Recommendation to Deny Transfer Motion Where Private and Public Interest Factors Were Neutral and Therefore Defendants Did not Meet Burden to Show Proposed District Was More Convenient Than Eastern District of Texas

November 4, 2011

Round Rock Research ("Round Rock") purchased approximately 4500 patents from Micron Technology. Round Rock then sued Dell and Oracle on certain of these patents for patent infringement in the United States District Court for the Eastern District of Texas. Within a few months of the filing of the lawsuit, Dell and Oracle moved to transfer the case to the Western District of Texas.

In ruling on the motion to transfer, the Magistrate Judge first focused on whether the case could have originally been filed in the Western District of Texas, i.e., whether the Western District of Texas would have personal jurisdiction over the defendants. The Magistrate Judge concluded that it would as Dell is a resident of the Western District of Texas and Oracle sells its accused products worldwide, including within the Western District.

The Magistrate Judge then analyzed the various private and public factors regarding convenience. With respect to the factor pertaining to the relative ease of access to sources of proof, the Magistrate Judge found that this factor was neutral because "the sources of proof originate from varied locations across the country and the globe." With respect to the availability of compulsory process, the district court also found that this factor was neutral even though plaintiff identified a number of witnesses within the Eastern District of Texas because these witnesses were customers of Dell and it was likely that other such witnesses could be found in the Western District of Texas. The Magistrate Judge also found that the cost of attendance at trial for the witnesses was neutral as it would be equally convenient for witnesses out of the state of Texas to travel to the Eastern District or the Western District and neither party identified a particular witness that would be required to travel.

Turning to the public interest factors, the Magistrate Judge first focused on the difficulties flowing from court congestion and found that this factor weighed slightly against transfer because "patent cases in the Eastern District reach trial approximately four months faster than in the Western District" and because "[t]he number of actions per judgeship is doubled in the Western District. Therefore, this factor weighs slightly against transfer."

With respect to the local interest in having localized interests decided at home, the Magistrate Judge found that this factor weighed in favor of transfer because, even though defendants' products are sold nationwide, Dell is headquartered in and, therefore, has a significant connection to, the Western District of Texas. Finally, the Magistrate Judge analyzed whether the familiarity of the forum with the law and the avoidance of unnecessary problems of conflict of laws weighed for or against transfer. The Magistrate Judge concluded that this was a neutral factor because both courts are capable of applying patent law appropriately.

Based on this analysis, the Magistrate Judge recommended denying the motion to transfer because six of the factors were neutral, one weighed in favor of transfer and one weighed against transfer. As a result, the Magistrate Judge determined that that the "Defendants have not satisfied their burden to show that the Western District of Texas is clearly a more convenient forum for this litigation."


Round Rock Research, LLC v. Oracle Corporation and Dell, Inc., Case No. 4:11-CV-332 (E.D. Tex. Oct. 21, 2011)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.