SMU Law Review


Like all federal plaintiffs, patent owners who feel their patent has been infringed have the right to file suit in any federal court, so long as venue is proper. Patent plaintiffs often select plaintiff-friendly venues, like the Eastern and Western Districts of Texas. Usually, plaintiffs may select these venues because many of the alleged infringers are large companies with a national presence, which makes them susceptible to suit in many federal courts around the country. Defendants in patent cases often file a motion under 28 U.S.C. § 1404(a) to transfer a case to a more defendant-friendly venue, on the basis that the destination venue is more convenient. If the district court denies the motion to transfer, that almost always ends the matter. The exception is that the defendant can petition the proper appellate court—the Federal Circuit in patent cases—for a writ of mandamus: an “extraordinary remedy” that directs the district court to transfer the case. The Supreme Court has mandated that this remedy is reserved for extreme circumstances and may not be used as an appeal. Despite this clear mandate, the Federal Circuit appears to treat such petitions as full-fledged appeals.

This Comment seeks to address the ever-growing number of mandamus petitions being granted by the Federal Circuit. Specifically, this Comment focuses on patent cases filed in Texas federal courts. While patent cases in Texas federal courts, like all other patent cases, are appealed to the Federal Circuit, the Federal Circuit remains bound by Fifth Circuit law on motions to transfer under § 1404(a). The Supreme Court and Fifth Circuit have held that a mandamus petition should only be granted upon a clear abuse of discretion by the district court, but the Federal Circuit seems to misapply Fifth Circuit law. The Federal Circuit’s proclivities in determining the propriety of a petition for a writ of mandamus have caused confusion among Texas plaintiffs and uncertainty in the law. This Comment calls attention to the Federal Circuit’s tendency to: (1) misapply Fifth Circuit transfer law; (2) impermissibly add its own nuances to transfer law; and (3) substitute the district court’s judgment for its own, effectively giving defendants a de novo review; or in other words, a second bite at the apple in attempting to transfer a case. Finally, this Comment proposes solutions including: (1) an expansion of Fifth Circuit § 1404(a) jurisprudence; (2) the Supreme Court granting certiorari to provide clarity on the issue; or (3) a change in the Federal Circuit’s choice of law rule.

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