NOTE: This order is nonprecedential
United States Court of AppeaIs
for the Federal Circuit
IN RE ORACLE CORPORATION,
Petiti0n,er.
Misce11aneous Docket N0. 951
011 Petition for Writ of Mandan:1us to the United
States District C0urt for the Eastern Distriot of Texas in
case n0. 08-CV-371, Judge T. John Ward. §
ON PETITION FOR WRIT OF MANDAMUS
Before LINN, DYK, and PROST, Circu,it Judges.
PROST, Circuit Judge.
ORDER
Orac1e C0rp0ration (Oracle) petitions for a writ of
mandamus to direct the United States District Court for
the Eastern District of Texas to vacate its orders denying
Oracle’s motion to transfer venue, and to direct transfer to
the United States District Court for the Northern District
of Ca1if0rnia. Financia1 Systems Techn01ogy (Inte11.
Property) Pty. Ltd. et a1. (FST) oppose. Orac1e rep1ies.

1N RE oRAcLE coRP 2
I.
In October of 2004, FST brought suit against Oracle
for patent infringement in the Eastern District of TeXas.
Oracle, a California-based company, asked the district
court to transfer the case to Northern District of Califor-
nia pursuant to § 1404(a), which authorizes transfer “for
the convenience of parties and witnesses, in the interest
of justice." In February of 2005, the Eastern District of
TeXas denied the motion to transfer. Despite none of the
parties, witnesses or documents being located in or near
Eastern Texas, the district court determined that no
relevant § 1404(a) factors favored transfer. `
ln June of 2()O5, FST began reissue proceedings at the
Patent and Trademark Office for both patents-in-suit.
Because of those proceedings, the parties agreed-that the
patent infringement suit would be dismissed without
prejudice to FST ref1lling after completion of the reissue
proceedings. On June 20, 2005, the parties entered into a
contract (hereinafter, “the Agreement”), agreeing to
dismiss the action without prejudice and to allow FST to
file another patent infringement action involving the
same patents upon completion of the reissue proceedings.
The Agreement stipulated that “the Eastern District
[of Texas] shall be the sole and exclusive jurisdiction and
venue for future litigation[.]" That stipulation was sub-
ject to Oracle retaining the right to "re-assert a motion to
transfer venue in the Future Litigation which raises new
grounds not previously addressed in connection with the
briefing and argument preceding the Order." The follow-
ing month, the district court dismissed the action without
prejudice pursuant to the Agreement.
After the reissue proceedings were completed, FST
filed the underlying patent infringement action against
Oracle in the Eastern District of Texas. In June of 2009,

3 IN RE ORACLE CORP
Oracle moved to transfer the suit to Northern California
pursuant to § 1404(a). ln addition to arguing the merits
of its motion, Oracle invoked section 2.c.v of the Agree-
ment in arguing, inter alia, that intervening cases issued
by this court and the United States Court of Appeals for
the Fifth Circuit, including In re Volkswagen of Am,erica,
Inc., 545 F.3d 304 (5th Cir. 2008) (en banc), and fn re TS
Tech USA C'orp., 551 F.3d 1315 (Fed. Cir. 200-3) and fn re
Genentech, 566 F.3d 1338 (Fed. Cir. 2{)09), were "new
grounds" within the meaning of the Agreement because
these cases established a "different balance" in consider-
ing a motion to transfer.
The motion was referred to a lV[agistrate Judge who
denied transfer on the ground that “Oracle had failed to
show ‘new grounds’ as to warrant Oracle to request a
transfer under the Agreement.” The Magistrate Judge
noted that although Volkswagen, TS Tech, and Genentech
clarified the standard for obtaining a venue transfer,
those cases continued to apply the same public and pri-
vate interest factors as applied in its previous order in the
earlier action. The Magistrate Judge further explained
that because the same facts and factors were briefed and
argued by Oracle in the preceding transfer motion, Ora-
ole’s assertion for transfer of venue was contrary to the
plain language of the Agreement. Oracle sought recon-
sideration of the l\/Iagistrate Judge’s order. On August 3,
2010, the district court denied Oracle’s request and
adopted the Magistrate Judge’s reasoning.
II.
Applying Fifth Circuit law in cases arising from dis-
trict courts in that circuit, this court has held that man-
damus may be used to correct a patently erroneous denial
of transfer, See In re Nintenclo Co., 589 F.3d 1194 (Fed.
Cir. 2009); In re H0ffmo:n,n-Lo: Roche Inc., 587 F.3d 1333

lN RE ORACLE CORP 4
(Fed. Cir. 2009); Genentech, 566 F.3d at 1348; TS Tech,
551 3d at 1319; Volkswagen, 545 F.3d at 13l5.
ln determining whether the transferee venue is
clearly more convenient, the Fifth Circuit applies the
public and private factors used in forum non conveniens
analysis Volkswogen, 545 F.3d at 314, n.9.1 Here, how-
ever, the court determined the parties’ Agreement ren-
dered such analysis unnecessary. See Fin. Sys. Tech. u.
Oracle Corp., 2:08-CV-371, slip op. at 7 (E.D. TeX. Aug. 3,
2010) ("Because there are no ‘new grounds,’ Oracle has no
basis to re»assert its motion to transfer and the Court
need not determine whether any such transfer would be
appropriate and need not consider any private and public
interest factors in such a transfer analysis.”).
We hold that the district court’s sole reliance on the
parties’ private expression of venue choice and failure to
provide a meaningful evaluation of the § 14Q4(a) factors
was plainly incorrect as a matter of law. In Stewart Org.
v. Ricoh Corp., 487 U.S. 22 (1988), the Court explained
1 As we noted in TS Tech, the private interest fac-
tors include (1) the relative ease of access to sources of
proof; (2) the availability of compulsory process to secure
the attendance of witnesses; (3) the cost of attendance for
willing witnesses; and (4) all other practical problems
that make a trial easy, expeditious and inexpensive The
public interest factors include (1) the administrative
difficulties flowing from court congestion; (2) the local
interest in having localized interests decided at home; (3)
the familiarity of the forum with the law that will govern
the case; and (4) the avoidance of unnecessary problems of
conflicts of laws [or in] the application of foreign law. 551
F.3d at 1519.

5 IN RE ORACLE CORP
that ‘_‘because § 1404(a) call[s] upon the district court, as
opposed to the parties, to weigh in the balance a number
of case-specific factors, "[t]he flexible and individualized
analysis Congress prescribed in § 1404(a) . . . encom-
passes consideration of the parties’ private expression of
their venue preferences.” Id. at 29-3O. Thus, the Court
held, "[t]he forum selection clause, which represents the
parties’ agreement as to the most proper forum, should
receive neither dispositive consideration (as respondent
might have it) nor no consideration . . . but rather the
consideration for which Congress provided in § 1404(a).”
Id. at 32.
Stewart Org. clearly controls the outcome of this peti-
tion. While the Agreement’s venue provision may have
arisen out of distinguishable circumstances from those of
the agreements discussed in Stewart Org., this distinction
is immaterial for purposes of the analysis, and we can
think of no reason why § 1404(a) would not.A also govern
the Agreement.2 To hold otherwise would similarly
frustrate Congress’s placement of discretion with the
court, not the parties, to adjudicate motions for transfer,
Because the court failed to follow Stewart Org. and
meaningfully consider the private and public interest
factors, we grant the petition for the purpose of vacating
the court’s order and direct the court to conduct a proper §
1404(a) analysis and issue a new decision. In reassessing
the matter of transfer, the court’s § 140-4(a) analysis must
2 The Agreement’s venue provision clearly comes
within the definition of a forum selection clause See
Black’s Law Dictionar_'y 726 (9th ed. 2009) (defining "fo-
rum selection clause” as "[a] contractual provision in
which the parties establish the place (such as the country,
state, or type of court) for specified litigation between
them.”).

IN RE ORACLE CORP 6
consider the private and public interest factors in light of
the specific facts and circumstances of the present case
and in accordance with the Volkswagen, TS Tech, and
Genentech decisions
The court should also consider the Agreement. To
that end, we reserve judgment on the court’s interpreta-
tion of "new grounds" and whether Oracle’s proffered
grounds fall within the meaning of that term. However,
to the extent that the court applies this same interpreta-
tion on reconsideration, the court should also consider
whether placing too much emphasis on the parties" con-
tractual agreement is, under the circumstances here, fair
and in the interest of justice See 28 U.S.C. § 1404(a); see
also generally County of Los Angeles v. Fau,s, 48 Cal.2d
672, 680-81 (1957) (“[A] decision of a court of supreme
jurisdiction overruling a former decision is retrospective
in its operation and that the effect is not that the former
decision was bad law but that it never was the law.").
Accordingly,
lT lS ORDERED THAT2
We grant the petition to the extent that we now va-
cate the district court’s order and direct the court to
conduct a proper § 1404(a) analysis and issue a new
decision in accordance with this order.
FOR THE CoURT
 1  /s/ J an Horbaly
Date J an Horbaly
Clerk
l D
l.L$. GOUH'FD7EPPEALS FOR
THE FEDERAL C|RCU|T
N@V' 01 2010
.lAN HORBALY
CLERK

7
cc: Karen G. Johnson-McKewan, Esq.
Scott Lamar Cole, Esq.
IN RE ORACLE CORP
Clerk, United States District Court for the Eastern
District Of Texas
s19

