The e-mails are flying today over the Federal Circuit's decision today to grant a petition for mandamus transferring a Marshall patent case between a Michigan plaintiff and defendants from Ohio and Canada in IN RE TS TECH USA CORPORATION, TS TECH NORTH AMERICA, INC., and TS TECH CANADA, INC.. The decision stated repeatedly that Judge Ward clearly abused his discretion in not transferring the case in light of the Fifth Circuit's en banc decision in In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc) (“Volkswagen II”). The only problem was that In re VW II wasn't issued until six weeks after Judge Ward denied the motion, and my review of the two orders indicates that the en banc opinion was the sole authority for much of what the Federal Circuit said - it couldn't have written the opinion it did without that order. Yet there was no motion for reconsideration before Judge Ward, nor did the FC remand for reconsideration in light of the opinion, so see what effect it would have had. That's even more puzzling in light of the FC's also recent decision in Rentrop v. The Spectranetics Corp., __ F.3d __, __, 89 USPQ2d
__, 2008 WL 5246496, *3 (Fed. Cir. 2008) in which it wrote that “[w]e hold that when there is a
relevant change in the law before entry of final judgment, a party generally
must notify the district court; if the party fails to do so, it waives
arguments on appeal that are based on that change in the law.”). (Thanks to Robert Matthews for the timely cite, which he promises will be discussed in the forthcoming issue of Patent Happenings).
This case will be an interesting one to watch to see what effect it has on motions to transfer at the district court level, petitions for mandamus to the Federal Circuit, and rulings on those motions.