  United States Court of Appeals
      for the Federal Circuit
              __________________________

           IN RE BARNES & NOBLE, INC.,
                      Petitioner.
              __________________________

             Miscellaneous Docket No. 162
             __________________________

    On Petition for Writ of Mandamus to the United
States District Court for the Western District of Tennes-
see in No. 12-CV-2823, Chief Judge Jon Phipps McCalla.
               __________________________

   JAMES S. BLACKBURN, Arnold & Porter, LLP of Los
Angeles, California, for petitioner.

    ROBERT E. FREITAS, Freitas Tseng & Kaufman LLP, of
Redwood City, California, for respondent B.E. Technology,
L.L.C. With him on the response was CRAIG R. KAUFMAN.
              __________________________

                    ON PETITION
              __________________________

   Before NEWMAN, PROST, and REYNA, Circuit Judges.
   Opinion for the court filed by Circuit Judge REYNA.
   Dissenting opinion filed by Circuit Judge NEWMAN.
IN RE BARNES & NOBLE, INC.                                2


REYNA, Circuit Judge.
                        ORDER
     Barnes & Noble, Inc. (“Barnes & Noble”) seeks a writ
of mandamus directing the United States District Court
for the Western District of Tennessee to vacate its July
12, 2013 order denying Barnes & Noble’s motion to trans-
fer the case to the District Court for the Northern District
of California and remand with instructions to transfer the
case. B.E. Technology, LLC (“B.E.”) opposes. Barnes &
Noble replies.
    In September 2012, B.E. filed this suit in the Western
District of Tennessee against Barnes & Noble, alleging
that Barnes & Noble’s Nook® devices infringe one of
B.E.’s patents. B.E.’s Chief Executive Officer, Martin
Hoyle (“Hoyle”), is the founder of the company, and the
named inventor on the asserted patent-in-suit. Hoyle has
lived in the Western District of Tennessee since 2006, and
he has run the company from there since 2008. Barnes &
Noble is incorporated in Delaware and headquartered in
New York, but it has an office in Palo Alto, California,
where most of its activities related to the Nook® take
place.
     Barnes & Noble moved to transfer the case pursuant
to 28 U.S.C. § 1404(a). That statute provides that a
district court may transfer a case “for the convenience of
parties and witnesses, in the interest of justice.” Barnes
& Noble argued that only Hoyle is located in the Western
District of Tennessee, whereas many of the relevant
Barnes & Noble witnesses reside in California. Barnes &
Noble also argued that California is where all of its rele-
vant evidence is located. In addition, Barnes & Noble
argued that many third party witnesses with knowledge
about potential prior art are closer to the transferee
venue.
3                                 IN RE BARNES & NOBLE, INC.



    The district court denied the motion, agreeing with
B.E. that the case should remain in Tennessee. The court
acknowledged that party and non-party witnesses reside
in California. However, because transfer would clearly
impose the burden of travel and time away from home for
any witness in Tennessee, the court found that the con-
venience of witness factor did not weigh in favor of trans-
fer. The court further found fault with Barnes & Noble
for not addressing how many of its employees would be
unavailable to testify in Tennessee or why deposition
testimony would not suffice in lieu of live testimony if the
witnesses were unwilling to travel for trial.
     In weighing the other relevant considerations, the dis-
trict court found Barnes & Noble had not demonstrated
the need to transfer the case to the Northern District of
California. As to the parties, the court found both parties
had demonstrated the possibility that business could be
disrupted in one of the fora. Lastly, the court found that
neither trial efficiency nor local interest caused the inter-
ests of justice factor to weigh in favor of transfer.
    The remedy of mandamus is available only in ex-
traordinary situations to correct a clear abuse of discre-
tion or usurpation of judicial power. In re Calmar, Inc.,
854 F.2d 461, 464 (Fed. Cir. 1988). That standard is an
exacting one, requiring the petitioner to establish that the
district court’s decision amounted to a failure to meaning-
fully consider the merits of the transfer motion. See In re
Vistaprint Ltd., 628 F.3d 1342, 1347 (Fed. Cir. 2010). In
reviewing a district court’s ruling on a motion to transfer
pursuant to § 1404(a), we apply the law of the regional
circuit, in this case the Sixth Circuit. See Storage Tech.
Corp. v. Cisco Sys., Inc., 329 F.3d 823, 836 (Fed. Cir.
2003).
    We discern no clear abuse of discretion in the district
court’s decision to deny transfer. It addressed in depth
IN RE BARNES & NOBLE, INC.                               4


the convenience of the witnesses, the convenience to the
parties, and the interest of justice, and in accord with
Sixth Circuit law, did not find that these factors weighed
strongly in favor of Barnes & Noble. See Reese v. CNH
America LLC, 574 F.3d 315, 320 (6th Cir. 2009) (“[U]nless
the balance is strongly in favor of the defendant, the
plaintiff’s choice of forum should rarely be disturbed.”).
    Barnes & Noble’s arguments regarding the conven-
ience of the witnesses were also considered and rejected
by the district court. Barnes & Noble cites no Sixth
Circuit case that would suggest that the district court
erred in requiring it to demonstrate its employees would
be unwilling or unable to testify if the case was tried in
the Western District of Tennessee. Barnes & Noble tries
to draw comparisons between this case and In re Genen-
tech, 566 F.3d 1338 (Fed. Cir. 2009), in which the original
venue “indisputably ha[d] no connection to any of the
witnesses or evidence related to the cause of action.” Id.
at 1340-41. In this case, however, B.E. is based in the
Western District of Tennessee, where its CEO and much
of the relevant evidence are also found. This is thus not a
situation where the district court has no meaningful
connection to the case. 1
    We note that the dissent relies on a series of cases in
which the Federal Circuit reviewed venue transfer under
Fifth Circuit law. See Dissent at 3 (citing In re Nintendo


   1    B.E. further notes that it has brought 18 other ac-
tions in the Western District of Tennessee involving the
same patents at issue in this case. As B.E. correctly
points out, we have held that a district court’s experience
with a patent in prior litigation or whether co-pending
cases involve the same patent are permissible considera-
tions in ruling on a motion to transfer. See Vistaprint,
628 F.3d at 1346-47 & n.3.
5                                IN RE BARNES & NOBLE, INC.



Co., 589 F.3d 1194 (Fed. Cir. 2009), In re Hoffman-La
Roche, 587 F.3d 1333 (Fed. Cir. 2009), In re Genentech,
566 F.3d 1338 (Fed. Cir. 2009), In re Microsoft Corp., 630
F.3d 1361 (Fed. Cir. 2011), In re Zimmer Holdings, Inc.,
609 F.3d 1378 (Fed. Cir. 2010)). Unlike the Sixth Circuit,
however, the Fifth Circuit has expressly held that while
the transferee venue must be “clearly more convenient,”
district courts err when they require that § 1404(a) factors
“must substantially outweigh the plaintiff’s choice of
venue.” In re Volkswagen of America, Inc., 545 F.3d 304,
314 (5th Cir. 2008) (en banc) (emphasis added). The
dissent would give the plaintiff’s choice of forum here
minimal weight so as not to reward “attempts of plaintiffs
that do not practice their patents to rely on mere artifacts
of litigation.” Dissent at 3. But there is no indication on
the record that B.E.’s connection to Tennessee was manu-
factured in anticipation of litigation to make the forum
appear convenient. Based on the record in this case,
“[c]ompelling considerations favor both parties’ positions,
making it difficult to say that the district court would
have abused its discretion had he picked either location as
the more appropriate forum.” Reese, 574 F.3d at 320.
    In sum, Barnes & Noble has failed to meet its exact-
ing burden to demonstrate that the district court was
clearly and indisputably incorrect in concluding that the
case should not have been transferred to the Northern
District of California. We therefore deny its petition.


    Accordingly,
    IT IS ORDERED THAT:
    The petition for writ of mandamus is denied.
IN RE BARNES & NOBLE, INC.                           6


                               FOR THE COURT


February 27, 2014            /s/ Daniel E. O’Toole
   Date                          Daniel E. O’Toole
                                 Clerk of Court
  United States Court of Appeals
      for the Federal Circuit
               __________________________

           IN RE BARNES & NOBLE, INC.,
                    Petitioner.
               __________________________

              Miscellaneous Docket No. 162
              __________________________

    On Petition for a Writ of Mandamus to the United
States District Court for the Western District of Tennes-
see in No. 12-CV-2823, Chief Judge Jon Phipps McCalla.
               __________________________

                     ON PETITION
               __________________________

NEWMAN, Circuit Judge, dissenting.
    Until just prior to filing this and 19 other pending in-
fringement suits in the same forum, the plaintiff B.E.
Technology, LLC was not registered to do business in the
state of Tennessee. The company is run and operated by
the patent owner out of his home. The plaintiff has no
other employees, and does not make, use or sell the pa-
tented subject matter in Tennessee or elsewhere.
    The defendant Barnes & Noble has a large office in
Palo Alto, California, where it employs over 400 people.
The record states that Barnes & Noble employees that are
most knowledgeable about the design, development, and
operation of the accused product work in Palo Alto. The
record also states that substantially all of the documents
relating to the development, design, and components of
the accused product are located in Barnes & Noble’s Palo
IN RE BARNES & NOBLE, INC.                                2


Alto office, including documents relating to device and
component specifications, design drawings, contracts with
key commodity suppliers and software development plans.
Although Barnes & Noble’s accused product is sold na-
tionwide, the Barnes & Noble evidence relevant to this
litigation is located in Northern California.
     Refusal to transfer this case should be reversed, and
the writ of mandamus should issue to account for the
extreme imbalance of convenience as between California
and Tennessee. Although the sole employee of the plain-
tiff may live in Tennessee, we are required to consider not
only the connection of the parties with the plaintiff’s
choice of forum, but also whether the disparity of conven-
ience is so marked as to outweigh the plaintiff’s tradition-
al right to choose the forum. See Piper Aircraft Co. v.
Reyno, 454 U.S. 235, 255-56 (1981) (noting that “the
central purpose of any forum non conveniens inquiry is to
ensure that the trial is convenient,” and thus “a foreign
plaintiff’s choice deserves less deference.”).
    Transferring this case would not simply shift the bur-
den of inconvenience to B.E. Like the district court, my
colleagues ignore the likelihood that a substantial number
of witnesses, including non-party witnesses with relevant
and material information regarding the prior art, are
located in the Northern District of California, while only
one witness is in the Western District of Tennessee.
Thus, the convenience of two venues at issue in this case
is simply not comparable. Moreover, all of Barnes &
Noble’s evidence relating to the accused product is located
in the Northern District of California, making it easier
and more convenient to try this case in the transferee
venue. See In re Genentech, Inc., 566 F.3d 1338, 1345
(Fed. Cir. 2009) (“‘In patent infringement cases, the bulk
of the relevant evidence usually comes from the accused
infringer. Consequently, the place where the defendant’s
3                                IN RE BARNES & NOBLE, INC.



documents are kept weighs in favor of transfer to that
location.’” (citation omitted)).
    Our previous transfer cases well illustrate that the
plaintiff’s choice of forum here should be accorded mini-
mal deference. In analogous circumstances to this case,
this court in In re Nintendo Co., 589 F.3d 1194 (Fed. Cir.
2009) and In re Hoffmann-La Roche, 587 F.3d 1333 (Fed.
Cir. 2009) ordered transfer from the plaintiff’s chosen
forum based on “a stark contrast in relevance, conven-
ience, and fairness between the two venues.” Nintendo,
589 F.3d at 1198; Hoffmann-La Roche, 587 F.3d at 1336;
see also In re Genentech, 566 F.3d 1338 (Fed. Cir. 2009).
More recently, in In re Microsoft Corp., 630 F.3d 1361,
1364 (Fed. Cir. 2011) and In re Zimmer Holdings, Inc.,
609 F.3d 1378, 1381 (Fed. Cir. 2010) we rejected the
attempts of plaintiffs that do not practice their patents to
rely on mere artifacts of litigation.
    The reasons for transfer of the present case are just as
compelling as for this precedent. Consistency of judicial
ruling is no less important in procedural and discretion-
ary matters than in questions of substantive law. See
United States v. Burr, 25 F. Cas. 30, 35 (No. 14,692d) (CC
Va. 1807) (Marshall, C.J.) (“But a motion to [the court’s]
discretion is a motion, not to its inclination, but to its
judgment; and its judgment is to be guided by sound legal
principles.”); see also Van Dusen v. Barrack, 376 U.S. 612,
643 (1964) (“The matters to be weighed in assessing
convenience and fairness are prevasively shaped by the
contours of the applicable laws.”).
    The fact that the transfer decision is within the sound
discretion of the district court does not mean that appli-
cable legal principles may be ignored. See Martin v.
Franklin Capital Corp., 546 U.S. 132, 139 (2005). Con-
sistency and objectivity are essential. Accordingly, “in a
case featuring most witnesses and evidence closer to the
IN RE BARNES & NOBLE, INC.                                4


transferee venue with few or no convenience factors
favoring the venue chosen by the plaintiff, the trial court
should grant a motion to transfer.” Nintendo, 589 F.3d at
1198; see also Reese v. CNH Am. LLC, 574 F.3d 315, 320
(6th Cir. 2009) (stating that the court would reverse a
district court’s balance of the transfer considerations upon
a finding of a clear abuse of discretion). This is such a
case. From my colleagues’ denial of the petition, I must,
respectfully, dissent.
