IN RE TOYOTA MOTOR CORPORATION, TOYOTA MOTOR SALES, U.S.A., INC., TOYOTA MOTOR ENGINEERING & MANUFACTURING NORTH AMERICA, INC., TOYOTA MOTOR MANUFACTURING KENTUCKY, INC., TOYOTA MOTOR MANUFACTURING, INDIANA, INC., AND GULF STATES TOYOTA, INC.,
On Petition for Writ of Mandamus to the United States District Court for the Eastern District of Texas in Nos. 6:12-cv-404-MHS, 6:12-cv-405-MHS, 6:12-cv-406-MHS, 6:12-cv-408-MHS, 6:12-cv-409-MHS and 6:12-cv-410-MHS, Judge Michael H. Schneider.
THOMAS R. MAKIN, Keynon & Keynon LLP, of New York, New York, for petitioner. With him on the petition were GEORGE E. BADENOCH, JOHN FLOCK, and A. ANTONY PFEFFER.
ALISA A. LIPSKI, Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. of Houston, Texas, for respondent. With her on the response was JAMIE ALAN AYCOCK.
Before PROST, O'MALLEY, and TARANTO, Circuit Judges.
Taranto, Circuit Judge .
In this patent-infringement case, the United States District Court for the Eastern District of Texas entered an order denying a motion to sever the claims against the Gulf States defendant from the claims against all the remaining defendants (we refer to the latter collectively as " Toyota" ), to transfer the resulting separate action against Toyota to the United States District Court for the Eastern District of Michigan, and to stay the retained claims against Gulf States. Toyota and Gulf States seek a writ of mandamus directing the district court to grant the motion. Plaintiff American Vehicular Sciences LLC (AVS), which owns the patents at issue, opposes.
A district court may " transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented." 28 U.S.C. § 1404(a). Applying Fifth Circuit law in cases from district courts in that circuit, this court has granted writs of mandamus to correct denials of transfer that were clear abuses of discretion under governing legal standards. See In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Nintendo, Ltd., 589 F.3d 1194 (Fed. Cir. 2009); In re Genentech Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008); accord In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (en banc).
AVS brought this suit in the Eastern District of Texas in 2012, five months after AVS was incorporated in the Western District of Texas. AVS is a subsidiary of patent-licensing and -enforcing company Acacia Research Inc. and shares an office in the Eastern District of Texas with other subsidiaries of Acacia. At least some of the patents at issue are in the same family as patents that were the subject of cases litigated in the Eastern District of Michigan from the early 2000s to 2011. See, e.g., Auto. Techs. Int'l, Inc. v. Delphi Corp., 776 F.Supp.2d 469 (E.D. Mich. 2011); Auto. Techs. Int'l, Inc. v. Siemens VDO Auto. Corp., 669 F.Supp.2d 836 (E.D. Mich. 2009).
A few months after this suit began, Toyota and Gulf States filed a motion making three related requests. Invoking Fed.R.Civ.P. 21, they moved to sever the claims against Gulf States. Invoking 28 U.S.C. § 1404(a), they moved to transfer the claims against Toyota to the Eastern District of Michigan. After transfer of the claims against Toyota, they argued, the remaining claims against Gulf States should be stayed pending resolution of the transferred case in Michigan. The transfer and stay requests are related because, they said, Gulf States could not be sued in the Eastern District of Michigan. Gulf States is located in Houston, Texas ( i.e., the Southern District of Texas), and is an independent distributor of Toyota vehicles
in Arkansas, Louisiana, Mississippi, ...