Case: 12-136     Document: 11     Page: 1    Filed: 11/26/2012




           NOTE: This order is nonprecedential.

   mniteb ~tates ~ourt of ~eaIs
       for !be jfeberaI ~irtuit

        IN RE PRINCETON DIGITAL IMAGE
                 CORPORATION,
                   Petitioner.


               Miscellaneous Docket No. 136


On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case no.
11-CV-0039, Judge James Rodney Gilstrap.


                     ON PETITION


 Before RADER, Chief Judge, LOURIE and SCHALL, Circuit
                        Judges.
SCHALL, Circuit Judge.

                         ORDER

    This petition for a writ of mandamus concerns
whether a patent infringement suit brought against a
foreign corporation may be transferred pursuant to 28
U.S.C. § 1404(a). Princeton Digital Image Corporation
brought this suit against Ricoh Company, Ltd., a Japa-
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IN RE PRINCETON DIGITAL IMAGE                              2
nese corporation, in the United States District Court for
the Eastern District of Texas. Ricoh asked the court to
transfer the case to the United States District Court for
the Southern District of New York where many of the
potential witnesses reside. That motion was brought
pursuant to section 1404(a), which authorizes change of
venue "for the convenience of parties and witnesses, in
the interest of justice." The district court agreed, and
granted the motion to transfer.

    Princeton now seeks from us a writ of mandamus di-
recting the district court to vacate that ruling on the
ground that the transfer of venue statute cannot be
invoked when venue is proper under section 1391(c)(3).
That statute, in relevant part, provides that "[a] defen-
dant not a resident in the United States may be sued in
any judicial district[.]" 28 U.S.C. § 1391(c)(3).

     To warrant that relief, Princeton must show (1) that it
has no other adequate alternative means to attain the
desired relief and (2) a "clear and indisputable" right to
relief. Cheney v. U.S. Dist. Court, 542 U.S. 367, 380-81
(2004).

    To begin, there is no other adequate alternative
means to vacate the trial court's order granting transfer
of venue. Absent such immediate review, Princeton
would not be able to show that it would have won the case
had it been tried in the Eastern District of Texas. See In
re Volkswagen of Am., Inc., 545 F.3d 304, 318-19 (5th Cir.
2008) (en bane); In re Nat'l Presto Indus., Inc., 347 F.3d
662, 663 (7th Cir. 2003).

    On the merits, however, we think the authority to
transfer here was clear given the language of section
1404(a), which states without hesitation that "a district
court may transfer any civil action to any other district or
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3                             IN RE PRINCETON DIGITAL IMAGE

division where it might have been brought[.]" (Emphasis
added.)

     In fact, that understanding of section 1404(a) in rela-
tion to section 1391(c)(3) was all but determined by the
Supreme Court long ago in Ex parte Collett, 337 U.S. 55
(1949) and United States v. National City Lines, Inc., 337
U.S. 78 (1949). Like Princeton, the plaintiffs in those
cases argued that a trial court could not invoke section
1404(a) when a federal statute provided the right to bring
suit where initially filed. And like Princeton, the plain-
tiffs in Collett and National City Lines argued that trans-
fer under section 1404(a) would nullify other venue
provisions that authorized suit in their chosen district.

    The Court rejected those arguments, holding that the
use of the phrase "any civil action" was intended "without
qualification, without hint that some should be excluded."
Collett, 337 U.S. at 58. The Court went on to explain that
section 1404(a) did not repeal other venue provisions
because these sections of the Judicial Code "deal with two
separate and distinct problems"- while venue provisions
"define the proper forum," the Court explained that
section 1404(a) "deals with the right to transfer an action
properly brought." Id. at 60.

     For its part, Princeton relies on Brunette Machine
Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706
(1972) in urging us to adopt the position that when venue
is properly established under section 1391(c)(3), as it is in
this case in the Eastern District of Texas, all other gen-
eral and special venue laws are inoperable, including
section 1404(a).

    Princeton overreads Brunette. In that case, the Court
reaffirmed the long-standing rule that a patent infringe-
ment suit could be brought against a foreign defendant in
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IN RE PRINCETON DIGITAL IMAGE                              4

any district court, and was not restricted to where the
defendant resides, commits acts of infringement, or has a
regular and established business as otherwise required
under the patent venue statute, 28 U.S.C. § 1400(b). To
that end, the Court explained that section "1391[(c)(3)] is
properly regarded, not as a venue restriction at all, but
rather as a declaration of the long-established rule that
suits against aliens are wholly outside the operation of all
the federal venue laws, general or special." Id. at 714.

     By confirming that the general patent venue limita-
tions of section 1400(b) were inapplicable in suits against
foreign defendants, Brunette did not hold, let alone sug-
gest, that the Court was departing from its prior decisions
in Collett and National City Lines. Instead, Brunette
merely reaffirmed the principle that foreign defendants
should not be able to avoid suit in the United States
based on a lack of residence or citizenship in this country.
See id. at 709; see also In re Hohorst, 150 U.S. 653, 661
(1893). Nothing of that nature is involved when a case is
transferred pursuant to section 1404(a). There is no
question that a federal court will have jurisdiction, only
which federal court is the most convenient and fair for
trial. We therefore discern no error in the trial court's
decision to transfer this case.

      Accordingly,

      It Is Ordered That:

      The petition is denied.

                                     FOR THE COURT

                                     /s/ Jan Horbaly
                                     Jan Horbaly
                                     Clerk
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