Motion to Transfer Patent Case Denied (citing In re VW II)

J2 Global Communications, Inc. v. Protus IP Solutions, Inc., 2008 WL 5378010(E.D.Tex. Dec 23, 2008) (NO. CIV.A. 6:08-CV-211, CIV.A. 6:08-CV-275, CIV.A. 6:08-CV-262, CIV.A. 6:08-CV-263)
Judge: John Love
Holding: Motion to Transfer Venue DENIED
Interesting fact situation in this, one of the first venue opinions from the Eastern District post-In re VW II.  The plaintiff first filed suit in California, and that case was stayed pending reexamination of one of the four patents asserted.  When the reexam concluded, the plaintiff then filed suit in Texas alleging that patent and a continuation patent against various defendants.  The defendant in California then sought reexamination on a different patent, and sought to stay the litigation as to all patents again citing the pending reexam.  The Texas defendants sought transfer to California.  Plaintiff opposed, since the California defendant was seeking a stay on an unrelated patent, thus preventing the patent whose reexam had concluded from proceeding.
In an opinion that cites and applies for the first time the Fifth Circuit's recent en banc opinion in In re Volkswagen of America, Inc., 545 F.3d 304, 315.(5th Cir.2008), Judge John Love noted that "[t]he moving party must show that transfer is “clearly more convenient.”" in the proposed transferee forum, and cited the eight factors applicable to transfer, per In re VW II.  He discussed the private interest factors and noted that both the parties and the identified witnesses were scattered from California to Washington D.C., unlike VW II (and, incidentally, In re TS Tech, which came out six days after this opinion) but noted that the bulk of the parties' dispute dealt with the public factors due to the existence of the prior litigation. 
Judge Love then detailed the facts involved in several of the "first to file" cases with respect to the issue of judicial economy, and wrote:
"As the cases above illustrate, a court must consider the extent to which transfer will increase judicial economy and lower the risk of inconsistent adjudication. If the overlap between cases is substantial, then transferring the cases to a single judge may increase judicial economy and decrease the risk of inconsistent claim constructions. For example, transfer is most appropriate when one court has extensive familiarity with the technology or the legal issues involved, a claim construction opinion has been prepared, and the cases involve the same or similar defendants with the same or similar products. On the other hand, if the overlap between cases is small then the risk of duplicative judicial work and inconsistent claim constructions is also small. This is particularly true when a court has had limited involvement with the case and the technology, no claim construction opinion has issued, and the cases involve different defendants with different products.  At all times, the burden falls on the party seeking transfer to show that transfer is “clearly more convenient.”"
(Internal citations omitted).  Judge Love concluded that the Defendants had failed to show that transfer is necessary to preserve judicial economy or prevent inconsistent claim constructions.  "Judge Pregerson has not construed any of the patents in the California j2 cases," he observed, thus unlike the other cases "the Court cannot conclude that Judge Pregerson is “intimately familiar” with the technology at issue or that he has issued an “exhaustive” claim construction order.  At most, Defendants have shown that potentially relevant claim construction briefs were filed in Judge Pregerson's Court almost three years ago. Other than ordering the stay, there is no indication that Judge Pregerson had substantial involvement with the j2 California cases either prior to or after the implementation of the stay. Judge Pregerson has construed some patents in the Catch Curve cases, but Defendants have not shown that these cases involve patents similar to the '688 patent. On the contrary, the fact that Judge Pregerson did not stay the Catch Curve cases along with the California j2 cases strongly implies that the two groups of cases involve substantially different patents."
A later section in Judge Love's opinion regarding the "local interest" factor that would catch the Federal Circuit's attention only six days later in In re TS Tech is an application of the Fifth Circuit's Volkswagen opinion to the facts of a patent case.
"Captaris claims that the state of Washington has a greater local interest in the resolution of that case because Captaris is a Washington based company and the center of the allegedly infringing activity is in Washington. This Court has routinely rejected this sort of argument in patent cases. When a company sells allegedly infringing products, or offers allegedly infringing services, nationwide, “no specific locality has a dominant interest in resolving the issue of [patent infringement].” Captaris cites In re Volkswagen for support, but the specific fact pattern in that case is distinguishable. In re Volkswagen was a products liability case involving an automobile collision in Dallas.  After noting that the residents of Dallas had extensive connections to the event giving rise to the lawsuit, the Fifth Circuit found that this factor weighed in favor of transfer. Because Captaris does not dispute that it offers allegedly infringing services nationwide, there is no comparable event in a single district, which gave rise to this case. Thus, the analysis of In re Volkswagen, with regard to the localized interest factor, is inapplicable."
(Internal citations omitted).