Judge Rader Acknowledges New Factor in 1404 Venue Transfer Analysis

The Fifth Circuit recognizes four “private factors” and four “public factors” to be considered when deciding a motion to transfer venue under § 1404(a). Should a fifth consideration be added to the list of public factors?

During this week’s Joint Bench/Bar Conference of the Eastern District of Texas Bar Association and the Federal Circuit Bar Association in Las Colinas, Texas, Judge Randall Rader, Chief Judge of the Federal Circuit, acknowledged that a district court’s participation in the new Patent Pilot Program is a factor that should be considered when a court is deciding whether to grant a motion to transfer venue under 28 U.S.C. § 1404(a). Judge Rader expressed that he did not know the degree of weight this new factor should be given in relation to the other traditionally recognized factors, but that certainly participation in the Pilot Program is a factor to be considered.

Earlier this year, Congress passed P.L. No. 111-349, which establishes a 10-year pilot project intended to enhance the expertise of selected federal judges in handling patent infringement cases. Fourteen federal judicial districts have been selected to participate in the program. Those districts are: Eastern District of New York, Southern District of New York, Western District of Pennsylvania, District of New Jersey, District of Maryland, Northern District of Illinois, Southern District of Florida, District of Nevada, Eastern District of Texas, Northern District of Texas, Western District of Tennessee, Central District of California, Northern District of California, and Southern District of California.

In the case of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir., 2008), Judge Rader, writing for the court, acknowledged the four “private factors” and four “public factors” recognized by the Fifth Circuit to be considered when deciding a motion to transfer venue under § 1404(a). The “private factors” to be evaluated included: (1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make a trial easy, expeditious and inexpensive. The “public factors” included (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of law [or in] the application of foreign law. See 551 F.3d at 1319.

Following Judge Rader’s recent remarks, a fifth consideration can now be added to the list of public factors: participation by the forum in question in the Patent Pilot Program. Certainly if the purpose of the Pilot Program is to develop a particular expertise in handling patent infringement cases in specific courts and judges within the federal judiciary, then it stands to reason that the participation of the court in question in the Pilot Program should be an important factor to consider, as it further enhances the interests of judicial economy served by several of the other “public factors.”

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