Case: 13-164    Document: 30     Page: 1    Filed: 10/18/2013




           NOTE: This order is nonprecedential.

   United States Court of Appeals
       for the Federal Circuit
                  ______________________

          IN RE ELI LILLY AND COMPANY,
            AND IMCLONE SYSTEMS LLC,
                      Petitioners.
                ______________________

               Miscellaneous Docket No. 164
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the Northern District of Califor-
nia in No. 13-CV-0919, Judge Yvonne Gonzalez Rogers.
                 ______________________

                      ON PETITION
                  ______________________
   Before NEWMAN, PROST, and REYNA, Circuit Judges.
REYNA, Circuit Judge.
                        ORDER
    Eli Lilly and Company et al. (“Eli Lilly”) petition for a
writ of mandamus directing the United States District
Court for the Northern District of California to vacate its
order transferring this case to the United States District
Court for the Central District of California. Genentech
Inc. and City of Hope (“Genentech”) oppose the petition.
Eli Lilly also submits an “emergency motion to stay
transfer proceedings.”
    In its order granting Genentech’s motion to transfer,
the district court noted that the trial judge in the Central
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2                         IN RE ELI LILLY AND COMPANY




District of California had presided over four cases involv-
ing the same family of patents. The district court further
noted that another trial judge in the Northern District of
California had recently transferred a case brought by one
of Eli Lilly’s business partners that involves the same
patent and product to the Central District of California to
apply the expertise the trial judge had gained through
these prior suits. The court thus accorded significant
weight to the fact that transfer would enable a trial judge
greatly familiar with the patents and technologies at
issue to decide the case.
     The district court acknowledged that an agreement
between Genentech and Eli Lilly contained a forum
selection clause that provided any disputes would be
brought in the Northern District of California. However,
because in the district court’s view the gains in judicial
economy would be significant and the clause was largely
for the benefit of Genentech given its headquarters in the
Northern District, the district court granted Genentech’s
motion and transferred the case to the Central District of
California.
    On mandamus, we review an order transferring a case
under 28 U.S.C. § 1404(a) for a clear abuse of discretion.
In re TS Tech USA Corp., 551 F.3d 1315, 1319 (2008). We
consider a determination a clear abuse of discretion if
there is no “rational and substantive legal argument
[that] can be made in support of the rule in question[.]”
In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).
Thus, we will disturb the district court’s transfer order
only if we are convinced that it produced a “patently
erroneous result.” TS Tech, 551 F.3d at 1319.
    Here, we are unable to say that Eli Lilly has made
such a showing. After carefully reviewing the Central
District of California’s prior cases involving the same
family of patents at issue here, the district court conclud-
ed that “gains to judicial efficiency in this case would
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 IN RE ELI LILLY AND COMPANY                               3



likely be substantial.” That conclusion was based on the
fact that the same trial judge in the Central District of
California has already conducted discovery, claim con-
struction, and ruled on motions for summary judgment
involving the same family of patents, and was thus al-
ready greatly familiar with the technology and patent
specification in the present case.
     We give considerable deference to a district court’s
evaluation of the role judicial economy should play in a
transfer decision. See In re Vistaprint Ltd., 628 F.3d
1342, 1347 (Fed. Cir. 2010) (“[I]t is entirely within the
district court’s discretion to conclude that in a given case
the § 1404(a) factors of public interest or judicial economy
can be of ‘paramount consideration,’ . . . and as long as
there is plausible support of record for that conclusion we
will not second guess such a determination, even if the
convenience factors call for a different result.”).
    Deference is particularly appropriate in the present
case given the Central District of California’s prior famili-
arity with the patents and opportunity to resolve two
cases involving the same product and patents. See Cont’l
Grain Co. v. The FBL-585, 364 U.S. 19, 26 (1960) (“To
permit a situation in which two cases involving precisely
the same issues are simultaneously pending in different
District Courts leads to the wastefulness of time, energy
and money that § 1404(a) was designed to prevent.”).
     Eli Lilly relies heavily on the forum selection clause in
its license agreement with Genentech. The district court,
however, did not ignore the clause or applicable law
recognizing that such clauses are entitled to “significant”
consideration. See Stewart Org., Inc. v. Ricoh Corp., 487
U.S. 22, 29 (1988); Jones v. GNC Franchising, Inc., 211
F.3d 495, 498 (9th Cir. 2000). Rather, the court expressly
concluded that “the likely gains to judicial economy out-
weigh the presence of the license agreements’ forum
selection clause” because the judicial system would great-
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4                           IN RE ELI LILLY AND COMPANY




ly benefit from having a trial court already familiar with
the patents and technology try this case alongside of
another pending case involving the same patents. In light
of the persuasive evidence that transfer here would more
efficiently allocate resources among the trial courts, we
are not prepared to hold transferring this case was an
abuse of discretion.
    In sum, Eli Lilly has failed to satisfy the demanding
standard required to justify the issuance of a writ of
mandamus.
      Accordingly,
      IT IS ORDERED THAT:
    (1) Eli Lilly’s petition for a writ of mandamus is de-
nied.
      (2) Eli Lilly’s emergency motion for a stay is moot.


                                     FOR THE COURT

                                     /s/ Daniel E. O’Toole
                                         Daniel E. O’Toole
                                         Clerk


cc: Clerk, United States District Court for the Northern
District of California
    Clerk, United States District Court for the Central
District of California

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