CAFC Mandamus Decision Forces Acer Dispute to CaliforniaLast Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum.As discussed in earlier posts, Nintendo is one of many recent defendants to execute the Texas Two-Step, which is characterized by a transfer out of Texas  (step 1), followed up by a motion to stay the case pending reexamination in the new forum (step 2).The ‘655 and ‘172 patents at issue in the Acer dispute are currently subject to inter partes patent reexamination at the USPTO. (95/001,284). Likewise, the ‘172 is subject to inter partes reexamination at the USPTO. (95/001,283). In both reexaminations, all claims stand rejected, and both seem destined for appeal in a matter of months. It is worth noting that as recently as September, defendants have been successful in staying cases in the NDCA based upon a mere filing of reexamination request. With the MedioStream patents on their way to BPAI appeal in a few months time, it may be that not only was a battle lost at the CAFC, but perhaps the w

Last Friday the CAFC ordered the District Court for the Eastern District of Texas to transfer venue to the Northern District of California (NDCA) in the case of In re Acer. Acer petitioned to the CAFC for the mandamus as to venue in their patent infringement dispute with MedioStream, a company located in the NDCA. At issue in the case is the infringement of U.S. Patents 7,009,655 and 7,283,172. In ordering the transfer of the case, the CAFC cited the location of the plaintiff in the NDCA as well as 12 of 13 defendants.

The Acer case follows on the heels of In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir 2008) and In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009). Certainly, convenience, cost, and avoiding an EDTX jury were factors in pursuing the venue dispute to the CAFC. However, as most recently demonstrated by Nintendo, perhaps a more compelling factor is the opportunity to shut down the litigation altogether in a friendlier forum.

As discussed in earlier posts, Nintendo is one of many recent defendants to execute the Texas Two-Step, which is characterized by a transfer out of Texas  (step 1), followed up by a motion to stay the case pending reexamination in the new forum (step 2).

The ‘655 and ‘172 patents at issue in the Acer dispute are currently subject to inter partes patent reexamination at the USPTO. (95/001,284). Likewise, the ‘172 is subject to inter partes reexamination at the USPTO. (95/001,283). In both reexaminations, all claims stand rejected, and both seem destined for appeal in a matter of months. It is worth noting that as recently as September, defendants have been successful in staying cases in the NDCA based upon a mere filing of reexamination request. With the MedioStream patents on their way to BPAI appeal in a few months time, it may be that not only was a battle lost at the CAFC, but perhaps the war.