close

For more than four decades, Fenwick & West LLP has helped some of the world’s most recognized companies become, and remain, market leaders. From emerging enterprises to large public corporations, our clients are leaders in the technology, life sciences and cleantech sectors and are fundamentally changing the world through rapid innovation.  MORE >

Fenwick & West was founded in 1972 in the heart of Silicon Valley—before “Silicon Valley” existed—by four visionary lawyers who left a top-tier New York law firm to pursue their shared belief that technology would revolutionize the business world and to pioneer the legal work for those technological innovations. In order to be most effective, they decided they needed to move to a location close to primary research and technology development. These four attorneys opened their first office in downtown Palo Alto, and Fenwick became one of the first technology law firms in the world.  MORE >

From our founding in 1972, Fenwick has been committed to promoting diversity and inclusion both within our firm and throughout the legal profession. For almost four decades, the firm has actively promoted an open and inclusive work environment and committed significant resources towards improving our diversity efforts at every level.  MORE >

At Fenwick, we are proud of our commitment to the community and to our culture of making a difference in the lives of individuals and organizations in the communities where we live and work. We recognize that providing legal services is not only an essential part of our professional responsibility, but also an excellent opportunity for our attorneys to gain valuable practical experience, learn new areas of the law and contribute to the community.  MORE >

Year after year, Fenwick & West is honored for excellence in the legal profession. Many of our attorneys are recognized as leaders in their respective fields, and our Corporate, Tax, Litigation and Intellectual Property Practice Groups consistently receive top national and international rankings, including:

  • Named Technology Group of the Year by Law360
  • Ranked #1 in the Americas for number of technology deals in 2015 by Mergermarket
  • Nearly 20 percent of Fenwick partners are ranked by Chambers
  • Consistently ranked among the top 10 law firms in the U.S. for diversity
  • Recognized as having top mentoring and pro bono programs by Euromoney

MORE >

We take sustainability very seriously at Fenwick. Like many of our clients, we are adopting policies that reduce consumption and waste, and improve efficiency. By using technologies developed by a number of our cleantech clients, we are at the forefront of implementing sustainable policies and practices that minimize environmental impact. In fact, Fenwick has earned recognition in several areas as one of the top US law firms for implementing sustainable business practices.  MORE >

At Fenwick, we have a passion for excellence and innovation that mirrors our client base. Our firm is making revolutionary changes to the practice of law through substantial investments in proprietary technology tools and processes—allowing us to deliver best-in-class legal services more effectively.   MORE >

Mountain View Office
Silicon Valley Center
801 California Street
Mountain View, CA 94041
650.988.8500

San Francisco Office
555 California Street
13th Floor
San Francisco, CA 94104
415.875.2300

Seattle Office
1191 Second Avenue
10th Floor
Seattle, WA 98101
206.389.4510

New York Office
1211 Avenue of the Americas
32nd Floor
New York, NY 10036
212.921.2001

Shanghai Office
Unit 908, 9/F, Kerry Parkside Office
No. 1155 Fang Dian Road
Pudong New Area, Shanghai 201204
P.R. China
+86 21 8017 1200


Litigation Alert: The Federal Circuit Issues Writ of Mandamus to Transfer Patent Suit from the Eastern District of Texas

The Federal Circuit has taken away another tool used by patent plaintiffs to keep lawsuits in the Eastern District of Texas in spite of motions to transfer by defendants. "Non-practicing entities" (known as NPEs or sometimes by a more disparaging term) often attempt to make their lawsuits "stick" in the Eastern District by incorporating in Texas and/or by establishing a "headquarters" in that district. (One of the authors has considered performing an empirical study of how many NPEs list their address as 104 E. Houston Street in Marshall, Texas. 104 E. Houston Street is located next door to the Federal courthouse in Marshall). When considering venue transfer motions, Eastern District judges had previously declined to examine whether such tactics were motivated by litigation strategy or by other considerations. A recent Federal Circuit ruling changes that.

On November 8, 2010, the Federal Circuit in In re Microsoft Corp., No. 944 (Fed. Cir. Nov. 8, 2010) granted Microsoft's petition for a writ of mandamus finding the District Court's denial of Microsoft's motion to transfer pursuant to 28 U.S.C. §1404(a). The Federal Circuit determined that the denial was a clear abuse of discretion and ordered the case to be transferred to the Western District of Washington as the more convenient forum. This decision is the most recent in a line of Federal Circuit decisions ordering transfer out of the Eastern District of Texas. See e.g., In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009) (transfer ordered where plaintiff had no contact with the district); In re Hoffmann-La Roche, Inc., 587 F.3d 1333 (Fed. Cir. 2009) (rejecting a plaintiff's litigation-inspired attempts to create contacts in the jurisdiction for purposes of manipulating venue); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (the trial court failed to perform a meaningful analysis of the factors relating to the convenience of the parties and witnesses); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) (all key witnesses and sources of proof were in transferee forum). In this decision, the Federal Circuit confirmed that tactics designed to establish a presence in a district for the sole (or primary) purpose of maintaining venue there should be rejected.

In August 2009, Allvoice Developments U.S. ("Allvoice") filed suit against Microsoft for patent infringement in the Eastern District of Texas, alleging that Microsoft's XP and Vista systems infringe its patent relating to software that allows voice recognition in word-processing applications. Allvoice, which is apparently based in the United Kingdom, was incorporated in Texas sixteen days before filing the suit. Around that same time, it opened an office in Tyler, Texas. That office employed no one. Customer calls, though directed to the Texas office, were forwarded to London, where all requests and inquiries were handled. Allvoice had also shipped documents related to the litigation to its Texas office just prior to filing suit and claimed that its documents are maintained there. Microsoft moved to transfer the case to the Western District of Washington. The District Court denied the motion, explaining that because Allvoice is incorporated in Texas and has an office in Texas, the district has an interest adjudicating the matter. The Court also gave weight to the fact that Allvoice's documents were located in Texas and several purported third-party witnesses were located closer to Texas than to Washington State.

The Federal Circuit rejected the district court's reasoning, holding that the courts need not "honor connections to a preferred forum made in anticipation of litigation and for the likely purpose to make that forum appear convenient."

In its ruling, the Federal Circuit recognized that Allvoice's asserted ties to Texas were clearly undertaken in anticipation of litigation and should therefore be rejected. It also criticized the District Court for accepting Allvoice's argument that its principal place of business was in the Eastern District "without scrutiny," and instead emphasized the importance that courts "ensure that the purposes of jurisdictional and venue laws are not frustrated by a party's attempt at manipulation." The court likened Allvoice's offices in Tyler, Texas, to those in In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010), reaffirming that offices which "staffed no employees, were recent, ephemeral, and an artifact of litigation and appeared to exist for no other purpose than to manipulate venue" do not establish convenience in the venue analysis. The additional fact that Allvoice also took the step of incorporating in Texas (sixteen days before filing suit) also failed to make venue appropriate.

In reaching its conclusion, the Federal Circuit found that the convenience and fairness to the identified witnesses tipped in favor of Microsoft – all of Microsoft's identified witnesses resided within 100 miles of the transferee venue. In contrast, while Allvoice had identified two witnesses within Texas, the twelve remaining identified witnesses resided outside Texas and would be required to travel in any event.

Over the past two years, the Federal Circuit has steadily removed bases upon which patent plaintiffs have relied to avoid transfer out of the Eastern District of Texas. Microsoft appears to be another step in this process.


For further information, please contact:

Michael J. Sacksteder, Partner, Litigation Group
msacksteder@fenwick.com, 415.875.2450
Ryan J. Marton, Associate, Litigation Group
rmarton@fenwick.com, 415.875.2332
Guinevere Jobson, Associate, Litigation Group
gjobson@fenwick.com, 415.875.2388

©2010 Fenwick & West LLP. All Rights Reserved.

The views expressed in this publication are solely those of the author, and do not necessarily reflect the views of Fenwick & West LLP or its clients. The content of the publication ("content") should not be regarded as advertising, solicitation, legal advice or any other advice on any particular matter. The publication of any content is not intended to create and does not constitute an attorney-client relationship between you and Fenwick & West LLP. You should not act or refrain from acting on the basis of any content included in the publication without seeking the appropriate legal or professional advice on the particular facts and circumstances at issue.