have considerable experience trying IP cases in the Federal Circuit, federal district courts from coast to coast, and the US International Trade Commission, as well as courts in the United Kingdom and Germany. We have tried jury and non-jury cases involving technologies ranging from complex mathematical algorithms and devices for manufacturing semiconductor chips to recombinant genetics and the construction of golf balls. We also regularly handle patent appeals before the CAFC and appeals of other IP cases before the regional courts of appeals.

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