The New ‘Renegade Jurisdiction’: How the Fifth Circuit Can Prevent the Extraordinary Writ of Mandamus from Becoming an Extra-Ordinary Remedy

Jamieson Knopf
Volume 30
,  Issue 3


The Court of Appeals for the Federal Circuit (“Federal Circuit”) made history in 2021 when it granted eighteen mandamus petitions for denied venue-transfer motions under 28 U.S.C. § 1404(a).1Docket Navigator Analytics, Docket Navigator [hereinafter Federal Circuit Mandamus Docket 2021], (last visited Dec. 21, 2022) (running search for Docket Text: mandamus; Courts: Federal Circuit; and Document Filing Date: On or After Jan. 1st, 2021). What is more, all eighteen were directed at Judge Alan Albright of the Western District of Texas (“WDTX”).2Id. Although the Federal Circuit’s use of writs of mandamus to manage the courts within its jurisdiction is not entirely unprecedented,3Paul R. Gugliuzza, The New Federal Circuit Mandamus, 45 Ind. L. Rev. 343, 345–46 (2012) (finding the Federal Circuits historical mandamus grant rate was 10% between 1982 and 2012). no court has ever used the writ this often.

The Federal Circuit itself refused to grant a single mandamus petition under § 1404(a) for its first twenty-five years.4Id. at 381. And even after that, it never granted more than five mandamus petitions in a year.5See Jonas Anderson, Paul Gugliuzza & Jason Rantanen, Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal CircuitPart 3, Patently-O fig.1 (Oct. 21, 2021) [hereinafter Extraordinary Writ: Part 3], (showing the total venue-transfer mandamus petitions granted by the Federal Circuit from 2008 through September 31, 2021). No other court of appeals, by contrast, has even granted eighteen mandamus petitions total since Congress codified § 1404(a) over seventy years ago.6The author developed this empirical data by searching Westlaw for mandamus and 1404(a) under all federal courts, and then filtering out the Federal Circuit and all results for non-appellate courts. The author manually reviewed the 363 case results and tabulated his findings to conclude the proposition above. The circuit courts that granted the largest volumes of mandamus petitions under 28 U.S.C. § 1404(a) since 1948 are the Third Circuit (12), the Fifth Circuit (11), and the Seventh and Eighth Circuits (7). These low grant rates reflect the view taken by most appellate courts: the broad discretion conveyed by § 1404(a) makes it nearly impossible to find a clear abuse of discretion.7Garner v. Wolfinbarger, 433 F.2d 117, 120 (5th Cir. 1970) (noting that only a few litigants have surmounted the formidable obstacles and secured the writ [of mandamus] for venue transfers). Indeed, using the writ of mandamus to overrule a district court judge’s determination of party convenience erodes their congressionally vested discretion. Continued erosion may yield unintended consequences in other areas of law. To understand where this might lead, we must step back and observe where it all began.

Historically, appellate courts used the writ to mandamus—or “command”—an inferior court either to correct an official court action made inconsistent with the court’s jurisdiction or to compel the performance of some judicial duty.8See Mandamus, Black’s Law Dictionary (11th ed. 2019); Robert J. Pushaw, Jr., The Inherent Powers of Federal Courts and the Structural Constitution, 86 Iowa L. Rev. 735, 747 n.45 (2001) (The [Supreme] Court construed the all other writs statutory language [of the Judiciary Act of 1789] narrowly as limited to instances where the proper exercise of jurisdiction would otherwise be defeated. (citing McIntire v. Wood, 11 U.S. (7 Cranch) 504, 505–06 (1813); United States v. Lawrence, 3 U.S. (3 Dall.) 42, 47 (1795))); see also Gugliuzza, supra note 3, at 354 nn.62–63. This framework remained intact for over two hundred years. Along the way, Congress passed § 1404(a), which codified the common-law doctrine of forum non conveniens without its harshest result9Piper Aircraft Co. v. Reyno, 454 U.S. 235, 253 (1981) (Congress enacted § 1404(a) to permit change of venue between federal courts. Although the statute was drafted in accordance with the doctrine of forum non conveniens, it was intended to be a revision rather than a codification of the common law. (citations omitted)).—mandatory case dismissal—and vested the district court with broad discretion to transfer cases to more convenient forums.10Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955). Even with these distinctions, the Supreme Court found that the public- and private-interest factors used under forum non conveniens—known as the Gilbert factors11These factors were established by the Supreme Court in Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508–09 (1947).—applied equally to § 1404(a).12See Ex parte Collett, 337 U.S. 55, 57–58 (1949). But since the mandamus inquiry largely deferred to the district court’s findings, appellate courts rarely granted mandamus petitions.13See, e.g., Ex parte Chas. Pfizer & Co., 225 F.2d 720, 723 (5th Cir. 1955) (requiring the district court to only weigh three things to avoid appellate inquiry: (1) construe and apply the correct statute to case-specific facts; (2) consider the relevant factors; and (3) not clearly abuse its discretion). Yet the twenty-first century ushered in a new mandamus.

The Eastern District of Texas (“EDTX”) fueled the writ’s transformation by amassing an unusually robust patent docket in the rural town of Marshall in the early 2000s.14See Xuan-Thao Nguyen, Justice Scalias Renegade Jurisdiction: Lessons for Patent Law Reform, 83 Tul. L. Rev. 111, 130 & tbl.6 (2008). As Marshall’s docket continued to grow—at one time possessing 43% of the nation’s patent infringement cases—public outcry against the EDTX for purported abuse of power intensified.15Id. at 112 & n.1, 130 & tbl.6; Jonas Anderson, Judge Shopping in the Eastern District of Texas, 48 Loy. U. Chi. L.J. 539, 558 (2016). Seeking to castigate the “renegade jurisdiction,”16Nguyen, supra note 14, at 112 (citing Transcript of Oral Argument at 11, eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (No. 05-130)). the Court of Appeals for the Fifth Circuit (“Fifth Circuit”), sitting en banc, decided its most consequential § 1404(a) mandamus case: In re Volkswagen of America.17545 F.3d 304 (5th Cir. 2008) (en banc). There, the majority applied a new framework for mandamus review, which scrapped fifty years of deference to the district court’s findings in favor of de novo review.18Id. at 316–18; id. at 319 (King, J., dissenting). The Federal Circuit, which must apply local circuit precedent over nonpatent issues,19Jennifer E. Sturiale, A Balanced Consideration of the Federal Circuits Choice-of-Law Rule, 2020 Utah L. Rev. 475, 476. granted its first mandamus petition just two months later, invoking In re Volkswagen of America to mandamus the EDTX in In re TS Tech USA Corp.20551 F.3d 1315, 1322–23 (Fed. Cir. 2008). Even so, the EDTX’s patent docket continued to grow.21See infra Figure 1. The Supreme Court intervened in 2017, ratcheting up the venue requirements for patent litigation in TC Heartland LLC v. Kraft Food Groups Brands LLC (“TC Heartland”).22581 U.S. 258, 269–70 (2017). As a result, the EDTX’s new patent infringement filings were slashed in half.23See infra Figure 1. And these contracted levels remain today.24Id.

But then came Judge Alan Albright in 2018.25PN1523—Alan D. Albright—The Judiciary, Congress, And the WDTX, like its predecessor, began a meteoric rise to become the busiest patent docket in the nation—hosting 25% of the nation’s patent infringement cases.26Ryan Davis, WDTX Now Has 25% of All US Patent Cases, Law360 (July 2, 2021),; see infra Figure 2. This time was different, though: the WDTX had a get-out-of-TC Heartland-free card—Austin, Texas—which provided the district with a potent venue hook.27J. Jonas Anderson & Paul R. Gugliuzza, Federal Judge Seeks Patent Cases, 71 Duke L.J. 419, 445–46 (2021). Thus, the WDTX’s patent docket grew rapidly.28Id. at 447 fig.2. Part of this growth stemmed from Judge Albright’s initial refusal to transfer cases under § 1404(a)—a refusal that drew criticism.29See, e.g., Mark Curriden, Patent Lawyers: WDTX Waco Order Unfair, Misguided and Hypocritical, Tex. Lawbook (July 28, 2022), (citing that a major complaint against Judge Albright is that he refuses to transfer patent cases to other districts, which legal experts confirm was the case during the first two years he was on the bench). After a few years of this practice, the Federal Circuit’s frustration prompted a flurry of mandamus orders directed to Judge Albright.30See Federal Circuit Mandamus Docket 2021, supra note 1.

The disagreement between Judge Albright and the Federal Circuit centralizes around their differing applications of three Gilbert factors.31The three factors include (1) the relative ease of access to sources of proof; (2) the cost of attendance for willing witnesses; and (3) the administrative difficulties flowing from court congestion. Gulf Oil Co. v. Gilbert, 330 U.S. 501, 508 (1947). First, Judge Albright discounts the sources-of-proof factor given the prevalence of eDiscovery;32See, e.g., XR Comms., LLC v. Google LLC, No. 21-cv-00625, 2022 WL 3702271, at *4 (W.D. Tex. Aug. 26, 2022) (The Federal Circuit has time and again rebuffed district courts for grounding the sources-of-proof factor in reality and, for example, tempering the weight accorded to the location of electronic documents that can be transmitted across the globe with great ease.). the Federal Circuit, by contrast, elevates the physical location of documents and servers above the actual effect this has on party convenience.33See, e.g., In re Juniper Networks, Inc., 14 F.4th 1313, 1321 (Fed. Cir. 2021) (What matters is the relative access to sources of evidence in the two competing forums. And while electronic storage of documents makes them more widely accessible than was true in the past, that does not make the sources-of-proof factor irrelevant. (citation omitted)). Second, Judge Albright believes that witness convenience is best served through remote proceedings when available;34See, e.g., XR Comms., 2022 WL 3702271 at *4 (In step with [its] Luddite jurisprudence, the [Federal Circuit] will not start appreciating advents in technology now. [R]ecent developments, like the mainstreaming of remote testimony, will not render this factor superfluous.’” (quoting In re Volkswagen of Am., Inc., 545 F.3d 304, 316 (5th Cir. 2008)). . the Federal Circuit, again, ignores the effects of technology on convenience and instead compares the costs for a given witness to attend a future trial in each venue.35See, e.g., In re Apple Inc., 979 F.3d 1332, 1341–42 (Fed. Cir. 2020). Third, Judge Albright believes that party convenience is served by resolving a given case in the venue that can bring the case to final judgment or dismissal more quickly;36See, e.g., XR Comms., 2022 WL 3702271 at *9 (stating that [a] faster average time to trial means more efficient and economical resolutions of the claims at issue, but noting that the Federal Circuit has accorded [this factor] strikingly little weight in recent history) (emphasis added). the Federal Circuit believes that empirical case-disposition data on trial times or scheduled trial dates are too tenuous to be given much—if any—weight.37See, e.g., In re Apple, 979 F.3d at 1344 (rejecting the lower courts empirical explanation of why the case would be resolved faster in the WDTX and reiterating that a courts general ability to set a fast-paced schedule is not particularly relevant to this factor). As a result, the Federal Circuit believes that Judge Albright should have transferred many cases he chose to retain.38See, e.g., id. at 1346 (finding that Judge Albright clearly abused his discretion in denying transfer).

But the resulting mandamus mania, though generating headlines,39See, e.g., RPX Corporation, United States: Federal Circuit Continues Steady Drip of Judge Albright Venue Rebukes After 2021s Mandamus Wave, mondaq (July 6, 2022),; Logan Murr, CAFC Corrects Albright on Transfer Again, Granting Mandamus to Volkswagen and Hyundai, IPWatchdog (Mar. 10, 2022),; Dennis Crouch, Mandamus Monday, Patently-O (Nov. 15, 2021), failed to change litigant behavior as patent-infringement filings at the WDTX continued at elevated levels.40See infra Figure 2 (noting that the WDTXs 2021 docket had more patent infringement filings in 2021 than the preceding five years). In response, then-Chief Judge Orlando Garcia of the WDTX issued an order on July 25, 2022, that required all patent cases filed in Waco to enter a lottery system that would randomly assign each case to any of the WDTX’s twelve judges.41Order Assigning the Business of the Court as It Relates to Patent Cases, (W.D. Tex. July 25, 2022) [hereinafter Garcia July Order],

And so the search for a new premier patent docket would need to begin anew. But then-Chief Judge Garcia issued an amended order on November 15, 2022—three days before taking senior status—that modified the WDTX’s current case-assignment structure.42Amended Order Assigning the Business of the Court (W.D. Tex. Nov. 15, 2022) [hereinafter Garcia Amended Order],; Dennis Crouch, Waco May Be Heating up Again This Winter (Dec. 15, 2022), While this order appears to have rescinded his July 25 order (and thus the Waco patent lottery system), patent-infringement filings in Waco remained sparse for December 2022.43See Sarah Ring, Is More Big Change Afoot in the Western District of Texas Patent Docket?, JDSupra (Dec. 15, 2022), Even still, unless Chief Judge Alia Moses issues her own order reinstituting the lottery, the controversy between Judge Albright and the Federal Circuit is likely to reignite soon. This Comment argues that a more permanent solution than a revocable-at-will standing order is required and explores who should provide it.

The best option is Congress, which could resolve this controversy through legislation. But Congress has done little to intervene other than to express its disdain for Judge Albright’s purported abuse of discretion.44See Letter from Senator Patrick Leahy, Chair, Subcommittee on Intellectual Property, and Senator Thom Tillis, Ranking Member, Subcommittee on Intellectual Property, to Chief Justice John Roberts (Nov. 2, 2021) [hereinafter Senator IP Letter],; see also Dennis Crouch, Letter to the Chief Justice About Judge Albright, Patently-O (Nov. 3, 2021),; Gene Quinn & Steve Brachmann, Criticism of Judge Albright Looms Large in Tillis Letters to Hirshfeld, Chief Justice Roberts, IPWatchdog (Nov. 3, 2021, 5:55 PM), And its current legislative impotence makes new legislation unlikely. Congress also has the power to impeach Judge Albright.45U.S. Const. art. 1, § 2, cl. 5. But when comparing his actions to previously impeached Article III judges,46See, e.g., Nixon v. United States, 506 U.S. 224, 226–28 (1993) (summarizing Judge Walter Nixons conviction and impeachment for making false statements before a grand jury); Michael J. Broyde, Expediting Impeachment: Removing Article III Federal Judges After Criminal Conviction, 17 Harv. J.L. & Pub. Pol’y 157, 164–65 (1994) (discussing Judge Harry E. Claibornes impeachment in 1986 for tax fraud). this option appears more theoretical than actual. To its credit, Congress requested that Chief Justice John Roberts direct the Judicial Conference to recommend reforms for the current situation.47See Senator IP Letter, supra note 44; see also Dennis Crouch, Supreme Court and Judicial Conference Considering Judge Albrights Problematic Patent Court, Patently-O (Dec. 31, 2021), But new rules from the Judicial Conference usually take about three years before they gain final approval.48The Judicial Conference: A Century of Service to the Federal Judiciary, U.S. Courts (Sept. 23, 2022),

The judiciary could also intervene. The Supreme Court, for example, could step in and provide guidance as it did in TC Heartland. But affirming a Federal Circuit mandamus grant would unlikely change very much; patent litigators’ preference for the WDTX appears unaffected by mandamus orders.49See infra Figure 2. Nor do Judge Albright or the Federal Circuit show any signs of changing their jurisprudential views.

Another solution, which this Comment endorses, asks the Fifth Circuit to intervene by clarifying that the Gilbert factors need not be rigidly applied through the lens of the 1950s—a time when neither the internet nor cell phones existed. Rather, they should be applied to reflect the realities of modern litigation on party convenience, for this is what the text of § 1404(a) contemplates. Indeed, the Fifth Circuit’s recent In re Planned Parenthood Federation of America., Inc.5052 F.4th 625 (5th Cir. 2022). decision so stated.51Id. at 630 (reiterating that the Gilbert factors are not necessarily exhaustive or exclusive,’” which implies that there is room in the transfer analysis for consideration of the realities of modern litigation) (quoting In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008)). .

Clarifying how the Gilbert factors should be applied today would produce several benefits, such as (1) aligning the current mismatch between the text of § 1404(a) and the Federal Circuit’s wooden application of the Gilbert factors; (2) allowing the Fifth Circuit to resolve a local issue within its geographic jurisdiction; and (3) binding the Federal Circuit’s analyses for all future mandamus petitions.

The purpose of this Comment is not to critique the Fifth Circuit’s or Federal Circuit’s mandamus jurisprudence. Instead, this Comment strives to add another voice to the debate. While the Federal Circuit’s mandamus jurisprudence under § 1404(a) has been studied extensively,52See, e.g., Gugliuzza, supra note 3, at 383–85. this Comment takes a different approach—exploring the Fifth Circuit’s mandamus jurisprudence.

This Comment proceeds in three parts. Part I explores the writ of mandamus’s English roots and traces its development in American law generally and in the Fifth and Federal Circuits specifically. Part II reviews why applying the Gilbert factors without accounting for the effects of technology on modern litigation has led to erroneous results. Part III discusses the strengths and weaknesses of the proposed solution and explains how the Fifth Circuit can proceed to resolve the Federal Circuit–Judge Albright showdown.

I.      Mandamus: From English Origins to Modern American Doctrine

Today’s appellate courts use the writ of mandamus as “a command” to direct an “inferior court” to perform a particular function or duty.53Mandamus, Black’s Law Dictionary (11th ed. 2019). But as Justice Oliver Wendell Holmes Jr. once said: “The history of what the law has been is necessary to the knowledge of what the law is.”54See Harold Weintraub, English Origins of Judicial Review by Prerogative Writ: Certiorari and Mandamus, 9 N.Y.L.F. 478, 478 (1963) (quoting Oliver Wendell Holmes, Jr., The Common Law 37 (1881)). Thus, we begin where so many of our nation’s storied legal traditions and apprehensions derive from—the King of England.55For a more comprehensive review of the writ of mandamus’s history and interpretation, see 16 Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure §§ 3932–3935 (3d ed. 2019). See also Gugliuzza, supra note 3, at 352–61 (providing a comprehensive review of both the writ’s history and the Federal Circuit’s mandamus jurisprudence from inception through 2012); Weintraub, supra note 54, at 479–83; Edward Jenks, The Prerogative Writs in English Law, 32 Yale L. J. 523, 523, 530 (1923) (reviewing the use of the prerogative writs in England).

A.      English Origins: The Kings Prerogative Writs

Early English kings asserted absolute power over their subjects.56See, e.g., 1 William Blackstone, Commentaries *231. King James I, for example, likened a subjects questioning of his authority to a subjects questioning of gods existence: [A]s it is atheism and blasphemy in a creature to dispute what the deity may do, so it is presumption and sedition in a subject to dispute what a king may do in the height of his power . . . .” Id. But as England’s central monarchy expanded after the Norman Conquest, the King’s power became more dispersed.57See Jenks, supra note 55, at 523. During the Tudor Period, for example, Parliament passed the Star Chamber Act of 1487,581 Hen. 7, c. I (1486). which created an executive tribunal distinct from the common-law courts.59See Weintraub, supra note 54, at 483. The Privy Council, described as “the upholders of the power of the Executive,”60Jenks, supra note 55, at 526. operated “through the prerogative courts of Star Chamber.”61Weintraub, supra note 54, at 483.

The Privy Council’s remedial powers were as broad as they were nebulous, limited only by the breadth of the King’s wishes.62Id. Unbound by common-law precedent, it could “bring a complete and inexorable justice” to the people, protecting them “against the exactions and corruptions of the king’s officials.”63Id. (quoting J. Hurstfield, Constitutional Development, in Life Under The Tudors 29, 31–32 (1950)). The Privy Council enforced its decisions by using several “prerogative writs”—previously used only by the King himself—including the writs of habeas corpus, prohibition, quo warranto, certiorari, and mandamus.64See Jenks, supra note 55, at 527–30. While each prerogative writ has its own story of common-law incorporation, the writ of mandamus was woven into the judiciary’s common-law fabric by Sir Edward Coke—the “father” of mandamus—while he presided on the King’s Bench in 1615.65Weintraub, supra note 54, at 488. But see Robert H. Howell, An Historical Account of the Rise and Fall of Mandamus, 15 Victoria U. Wellington L. Rev. 127, 128–32 (1985) (arguing that the writ of mandamus has roots far deeper than Baggs Case).

For most scholars, the watershed decision for the common-law writ of mandamus is Baggs Case,66See James Baggs Case (1615) 77 Eng. Rep. 1271; 11 Co. Rep. 93 b. in which James Bagg challenged his removal from a magistrate position by his borough mayor and fellow magistrates for alleged misconduct.67Id. at 1275; 11 C0. Rep. at 96 a. Chief Justice Coke, unpersuaded by the evidence presented, gave the borough two options: (1) restore Mr. Bagg to office or (2) show cause as to why he was removed.68Id. at 1271–72; 11 C0. Rep. at 93 b–94 a. Their attempt to show cause failed,69Id. at 1281; 11 Co. Rep. at 99 b. and the King’s Bench issued a writ to compel the borough to restore Mr. Bagg to his prior office.70Id. The court, however, technically issued a writ of restitution in response to Mr. Baggs claim. But the effect of the writ was to command a government official to perform an action, which in substance functioned like a writ of mandamus. Id. at 1280; 11 Co. Rep at 99 a–99 b. Chief Justice Coke supported his authority to issue such a writ with a sweeping declaration:

[The] King’s Bench [has] authority, not only to correct errors in judicial proceedings, but other errors and misdemeanors extra-judicial, tending to the breach of peace, or oppression of the subjects, or to the raising of faction, controversy, debate, or to any manner of misgovernment; so that no wrong or injury, either public or private, can be done but that it shall be (here) reformed or punished by due course of law.71Id. at 1277–78; 11 Co. Rep. 98 a (footnotes omitted).

In effect, Chief Justice Coke asserted that the King’s Bench possessed the same breadth of equitable power as the King’s prerogative courts.72See Weintraub, supra note 54, at 489 (This was an extraordinary assertion of power, authority and independence . . . .”). This assertion was dubious at best. But common-law tradition ratified his invocation over the next century. Indeed, Blackstone’s recitation of the writ in 1765 supports this interpretation.73Blackstone, supra note 56, at *110 (“A writ of mandamus is, in general, a command issuing in the king’s name from the court of king’s bench, and directed to any person, corporation, or inferior court of judicature, within the king’s dominions; requiring them to do some particular thing therein specified, which appertains to their office and duty, and which the court of king’s bench has previously determined, or at least supposes, to be consonant with right and justice.” (emphasis omitted)).

To sum up, the mandamus began with the English King, who vested this power in the Privy Council, which Lord Coke arrogated for the King’s Bench, and common-law tradition ratified. The substance of this writ of mandamus largely resembles the American writ used today. Yet the American incorporation and development of the writ added further nuance.

B.      American Lineage: From Common-Law Doctrine to Federal Statute

Early Article III courts used the writ of mandamus similarly to England’s common-law courts. The Founders understood both the utility and the need to allow the judiciary to compel performance of its orders by obstinate judges or members of the coequal branches. Thus, the First Congress expressly empowered the judiciary to issue writs—including the writ of mandamus—under the Judiciary Act of 1789 in Sections 13 and 14.74See Judiciary Act of 1789, ch. 20, §§ 13–14, 1 Stat. 73, 81–82 (1789). Particularly relevant is Section 14, which vested in all U.S. courts the “power to issue . . . all other writs not specially provided for by statute, which may be necessary for the exercise of their respective jurisdictions, and agreeable to the principles and usages of law.”75Id. § 14.

Early Supreme Court decisions interpreted the “all other writs” provision “narrowly[,] as limited to instances where the proper exercise of jurisdiction would otherwise be defeated.”76Pushaw, supra note 8, at 474 n.45. Indeed, the writ of mandamus was usually invoked for only two reasons: (1) to correct an official court action made inconsistent with its jurisdiction; or (2) to compel the performance of some official duty.77See id. In the watershed case of Marbury v. Madison,785 U.S. (1 Cranch) 137 (1803). for example, Chief Justice John Marshall found that a writ of mandamus would have been the proper remedy to compel then-Secretary of State James Madison to deliver Mr. Marbury’s commission.79Id. at 139. The scope of permissible applications for the writ changed little over the next century; federal courts continued to invoke the writ “in the same manner as English courts at common law.”80Gugliuzza, supra note 3, at 354 & nn.62–63 (citing United States ex rel. Dunlap v. Black, 128 U.S. 40, 48 (1888) (compelling executive official to act when refusing to take a required action); Ex parte Bradstreet, 32 U.S. (7 Pet.) 634, 648–50 (1833) (ordering inferior courts to reinstate improperly dismissed cases); Ex parte Wood, 22 U.S. (9 Wheat.) 603, 614–15 (1824) (mandating a district judge to conduct a patent validity trial)).

This practice was codified in Title 28 of the Judiciary Act of 1948.81See Judiciary Act of 1948, ch. 646, §§ 1404, 1651, 62 Stat. 869, 937, 944; see also Whitney R. Harris, Survey of the Federal Judicial Code: The 1948 Revision and First Interpretive Decisions, 3 Sw. L.J. 229, 234–37 (1949) (discussing both substantive and procedural law changes arising from the 1948 codification). Both provisions relevant to this Comment remain substantively unchanged since their codification:

* 28 U.S.C. § 1651(a): “The Supreme Court and all courts established by Act of Congress may issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.”8228 U.S.C. § 1651(a).

* 28 U.S.C. § 1404(a): “For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought . . . .”8328 U.S.C § 1404(a).

While § 1651 used language consonant with the Judiciary Act of 1789, the meaning of § 1404(a) was less clear. The precursor to § 1404, the doctrine of forum non conveniens, permitted a competent court to dismiss a case in which venue was proper “for the convenience of the litigants and the witnesses, [if] it appear[ed] that the action should proceed in another forum” where it could have been brought initially.84Forum Non Conveniens, Black’s Law Dictionary (11th ed. 2019). For those who seek a deeper understanding of the adoption and development of forum non conveniens in American jurisprudence, see generally Paxton Blair, The Doctrine of Forum Non Conveniens in Anglo-American Law, 29 Colum. L. Rev. 1 (1929). The Supreme Court’s 1947 decision in Gulf Oil Corp. v. Gilbert85330 U.S. 501 (1947). is often cited as a modern explanation of the doctrine. Gilbert’s holding required district courts to weigh eight factors when deciding whether to dismiss a case for forum non conveniens.86Id. at 508–09. The four private interests 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 trial of a case easy, expeditious, and inexpensive.87Id. at 508; see also Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 & n.6 (1981) (citing Gilbert, 330 U.S. at 508). The four public interests 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 conflicts of laws problems.88Gilbert, 330 U.S. at 508–09; see also Piper Aircraft, 454 U.S. at 241 & n.6 (citing Gilbert, 330 U.S. at 509).

But Congress created a substantial ambiguity when it enacted § 1404. Forum non conveniens required a district court to dismiss a case in full.89See Gilbert, 330 U.S. at 503. Section 1404(a), however, permitted a district court to exercise broad discretion and either retain jurisdiction over the case or transfer it to another court when it was “[f]or the convenience of parties and witnesses” and “in the interest of justice.”9028 U.S.C. § 1404(a).

Predictably, the question arose: did Congress intend to merely codify forum non conveniens with § 1404(a) or was this an intentional revision of the common-law doctrine? The Supreme Court resolved this ambiguity just a year later. In Ex parte Collett,91337 U.S. 55 (1949). the Court held that a decision to transfer venue required the district court to apply the forum non conveniens factors.92Id. at 58, 72. The Supreme Court also admonished the petitioners for seeking a writ of mandamus, for the writ was an “extraordinary remed[y]” that was “reserved for really extraordinary causes.”93Id. at 72 (quoting Ex parte Fahey, 332 U.S. 258, 259–60 (1947)). This heightened threshold remains good law today.94See, e.g., Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380 (2004) (This is a drastic and extraordinary remedy reserved for really extraordinary causes.’” (quoting Ex parte Fahey, 332 U.S. at 259–60)).

Six years later, the Court decided Norwood v. Kirkpatrick,95349 U.S. 29 (1955). which clarified the relationship between forum non conveniens and § 1404(a). There, the Court discussed Congress’s adoption of § 1404(a), finding that it “intended to do more than just codify the existing law on forum non conveniens,” for Congress “was revising as well as codifying.”96Id. at 32 (emphasis removed) (citing Ex parte Collett, 337 U.S. at 55–61). Since Congress had excised “[t]he harshest result” of forum non conveniens—”dismissal of the action”—the Court inferred that Congress had “intended to permit courts to grant transfers upon a lesser showing of inconvenience.”97Id. But this did not mean § 1404(a) created a new test. Rather, the Court explained that its decision did not change the relevant factors or the importance of plaintiff’s choice of forum but emphasized “that the discretion to be exercised is broader.”98Id.

By the 1950s, the writ of mandamus’s substantive features were remarkably unchanged from the prerogative writ employed by the Privy Council. And this continued for another fifty years in the Fifth Circuit.

C.      The Fifth Circuits Mandamus Jurisprudence

At first, the Fifth Circuit’s use of the writ of mandamus for § 1404(a) motions was limited. It generally deferred to the district court’s fact finding, affording it wide discretion.99See, e.g., Ex parte Chas. Pfizer & Co., 225 F.2d 720, 722–23 (5th Cir. 1955). In the 1950s, the Fifth Circuit granted only one out of six relevant mandamus petitions.100See Contl Grain Co. v. Fed. Barge Lines, Inc., 268 F.2d 240, 243–44 (5th Cir. 1959) (denying petition because location of witnesses supported venue transfer), affd, 364 U.S. 19 (1960); Ex parte Blaski, 245 F.2d 737, 737–39 (5th Cir. 1957) (denying petition because location of witnesses and economy of litigation supported transfer); Ex parte Pharma-Craft Corp., 236 F.2d 911, 912 (5th Cir. 1956) (per curiam) (denying petition because the economy of litigation from joining three other suits in the requested forum superseded the plaintiffs choice of forum and pray for a reduced time to trial); Ex parte Chas., 225 F.2d at 723 (denying petition because the district court judge properly weighed the interests and balanced the necessary factors); Crummer Co. v. Du Pont, 196 F.2d 468, 469 (5th Cir. 1952) (denying petition because venue transfer is non-appealable and interlocutory petition for mandamus had been rejected); Atl. Coast R.R. Co. v. Davis, 185 F.2d 766, 769–70 (5th Cir. 1950) (granting petition because the district courts decision to transfer venue based on two mistrials without considering the standard venue transfer factors amounted to a renunciation of jurisdiction). But even that one grant was anomalous because the district court improperly rested its decision on two mistrials in the district court.101Atl. Coast R.R. Co., 185 F.2d at 769–70.

That said, one of the cases denying mandamus merits further discussion. Ex parte Chas. Pfizer & Co.102225 F.2d 720 (5th Cir. 1955). was the seminal case that governed § 1404(a) mandamus petitions in the Fifth Circuit until In re Volkswagen of America.103See, e.g., In re Horseshoe Ent., 337 F.3d 429, 432 (5th Cir. 2003) (stating that Ex parte Chas. had not been overruled or criticized by this Court); Novartis Vaccines & Diagnostics, Inc. v. Wyeth, No. 2-08-cv-0006, 2010 WL 3447806, at *3 (E.D. Tex. Aug. 30, 2010) (citing In re Volkswagen of Am., Inc., 506 F.3d 376, 380 (5th Cir. 2007), for forum non conveniens factors); Mod. Am. Recycling Serv., Inc. v. Dunavant, No. 10-3153, 2011 WL 1303136, at *4 (E.D. La. Mar. 31, 2011) (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 315 (5th Cir. 2008) (en banc), for forum non conveniens factors). In Ex Parte Chas., Pfizer received a chemical patent and sued the defendants for patent infringement in the Northern District of Georgia.104Ex parte Chas., 225 F.2d at 720–21. The defendants moved to transfer venue under § 1404(a) to the Southern District of New York, which the court granted.105Id. at 721. Denying Pfizer’s petition for a writ of mandamus to transfer the case back, the Fifth Circuit held that the district court had not abused its discretion.106Id. at 723. The Fifth Circuit’s cursory review of the lower court’s decision is instructive. The court declared that it “should not entertain motions for Writs of Mandamus” under § 1404(a) unless the district court failed to “construe and apply the statute,” “consider the relevant factors,” or the Fifth Circuit needed to “correct a clear abuse of discretion.”107Id. Indeed, the court revealed that it “shall not attempt to recite the facts nor to weigh and balance the factors which the District Court was required to consider in reaching its decision.”108Id. In other words, if the district court judge analyzed a § 1404(a) request by evaluating all the Gilbert factors based on case-specific facts, the Fifth Circuit deferred to its ruling. The Court’s decision in Ex parte Pharma-Craft Corp.109236 F.2d 911 (5th Cir. 1956). confirms this understanding.110Id. at 912 (refusing to grant mandamus because the district court considered all pertinent facts, properly construed the statute and did not abuse its discretion).

No relevant § 1404(a) mandamus petitions were granted in the 1960s.111See Miller v. Connally, 354 F.2d 206, 209 (5th Cir. 1965); Humble Oil & Refin. Co. v. Bell Marine Serv., Inc., 321 F.2d 53, 57 (5th Cir. 1963); In re Sw. Mobile Homes, Inc., 317 F.2d 65, 66–67 (5th Cir. 1963); United States v. Choate, 276 F.2d 724, 729 (5th Cir. 1960). Yet the Fifth Circuit did elaborate on the defendant’s burden of proof in Humble Oil & Refining Co. v. Bell Marine Service, Inc.112321 F.2d 53, 56–57 (5th Cir. 1963). That case concerned a tug boat collision that occurred on the Mississippi River.113Id. at 55. Reviewing the defendant’s venue-transfer mandamus petition, the Fifth Circuit scrutinized the lower court’s analysis by reviewing whether each relevant fact weighed for or against transfer.114Id. at 56. For the Southern District of Texas, the court found: (1) three ex-crew members of the plaintiff were Texas residents not subject to compulsory process in Louisiana; (2) the plaintiff named these ex-employees as probable witnesses; (3) their testimony appeared crucial, with sufficient detail of their testimony provided in an affidavit; (4) two of the three parties (Humble and Bell) had principal offices and officers in Houston; (5) no party had its principal office in Louisiana; and (6) the tug boat was registered in Houston. Id. For the Eastern District of Louisiana: (1) one of Humbles witnesses resided in Louisiana; (2) the manager of one of the defendants companies resided in Louisiana; (3) the manager stated his witnesses were in Louisiana, but he did not name them or describe their testimony; (4) the collision occurred in Louisiana; and (5) the related proceeding in Louisiana would save time, cost, and judicial resources if they could run a consolidated trial. Id. With factors pointing in both directions, the Fifth Circuit denied the petition, holding that since the district court relied on the proper factors and relevant facts, the decision to transfer “was a matter to be weighed by the District Court.”115Id. at 57. The Fifth Circuit extended this further in the 1970s, declaring in Garner v. Wolfinbarger116433 F.2d 117 (5th Cir. 1970). that the “basis for a writ [of mandamus]” is not just that the requested forum is “on balance . . . a more convenient forum.”117Id. at 120–21. The Fifth Circuit upheld Garner eleven years later in Castanho v. Jackson Marine, Inc., 650 F.2d 546, 550–51 (5th Cir. 1981). Indeed, the Fifth Circuit clarified that the balance of convenience factors had to weigh “strongly in favor of the defendant.”118In re McDonnell-Douglas Corp., 647 F.2d 515, 517 (5th Cir. 1981) (emphasis added) (citing Gulf Oil Co. v. Gilbert, 330 U.S. 501 (1947)). The Fifth Circuit made no relevant doctrinal changes to its mandamus jurisprudence in the 1990s.

All in all, the Fifth Circuit hewed closely to the framework in Ex parte Chas. for nearly fifty years. It clarified, however, that a defendant needed to show that the convenience factors weighed strongly in their favor; merely showing that the requested forum was on balance more convenient was insufficient.119See, e.g., Garner, 433 F.2d at 121. This framework also reflected the Supreme Court’s original interpretation of § 1404(a) in Ex parte Collett and Kirkpatrick, later reaffirmed by Piper Aircraft Co. v. Reyno.120454 U.S. 235, 257 (1981); see, e.g., Norwood v. Kirkpatrick, 349 U.S. 29, 32 (1955). But then something changed. And the Fifth Circuit created a new mandamus framework out of whole cloth.

Between 2002 and the Fifth Circuit’s seminal In re Volkswagen of America decision in 2008, the court granted all four121There are actually seven relevant decisions; however, three are not counted. Two opinions are superseded by en banc decisions. See In re Volkswagen of Am., Inc., 506 F.3d 376 (5th Cir. 2007); In re Volkswagen of Am., Inc., 223 F. Appx 305 (5th Cir. 2007). The remaining case was reheard and withdrawn. See In re Horseshoe Ent., 305 F.3d 354 (5th Cir. 2002). relevant § 1404(a) mandamus petitions.122In re Volkswagen AG, 371 F.3d 201, 206 (5th Cir. 2004); In re Horseshoe Ent., 337 F.3d 429, 435 (5th Cir. 2003); In re DaimlerChrysler Corp., 294 F.3d 697, 700 (5th Cir. 2002); In re DaimlerChrysler Corp., Nos. 02-10029, 02-10034, 02-10035, 02-10036, 02-10037, 2002 U.S. App. LEXIS 8756, at *7–8 (5th Cir. Mar. 8, 2002). Two of these cases, however, were granted because of jurisdictional defects related to orders issued by a district court that directed parties under the jurisdiction of another court. See, e.g., In re DaimlerChrysler Corp., 294 F.3d at 700. The Fifth Circuit’s earliest jurisprudential shift occurred in In re Horseshoe Entertainment,123337 F.3d 429 (5th Cir. 2003). where the district court found the following: (1) all parties resided in the requested forum, which “militate[d] in favor of . . . transfer”; (2) the location of books and records was irrelevant because of advances in electronic records and document exchange practices; (3) the possibility of delay or prejudice from transfer weighed for retention; and (4) the plaintiff’s choice of forum and the location of counsel also favored retention.124Id. at 433–34. The court rejected transfer, concluding the relevant factors were “evenly divided.”125Id. at 434 (quoting Rogers v. Horseshoe Ent., No. 01–CV–295 (M.D. La. July 2, 2002) (opinion available on transferred docket as Rogers v. Horseshoe Ent., No. 02-cv-02026, (W.D. La. Sep 20, 2002), ECF No. 50).

The Fifth Circuit disagreed, ordering transfer and admonishing the lower court for making three errors: (1) using the location of counsel as a relevant factor; (2) discounting the relevance of the location of books and records; and (3) considering the “possibility of delay or prejudice” as a relevant factor.126Id. at 435 (quoting In re Horseshoe Ent., No. 01–CV–295). The first and third errors, it stated, concerned irrelevant factors that should not have been considered.127Id. The second error, by contrast, concerned a relevant factor improperly weighed.128Id. In support, the Fifth Circuit cited Ex parte Chas., finding that the lower court failed to “consider the relevant factors incident to ruling.”129See In re Horseshoe, 337 F.3d at 432 (citing Ex parte Chas. Pfizer & Co., 225 F.2d 720 (5th Cir. 1955), as Ex parte Pfizer & Co. and referring to the standards of review as the Pfizer Standards). In dissent, Judge Pedro Benavides found that “[a]ll necessary facts and factors were considered by the district court,” and because the “transfer statute was properly construed,” the court should “not even attempt to weigh and balance the factors.”130Id. at 435 (Benavides, J., dissenting). He also characterized the majority’s analysis as a “de novo review.”131Id.

The Fifth Circuit doubled down on this “de novo review” in In re Volkswagen AG,132371 F.3d 201 (5th Cir. 2004). reviewing the district court’s analysis factor by factor, granting mandamus and largely discounting the district court’s conclusions.133Id. at 204–06. Yet this new framework had not been adopted in full by the Fifth Circuit.134See, e.g., In re Volkswagen of Am. Inc., 223 F. Appx 305, 306–07 (5th Cir. 2007) (denying mandamus), revd on rehg, 506 F.3d 376 (5th Cir. 2007). Thus, to enshrine the current majority position of the Fifth Circuit, the court reviewed a previous case en banc where mandamus had been denied at first but granted on rehearing.135In re Volkswagen of Am., Inc., 545 F.3d 304, 307–08 (5th Cir. 2008) (en banc). This case was In re Volkswagen of America.136Id.

In re Volkswagen of America was a products liability case brought by the plaintiff for injuries sustained in a car accident in his Volkswagen.137Id. at 307. Volkswagen moved to transfer the case from the EDTX to the Northern District of Texas (“NDTX”) because (1) the accident occurred in Dallas; (2) the accident witnesses were in Dallas; (3) the third-party defendant lived in Dallas; (4) neither the plaintiffs nor the witnesses lived in the EDTX; (5) no sources of proof were in the EDTX; and (6) no facts giving rise to the suit were tied to the EDTX.138Id. at 307–08.

The majority began by stating that it declined to “replace a district court’s exercise of discretion with our own; we review only for clear abuses of discretion that produce patently erroneous results.”139Id. at 312. It then concluded “that the district court gave undue weight to the plaintiffs’ choice of venue, ignored our precedents, misapplied the law, and misapprehended the relevant facts” and therefore held “that the district court reached a patently erroneous result and clearly abused its discretion in denying the transfer.”140Id. at 309. Table 1 below summarizes the four contested district court findings juxtaposed to the Fifth Circuit majority’s findings.


Table 1: In re Volkswagen of America: Venue-Transfer Factor Determinations by the EDTX and the Fifth Circuit Majority141Id. at 316–18..
Venue-Transfer Factor EDTX Fifth Circuit Majority
(1) Relative Ease of Access to Sources of Proof Neutral because of the realities of eDiscovery in modern litigation. Favored transfer because even though electronic documents reduced the sources of proof burden, the NDTX possessed physical evidence of the crash at issue.
(2) Availability of Compulsory Process Neutral because the district court’s subpoena power could ultimately compel third-party witnesses to attend trial. Favored transfer because some non-party witnesses may fall outside the EDTX’s subpoena power.
(3) Cost of Attendance for Willing Witnesses Neutral because the defendant had failed to designate key witnesses and Dallas’s proximity to Marshall made any increased cost to the witnesses negligible. Favored transfer because many witnesses were over 100 miles from the EDTX courthouse, which increased witness inconvenience.
(4) Local Interest in Deciding Case Neutral because Marshall’s citizens had the same interest as any other city in knowing whether defective Volkswagens were sold nearby. Favored transfer because a generalized interest does not constitute a sufficient nexus to create a localized interest.


Judge Carolyn King wrote for the dissent and rejected most (if not all) of the majority’s analysis.142Id. at 319–27 (King, J., dissenting). She began with the following admonishment: “Whether we agree with the district court’s decision . . . is not controlling . . . [because] when the district court acts within its power and authority, mandamus is inappropriate to challenge . . . [its] decision.”143Id. at 320. For support, Judge King started with the text of § 1404(a): Congress’s use of “may” meant that a change of venue request need not ever be approved by a district court.144Id. at 321–22; see also 28 U.S.C. § 1404(a) (a district court may transfer) (emphasis added). Indeed, if “a matter is committed to discretion,” she stated, then “it cannot be said that a litigant’s right to a particular result is clear and indisputable.”145In re Volkswagen of Am., 545 F.3d at 326 (quoting Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980)).

Next, Judge King repudiated the majority’s analysis of each private interest factor.146Id. at 322–23. Beginning with the sources-of-proof factor, she noted that since both districts use Electronic Case Files (“ECF”), any relevant documents “will be converted to electronic form” whether they are “displayed on monitors in Dallas or Marshall.”147Id. at 322. Second, Judge King rejected the majority’s alleged “avalanche of motions to quash,” as a theoretical but not a practical concern.148See id. What is more, she noted that products liability cases hinge on expert testimony, and Volkswagen had not alleged that its experts lived in Dallas.149Id. at 320. Turning to the third contested factor, Judge King criticized the majority’s 100-mile rule as arbitrary and untethered to modern litigation because cases rarely go to trial.150Id. at 322–23; see also Joff Wild, Why Plaintiffs in US Patent Cases Who Understand the Odds of Victory Are Almost Always Best Off Settling, Lexology (Feb. 16, 2018), (In 2016 there were 5,100 patent litigation lawsuit filings. The vast majority of patent lawsuits settle[d] before trial—95% to 97% of them.). She also chided the majority for ignoring the Supreme Court’s warning in Will v. United States,151389 U.S. 90 (1967). which stated that “mandamus must not devolve into ‘interlocutory review of nonappealable orders on the mere ground that they may be erroneous.’”152In re Volkswagen of Am., 545 F.3d at 324 (King, J., dissenting) (emphasis added) (quoting Will, 389 U.S. at 98 n.6).

After In re Volkswagen of America, the Fifth Circuit’s factor-by-factor de novo review has fully supplanted precedents like Ex parte Chas.153Compare Def. Distrib. v. Bruck, 30 F.4th 414, 434–36 (5th Cir. 2022) (reviewing the district courts application of each § 1404(a) factor), with Ex parte Chas. Pfizer & Co., 225 F.2d 720, 723 (5th Cir. 1955) (We shall not attempt to recite the facts nor to weigh and balance the factors which were considered by the district court). The framework has also been extended to intra-district venue transfers.154See, e.g., In re Radmax, Ltd., 720 F.3d 285, 288–90 (5th Cir. 2013) (granting petition for an intra-district transfer after reviewing all eight convenience factors and finding five factors were neutral, two weighed slightly in favor of transfer, and one clearly favored transfer). And because the Federal Circuit is precedentially bound on matters of procedure by the appellate court with jurisdiction over the appealed-from district court,155See, e.g., In re Barnes & Noble, Inc., 743 F.3d 1381, 1383 (Fed. Cir. 2014); Sturiale, supra note 19, at 476. this decision created a ripple effect that would forever alter the Federal Circuit’s patent litigation jurisprudence. We now explore the ramifications of In re Volkswagen of America at the Federal Circuit.

D.      The Federal Circuits Original Mandamus Jurisprudence

The effects of In re Volkswagen of America were as striking as they were immediate. Before that decision, the Federal Circuit had denied every venue-transfer mandamus petition it had received—all twenty-two of them.156See Gugliuzza, supra note 3, at 346. But before discussing In re Volkswagen of America’s progeny, this Comment provides some background on the Federal Circuit.

Congress passed the Federal Courts Improvement Act in 1982, which merged the United States Court of Customs and Patent Appeals and the appellate branch of what is now the Court of Federal Claims to create the Federal Circuit.157See Federal Courts Improvement Act of 1982, Pub. L. No. 97-164, §§ 106, 117, 122, 127, 96 Stat. 25, 28, 32, 36–38 (1982); see also Ellen E. Sward & Rodney F. Page, The Federal Courts Improvement Act: A Practitioners Perspective, 33 Am. U. L. Rev. 385, 385–86 (1999). Congress created the court to serve several purposes: fostering nationwide uniformity in patent law interpretation; reducing forum-shopping by mandating all patent appeals to be heard by one court; creating judicial efficiency through specialization; and allowing the federal appellate courts to better attend to their ever-increasing caseloads.158See Sward & Page, supra note 157, at 386–89. Unique to the Federal Circuit, Congress imposed a “choice-of-law” regime for non-patent issues,159See Sturiale, supra note 19, at 476 (discussing how the choice-of-law regime binds the Federal Circuit by its own substantive patent law precedent, but for non-patent issues, the regional circuit with appellate jurisdiction over the appealing district court binds the Federal Circuit). which requires the court to “apply the law of the regional circuit” when evaluating § 1404(a) motions to transfer.160See, e.g., In re Barnes & Noble, Inc., 743 F.3d 1381, 1383 (Fed. Cir. 2014). But its power to mandamus, like its sister circuits, remained rooted in the All Writs Act.16128 U.S.C. § 1651(a).

The Federal Circuit’s early writs of mandamus were granted solely for “traditional purposes,” such as “reigning in a court that was acting beyond its authority or compelling a district court to exercise jurisdiction.”162See Gugliuzza, supra note 3, at 368 (footnotes omitted). This use tracked the practices of both the late-eighteenth-century Supreme Court and the pre-twenty-first-century Fifth Circuit.163See, e.g., Ex parte Wood, 22 U.S. (9 Wheat.) 603, 614–15 (1824); In re Galiardi, 745 F.2d 335, 337 (5th Cir. 1984) (per curiam). Faithfully applying the Fifth Circuit’s mandamus precedent under Ex parte Chas., the Federal Circuit rejected every venue-transfer mandamus petition it received for over twenty-five years.164See Gugliuzza, supra note 3, at 346, 381.

But a perfect storm was brewing. The EDTX had been making a name for itself. It employed targeted case management procedures through local patent rules to create a pro-plaintiff forum that guaranteed quick resolutions.165See Nguyen, supra note 14, at 112 n.1, 134 (2008). EDTX’s “rocket docket” was burgeoning, with patent filings increasing ten-fold over five years.166Id. at 112, 130–31. Scholars and jurists decried the EDTX, and Justice Antonin Scalia famously coined it the “renegade jurisdiction” in 2006.167Id. at 112; see also id. at 112 n.1 (listing sources that capture public opinion towards the EDTXs patent-docket proliferation). With the cacophony of critics growing each year, a consensus emerged that the EDTX’s ability to exert jurisdiction over future patent infringement actions should be limited.168Jonas Anderson, Congress as a Catalyst of Patent Reform at the Federal Circuit, 63 Am. Univ. L. Rev. 961, 982–96 (2014) [hereinafter Anderson, Congress as a Catalyst] (discussing how both Congress and the Federal Circuit each took decisive steps to police the EDTX in response to the public outcry surrounding forum-shopping at the EDTX); see also Nguyen, supra note 14, at 143–51 (discussing the efforts of corporate lobbyists and Congress to police the EDTX).

Since two Fifth Circuit panels had recently granted mandamus petitions in In re Horseshoe Entertainment and In re Volkswagen AG, one could argue that the Federal Circuit already had the authority to mandamus the EDTX for abusing its discretion by refusing to grant venue-transfer motions. But uprooting twenty-five years of practice and relying on two newer—and possibly rogue—Fifth Circuit panel decisions was a shaky foundation for the Federal Circuit to flex its authority on. And then came In re Volkswagen of America, which the Fifth Circuit decided sitting en banc, solidifying its new de novo review standard for § 1404(a) mandamus petitions. The Federal Circuit could now apply a more muscular mandamus review and check the EDTX for exceeding its jurisdiction. It did so just two months later.

E.      The Renegade Jurisdiction for Patent Litigation: The EDTX

In In re TS Tech USA Corp.,169551 F.3d 1315 (Fed. Cir. 2008). the petitioner sought mandamus from the Federal Circuit to direct transfer of its patent infringement case from the EDTX to the Southern District of Ohio.170Id. at 1317. The petitioner contended that Ohio was more convenient because (1) the physical evidence was predominately there; (2) the key witnesses all lived in Ohio, Michigan, or Canada; and (3) “none of the parties were incorporated in Texas or had offices located in the [EDTX].”171Id. at 1318. The defendant countered that since several vehicles with the “allegedly infringing headrest assembly had been sold in Texas,” the district had a vested interest in the litigation and venue was proper.172Id. The district court denied the transfer request.173Id.

The Federal Circuit began its review by tipping its hat to the Fifth Circuit, embracing the “patently erroneous result” standard in In re Volkswagen of America.174Id. at 1319 (citing In re Volkswagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc)). In like manner, the court continued with the same factor-by-factor review as the Fifth Circuit in In re Volkswagen of America, identifying “several key errors”:175In re TS Tech USA Corp., 551 F.3d at 1320. (1) “weigh[ing] the plaintiff’s choice [of venue] as a ‘factor’ against transfer”; (2) “ignor[ing] Fifth Circuit precedent in assessing the cost of attendance for witnesses”; (3) improperly finding the sources-of-proof factor neutral because eDiscovery offset any inconvenience created by physical documents in Ohio; and (4) contradicting Fifth Circuit precedent by finding the availability of infringing vehicles in the venue sufficient to create an adequate local interest to retain the case in the EDTX.176Id. at 1320–21. The Federal Circuit downplayed the incongruity of applying a venue-transfer analysis from a mass-tort case to a patent infringement case, finding no legally relevant distinction between them.177Id. at 1321. For example, a sources-of-proof favoring the location of physical evidence makes sense when the key proof is a physical (and totaled) car that cannot be moved from one district to another without significant cost. . It then arrived at a circular conclusion, finding that the district court reached a “[p]atently [e]rroneous” result because TS Tech “ha[d] met its difficult burden of demonstrating a clear and indisputable right to a writ,” analogizing the case to In re Volkswagen of America.178Id. at 1321–22.

In the year following the In re TS Tech USA Corp. decision, the Federal Circuit granted three out of the five § 1404(a) mandamus petitions it received—all from the EDTX.179See In re Nintendo Co., 589 F.3d 1194, 1201 (Fed. Cir. 2009) (granting mandamus); In re Hoffmann-La Roche, Inc., 587 F.3d 1333, 1335 (Fed. Cir. 2009) (granting mandamus); In re Genentech, Inc., 566 F.3d 1338, 1348–49 (Fed. Cir. 2009) (granting mandamus); In re Volkswagen of America, Inc., 566 F.3d 1349, 1351–52 (Fed. Cir. 2009) (denying mandamus); In re Telular Corp., 319 F. Appx 909, 912 (Fed. Cir. 2009) (denying mandamus). Although one of the cases in which mandamus was denied, In re Telular Corp.,180319 F. Appx 909 (Fed. Cir. 2009). applied a deferential standard of review that required only “a rational legal argument” from the district court,181See id. At 912. This appears to have been one last attempt by the panel to constrain the courts recent mandamus expansion. But the panels attempt was ultimately unsuccessful. this analytical framework was anomalous compared to the Federal Circuit’s other mandamus decisions in 2009—In re Genentech, Inc.182566 F.3d 1338 (Fed. Cir. 2009). and In re Nintendo Co.183589 F.3d 1194 (Fed. Cir. 2009). In both cases, the lower court rested its decision on the inconvenience imposed on overseas witnesses by the chosen venue, which should have supplied the “rational legal argument” necessary to prevail under In re Telular Corp.184See In re Genentech, Inc., 566 F.3d at 1343–44; In re Nintendo Co., 589 F.3d at 1198–99. Yet mandamus was granted in both cases.185See In re Genentech, Inc., 566 F.3d at 1348; In re Nintendo Co., 589 F.3d at 1201. To that end, the Federal Circuit continued to mandamus the EDTX by relying on two main factors: the location of witnesses and sources of proof.186See, e.g., In re Acer Am. Corp., 626 F.3d 1252, 1255–56 (Fed. Cir. 2010) (granting mandamus because “a substantial number of party witnesses” resided “in or close to the Northern District of California,” as did a “significant portion of the evidence,” which “significantly favor[ed] transfer”); In re Microsoft Corp., 630 F.3d 1361, 1363–64 (Fed. Cir. 2011); In re Apple, Inc., 581 F. App’x 886, 889 (Fed. Cir. 2014) (“On the Apple side of the balance are eight identified witnesses while on the EON side of the balance are none. Such a strong showing of convenience weighs heavily in favor of transfer.”).

The EDTX remained in the Federal Circuit’s crosshairs from 2009 through 2017, comprising 122 out of 333 mandamus requests—around 37% of all mandamus petitions to the Federal Circuit.187Jonas Anderson, Paul Gugliuzza & Jason Rantanen, Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal CircuitPart 2, Patently-O fig.1 (Oct. 20, 2021) [hereinafter Extraordinary Writ: Part 2], All the while, patent infringement filings in the EDTX exploded, peaking in 2015 with 2,540 patent cases—43% of the nation’s patent docket.188Owen Byrd, Lex Machina 2015 End-of-Year Trends: Patent Litigation, Lex Machina fig.3 (Jan. 7, 2016), Congress proposed several reforms to patent venue requirements to address this concern.189Anderson, Congress as a Catalyst, supra note 168, at 985–1004. Yet all the proposed reforms, which began in 2005 and continued until Congress passed the America Invents Act in 2011, did not succeed.190See id. Finally, the Supreme Court intervened in its 2017 TC Heartland decision, which constrained the EDTX’s patent jurisdiction by imposing stricter venue requirements.191See TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258, 268–270 (2017. Patent filings in the EDTX plunged, shown by Figure 1.

Figure 1: Patent Litigation Filings in the EDTX by Year192See Docket Navigator Analytics, Docket Navigator (Dec. 26, 2021), (searching analytics for cases filed: Courts: Eastern District of Texas and Document Filing Date: On or After Jan. 1st, 2008). For an explanation of why patent filings decreased in 2016 (before the Supreme Court’s TC Heartland decision), see Michael Loney, Patent Litigation Cools in the Eastern District of Texas, ManagingIP (July 29, 2016), (discussing how an anticipated amendment to the Federal Rules of Civil Procedure in December 2015 caused a spike of over 800 cases to be filed in November 2015, which would have likely otherwise been filed in 2016).

With the EDTX sufficiently neutered by the TC Heartland decision, the outcry surrounding its patent litigation empire quieted. But then the Senate confirmed a new WDTX judge in September 2018.193PN1523—Alan D. Albright—The Judiciary, supra note 25. Enter Alan Albright.

F.      The NEW Renegade Jurisdiction for Patent Litigation: The WDTX

Judge Albright was appointed to the Waco division of the WDTX in 2018.194Id. As of April 2023, he remains the sole judge over this division.195See Judges Directory & Biographies, U.S. Dist. Ct. W. Dist. Tex., (providing information on the WDTXs judges and divisions). And the WDTX’s local rules ensured that any plaintiff which filed in the Waco division would have Judge Albright preside over its case.196Amended Order, supra note 42. Since venue is based on federal districts and not federal divisions, if venue was proper anywhere in the WDTX—including Austin (often called Silicon Valley II)197See, e.g., Austin, Nicknamed Silicon Hills, Is on Its Way to Beginning an Even Bigger Tech Hub, RecruitAbility (Apr. 19, 2022) (referring to Austin as Silicon Hills),—venue was also proper in the Waco division.198See, e.g., In re Cray, Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017) ([O]ur analysis of the case law and statute reveal three general requirements relevant to the [venue] inquiry: (1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant. If any statutory requirement is not satisfied, venue is improper under § 1400(b). (emphasis added)). This introduced another wrinkle into the venue-transfer equation that allowed the WDTX to withstand the Supreme Court’s recent tightening of venue requirements. The EDTX, by contrast, had only three larger cities—each a suburb of Dallas.199Court Information, U.S. Dist. Ct. E. Dist. of Tex., (referring to Plano, McKinney, and Frisco). The jurisdictional hook of Austin, then, could put large tech companies in the crossfire of various nonpracticing entities (NPEs), also known as “patent trolls.”200See, e.g., Anderson & Gugliuzza, supra note 27, at 422 (noting that over 85 percent of Wacos patent suits [we]re filed by nonpracticing entities (NPEs, or more pejoratively, patent trolls)—companies that do not make anything but that exist solely to enforce patents). . Shortly after Judge Albright’s confirmation, an explosion of patent litigation ensued. Filings increased nearly ten-fold in the WDTX from 2018 to 2020, shown below in Figure 2.201See Derek Freitas & BakerHostetler, 2020 Patent Litigation: Year in Review, JDSupra (Mar. 25, 2021),


Figure 2: Patent Litigation Filings in the WDTX by Year202See Docket Navigator Analytics, Docket Navigator (Dec. 26, 2021), (searching analytics in Patent Library for cases filed: Courts: Western District of Texas and Document Filing Date: On or After Jan. 1st, 2015).

Just as with the EDTX before it, the WDTX’s spike in patent infringement filings, combined with Judge Albright’s interest in retaining patent cases, increased mandamus petitions at the Federal Circuit: one in 2019, eleven in 2020, and forty-nine in 2021.203See Extraordinary Writ: Part 2, supra note 187, at fig.1 (using the 2019, 2020, and part of the 2021 figures); Federal Circuit Mandamus Docket 2021, supra note 1 (using results to quantify Federal Circuit mandamus petitions for 2021 not reflected by Figure 1 in the Anderson article (10/1/2021-12/31/2021)). The Federal Circuit reviewed these petitions with increasing skepticism, employing the same de novo review it applied in In re TS Tech USA Corp.204551 F.3d 1315 (Fed. Cir. 2008).

In In re Apple Inc.,205979 F.3d 1332 (Fed. Cir. 2020). for example, Apple moved to transfer from the WDTX to the Northern District of California (“NDCA”).206Id. at 1335. Table 2 below summarizes the differences between the conclusions drawn by the district court, which denied Apple’s venue-transfer request, and the Federal Circuit majority, which granted Apple’s mandamus petition.207Id. at 1336, 1347.



Table 2: In re Apple: Venue-Transfer Factor Determinations by the WDTX and the Federal Circuit Majority208Id. at 1339–45.
Venue-Transfer Factor WDTX Federal Circuit Majority
(1) Relative Ease of Access to Sources of Proof Slightly favored transfer because the location of witnesses favored transfer and the location of documents was neutral. Favored transfer because the lower court didn’t properly weigh the various sources of proof, especially those in the NDCA.
(2) Cost of Attendance for Willing Witnesses Neutral because the inventors were closer to the WDTX, but most of the party witnesses resided in NDCA. Favored transfer because the third-party witnesses would be only marginally inconvenienced with a trial in California instead of Texas, and both parties had several party witnesses in the NDCA.
(3) Practical Problems Weighed heavily against transfer because the case had progressed substantially and the NDCA had greater case congestion from its larger civil docket. Favored transfer slightly because there would be judicial economy to resolve this case with Apple’s other pending cases in the NDCA. It rejected the district court’s reasoning because the significant steps were taken after Apple filed its transfer motion, and historically the NDCA had a faster time to trial than the WDTX.
(4) Administrative Difficulties Flowing from Court Congestion Weighed against transfer because the scheduled trial date was faster than NDCA’s historical time to trial. Neutral because the court’s ability to set an early trial date was not that relevant to the court congestion factor.
(5) Local Interest in Deciding Case Neutral because Apple had a substantial presence in both the WDTX and NDCA. Favored transfer because the events giving rise to the suit occurred in the NDCA, where Apple maintains significant ties to the community.


Judge Kimberly Moore dissented vigorously, rebuking the majority for using the court’s mandamus jurisdiction to “exercise de novo dominion . . . over the district court’s individual fact findings and the balancing determination that Congress has committed ‘to the sound discretion of the trial court.’”209Id. at 1347 (Moore, J., dissenting). She also underscored Apple’s substantial ties to the WDTX: “Apple maintains a large campus [in the WDTX] employing thousands of people,” which manufactures one of the accused products, hosts “third-party information and potential witnesses,” and makes adjudication in the WDTX “convenient for potential witnesses and sources of proof” and “would not impose a significant hardship on Apple.”210Id. Judge Moore concluded by characterizing the majority’s decision as “simply substitut[ing] its judgment that transfer should be ordered for that of the district court,” which she found insufficient to “warrant the extraordinary remedy of mandamus.”211Id. at 1353.

The de novo review employed by the majority in In re Apple, Inc. governed the Federal Circuit’s WDTX mandamus petitions for the rest of 2021 and most of 2022.212See, e.g., In re Apple, Inc., No. 2022-128, 2022 WL 1196768, at *2–5 (Fed. Cir. Apr. 22, 2022) (conducting an extensive review and rejecting the courts conclusions on six factors and ordering transfer); In re Juniper Networks, Inc., 14 F.4th 1313, 1318–19, 1321 (Fed. Cir. 2021) (finding eleven witnesses in the NDCA to one in the WDTX a striking imbalance, and that even though Juniper maintains evidence on servers in other locations [than the NDCA], since none is in the WDTX, the court clearly erred); In re Samsung Elecs. Co., 2 F.4th 1371, 1379 (Fed. Cir. 2021) (finding that since the petitioners submitted undisputed affidavits identifying over a dozen third-party individuals with relevant and material information as residing in Northern California both factors weighed clearly towards transfer.). Compared to the historical mandamus grant rate of 10% by the Federal Circuit,213Gugliuzza, supra note 3, at 345–46. 2021 was an aberration: the court granted 60% (18/30) of the § 1404(a) mandamus petitions against Judge Albright.214See Extraordinary Writ: Part 2, supra note 187, at fig.1 (using the 1/1/2021–9/30/2021 figures); Federal Circuit Mandamus Docket 2021, supra note 1 (adding the docketed mandamus petitions from 10/1/2021–12/31/2021).

Judge Albright’s prodigious patent docket, combined with the Federal Circuit’s frequent mandamusing of him, attracted substantial media attention.215See, e.g., Miriam Rozen, How Waco Became a Patent Litigation Hotspot, Fin. Times (June 15, 2022),; Dani Kass, Judge Albright Only Got More Popular in 2021, Law360 (May 18, 2022),; Gene Quinn, The Federal Circuits Obsession with Judge Albright Is Becoming Increasingly Bizarre, IPWatchdog (Sept. 29, 2021),; Logan Murr, Albright Rebuked Again by CAFC After Letting Second Transfer Motion Linger, IPWatchdog (Mar. 12, 2021), Senators Thom Tillis and Patrick Leahy sent a joint letter to Chief Justice Roberts, highlighting their concerns about Judge Albright and asking the Chief Justice to recommend legislative solutions for Congress.216See Senator IP Letter, supra note 44. In turn, Chief Justice Roberts directed the Judicial Conference to review the situation and recommend legislative reforms.217See John G. Roberts, Jr., U.S. Sup. Ct, 2021 Year-End Report on the Federal Judiciary 5 (2021),

But before any recommendations were made to Congress, then-Chief Judge Garcia of the WDTX intervened. On July 25, 2022, he ordered that any patent cases filed in the Waco Division be randomly assigned among all the district judges in the WDTX.218See Garcia July Order, supra note 41. For context, the WDTX covers a geographic area of 93,000 square miles.219Offices of the Western District of Texas, U.S. Dep’t of Just., If a plaintiff resided in Waco, for example, and sued in the Waco Division, but the case was reassigned to Judge Cardone in El Paso, she would have to drive nearly ten hours—over 600 miles—to attend in-court proceedings.220Driving Directions from Waco, TX, to El Paso, TX, Google Maps, In effect, this order gutted Judge Albright’s patent docket.221See, e.g., Christopher Yasiejko & Samantha Handler, West Texas Sees Patent Filings Plummet After Albright Dethroned, Bloomberg Law (Sept. 6, 2022),

Yet this order appears to have been temporary. On November 15, 2022, then-Chief Judge Garcia issued an amended order, which assigned “[a]ll cases and proceedings in the Waco Division” to Judge Albright and was made “in lieu of prior similar orders of the Court on assignment of the business of the Court.”222See Garcia Amended Order, supra note 42 (emphasis added). But patent litigation filings in Waco since the order’s effective date, December 1, 2022, have remained low.223See Ring, supra note 43. While the industry’s lackluster response signals some doubt as to whether the order did indeed rescind the patent lottery system, this good-for-four-months-only order shows why a standing order cannot provide a permanent solution: it may be rescinded or amended unilaterally at any time.

So what is the best way to resolve the venue-transfer feud between Judge Albright and the Federal Circuit? New legislation. But Congress has avoided updating the Gilbert factors that govern current venue-transfer motions for over seventy years. Congress could also address the Waco division “judge shopping” issue directly. Yet several divisions across the country implicate these concerns.224See generally, Alex Botoman, Divisional Judge-Shopping, 49 Colum. Hum. Rts. L. Rev. 297 (2018). And any legislation that would purport to govern the district court’s case-assignment protocol would offend the Constitution’s separation of powers by encroaching on the judiciary’s prerogative to control its own court system.

Or the Supreme Court could intervene as it did to curb the EDTX in TC Heartland. But mandamus orders do not appear to change the filing behavior of patent litigators.225See supra Section I.E; Figure 2 and accompanying text. Besides, Judge Albright has life tenure, so a Supreme Court mandamus order would likely accomplish little. And since mandamus orders continued well into 2022,226See, e.g., In re Apple, Inc., No. 2022-128, 2022 WL 1196768 at *5 (Fed. Cir. Apr. 22, 2022). neither Judge Albright nor the Federal Circuit appear ready to adopt the other’s § 1404(a) interpretation.

This Comment proposes another solution—Fifth Circuit intervention through a clarifying line of mandamus precedent that considers party convenience given the practical realities of modern litigation. As stated above, the Fifth Circuit took the first step towards doing so in November 2022.227See Dennis Crouch, Fifth Circuit Seems to Raise the Bar on Venue Transfer Mandamus, Patently-O (Nov. 29, 2022), In In re Planned Parenthood, the court refused to grant mandamus for a denied venue-transfer motion in a qui tam action.22852 F.4th 625, 628 (5th Cir. 2022). Judge Jennifer Elrod, writing for the unanimous panel, reiterated two legal principles relevant here: (1) the Gilbert factors are “not necessarily exhaustive or exclusive”; and (2) “[t]he location of evidence bears much more strongly on the transfer analysis when, as in Volkswagen, the evidence is physical in nature.229Id. at 630 (emphasis added) (quoting In re Volkswagen of Am. Inc., 545 F.3d 304, 315 (5th Cir. 2008)). In effect, Judge Elrod’s opinion signaled that a district court judge analyzing a § 1404(a) motion is not bound to apply a formalistic reading of the Gilbert factors. Rather, they may consider other factors that bear on the convenience of the parties.23052 F.4th at 631 (finding that the lower courts consideration of flight, lodging, and food costs between the relevant venues was not based on incorrect legal principles). And less weight may be afforded to the sources-of-proof factor when the relevant evidence is, unlike in In re Volkswagen of America, electronically available.231Id. at 630.

How the Federal Circuit will respond to this development remains to be seen. But before suggesting how the Fifth Circuit can build on this precedent to address other shortcomings with the Gilbert factors, we first review some relevant technological advances in recent litigation to understand how such technology can have a drastic effect on party convenience.

II.      The Digital Age: Technology and Party Convenience

The digital age has transformed modern litigation. On the positive side, technological improvements allowed the Judicial Conference to respond rapidly to the COVID‑19 pandemic by “approv[ing] the use of video and teleconferencing” for “civil proceedings during the COVID‑19 national emergency.”232See Judiciary Authorizes Video/Audio Access During COVID‑19 Pandemic, U.S. Courts (Mar. 31, 2020), Yet eDiscovery costs have also spiraled out of control.233See, e.g., Karel Mazanec, Capping E-Discovery Costs: A Hybrid Solution to E-Discovery Abuse, 56 Wm. & Mary L. Rev. 631, 632 (2014); Bradley Kuxhausen, An E-Discovery Model Order: Saving the Golden Goose of Patent Litigation One Golden Egg at a Time, 4 Cybaris Intell. Prop. L. Rev. 250, 253 (2013); John Prudhomme, Discovery in the Paperless World: How Speed and Ease of Technology Has Slowed and Complicated the Process, 14 SMU Sci. & Tech. L. Rev. 159, 166 (2010). In any event, technology has become entrenched in modern litigation.

Even in today’s high-tech world, however, the Gilbert factors—established in 1947—continue to govern today’s venue-transfer motions. Two of these longstanding factors, the relative ease of access to sources of proof and the relative convenience for and cost of attendance of witnesses, often prove dispositive on mandamus petitions.234See, e.g., In re Samsung Elecs. Co., 2 F.4th 1371, 1379 (Fed. Cir. 2021). This Part considers each factor given modern litigation practice.

A.      Online Hearings and Witness Convenience

The Federal Circuit has stressed that “the relative convenience for and cost of attendance of witnesses between the two forums is ‘probably the single most important factor in transfer analysis.’”235In re Juniper Networks, Inc., 14 F.4th 1313, 1318 (Fed. Cir. 2021) (citing In re Genentech, Inc., 566 F.3d 1338, 1343 (Fed. Cir. 2009)). And viewed through the lens of the 1950s—limited transportation options and no remote working capabilities, internet, or cell phones—attending a trial across the country was daunting. This factor is less compelling today. First, the percentage of cases that reach trial has plummeted since the 1950s and continues to trend downwards.236See Robert P. Burns, What Will We Lose if the Trial Vanishes?, 37 Ohio N.U. L. Rev. 575, 577 (2011) (describing historical trial rates); see also Jeffrey Q. Smith & Grant R. MacQueen, Going, Going, But Not Quite Gone: Trials Continue to Decline in Federal and State Courts. Does It Matter?, Judicature, Winter 2017, at 29 (reviewing decreases in trial rates since the 1990s onward). Second, the increased availability of remote court proceedings changes the witness-convenience factor calculus.237See Christopher J. Vidrine, The Zoom Paradox: Schrodingers Witness, 82 La. L. Rev. 311, 328–35 (2021).

Trials are exceedingly rare today. While trial rates in the early twentieth century were about 20%,238Burns, supra note 236, at 577. today’s patent litigation results in trial rates between 3–5%.239See Wild, supra note 150 (indicating 3–5% of patent cases went to trial in 2016); Branka Vuleta, 25 Patent Litigation Statistics – High-Profile Feuds About Intellectual Property, LegalJobs (Aug. 6, 2021), (95% to 97% of patent infringement lawsuits are settled out of court.). In 2021, this rate was even lower—between 1–2%.240Bruce Berman, Patent Suits Drop 33% From 2013; 2021 Damages Awards Are More Than $1 Billion Less than 2012, IP CloseUp at figs.1 & 18 (June 1, 2022), (combining the results of Figure 18, which shows sixty-five patent trials were held in 2021, with Figure 1, which shows that there were between 3,576 and 4,002 patent cases filed per year from 2018–2020, results in a trial rate between 1.6% and 1.8%). With trial rates a mere fraction of what they were when the Gilbert factors were developed, using a hypothetical trial test as a proxy for expected party inconvenience no longer makes sense.

For example, if we multiply the patent-litigation trial rate by the number of mandamus petitions docketed annually by the Federal Circuit, about one case per year would be expected to proceed to trial.241This number was calculated by multiplying an average of twenty-seven mandamus petitions filed in the Federal Circuit from 2008 to 2021, see Extraordinary Writ: Part 2, supra note 187, at fig.1 (averaging the total mandamus petitions), by rates of 3% and 5%, which results in an expected trial occurrence between .8 to 1.3 trials per year resulting from mandamus petition docketed each year at the Federal Circuit. But under the current venue-transfer framework, the burden of a hypothetical trial on its hypothetical witnesses—the most important factor—presumes that a trial is likely. Yet that is not the case. Indeed, this presumption could prove false for every docketed mandamus petition at the Federal Circuit for a given year.

Second, the recent approval of online court proceedings could change the witness-convenience factor entirely. As the Fifth Circuit stated in In re Volkswagen AG, “[a]dditional distance means additional travel time; additional travel time increases the probability for meal and lodging expenses,” which increases how long “fact witnesses must be away from their regular employment.”242In re Volkswagen AG, 371 F.3d 201, 205 (5th Cir. 2004). If a federal judge offers remote court proceedings, then witnesses need not be inconvenienced at all by a trial and could provide necessary depositions or testimony from their homes or offices. Simply put, remote hearings lower the cost of attendance for witnesses—whether financial or temporal.

The COVID‑19 pandemic forced many courts and judges to outfit their courtrooms for remote proceedings. One example is Judge Albright, who remodeled his courtroom over six weeks to render it “among the most technologically advanced in the country.”243One-on-One with Federal Judge Alan Albright, Magna Legal Servs., In an interview with Magna Legal Services, he remarked that online trials were “[i]n 99% of the way” the same as in-person trials, and that “Zoom is here forever for hearings.”244Id. Incorporating the availability of remote proceedings into the venue-transfer framework is simple. If the original district court offers online proceedings while the defendant’s requested venue does not, then the witness-convenience factor should militate against transfer.245A 2021 law review article, The Zoom Paradox: Schrodingers Witness, discussed the video-conferencing issue in greater depth and offered other insights into how the availability of zoom trials can continue in a post-pandemic world. See Vidrine, supra note 237, at 328–35. First, courts unanimously agree that a court may compel a witness to attend video deposition that is outside of the courts district but within 100 miles of the witnesss local area. Id. at 334. Second, although Rule 43(a) of the Federal Rules of Civil Procedure has currently not been interpreted to allow a judge to compel testimony via videoconferencing, allowing judges to do so could alleviate any compulsory process concerns for unwilling witnesses. Id. at 334–35.

B.      eDiscovery and the Sources-of-Proof Factor

Society so relies on the internet to send and receive information that 99% of it is now stored electronically.246See Kuxhausen, supra note 233, at 260 (citing Douglas R. Nemec, Hope S. Yates, Devin Kothari & Gayle Denman, Discovery Issues in Patent Litigation: Making the Most of the Federal Rules 36 (Patent L. Ctr., Prac. L. Inst. 2009)). Indeed, “almost every business, large and small, saves their data electronically.”247Id. Digital business records have ushered in eDiscovery. Although Congress partially accounted for this through the 2006 amendments to the Federal Rules of Civil Procedure,248See, e.g., Fed. R. Civ. P. 26(a)(1)(A)(ii) (“In General. Except as exempted by Rule 26(a)(1)(B) or as otherwise stipulated or ordered by the court, a party must, without awaiting a discovery request, provide to the other parties: a copy—or a description by category and location—of all documents, electronically stored information, and tangible things that the disclosing party has in its possession, custody, or control and may use to support its claims or defenses, unless the use would be solely for impeachment.” (emphasis added)). several areas of law—including the sources-of-proof factor—remain outdated.249But see Vidrine, supra note 237, at 327 (suggesting that certain situations, such as where a courts decision hinges on its ability to view a physical premises or physical evidence that could not be easily transported to a court could merit affording weight to this factor).

The relative ease of access to sources of proof supports venue transfer when most discoverable files are physically located in the requested venue.250See, e.g., In re Microsoft Corp., 630 F.3d 1361, 1362–63, 1365 (Fed. Cir. 2011) (per curiam) (granting mandamus since all of Microsoft’s witnesses and evidence were located in the requested venue); In re TOA Techs., Inc., 543 F. App’x 1006, 1009–10 (Fed. Cir. 2013) (granting mandamus because some physical sources of proof were in the requested forum and there was evidence “that at least seven witnesses . . . [were] within 100 miles of the [requested forum]”); In re Samsung Elecs. Co., 2 F.4th 1371, 1379, 1381 (Fed. Cir. 2021) (granting mandamus, relying heavily on the fact that the “petitioners submitted undisputed affidavits identifying over a dozen third-party individuals with relevant and material information as residing in [the requested forum]”). In patent infringement litigation, the defendant is expected to have “the bulk of the relevant evidence.”251In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). And so this factor almost always favors transfer: most defendants petitioning the Federal Circuit for mandamus will have files in its home venue. The sources-of-proof factor, then, operates as a default thumb on the scale for defendants. A survey of recent Federal Circuit mandamus grants establishes why this matters: when both sources of proof and witness convenience favor transfer, mandamus is usually granted.252Most (if not all) of the mandamus petitions granted by the Federal Circuit in 2021 and 2022 against Judge Albright found that the witness-convenience and sources-of-proof factors favored transfer. See, e.g., In re Apple, Inc., No. 2022-128, 2022 WL 1196768, at *3–4 (Fed. Cir. Apr. 22, 2022); In re Samsung, 2 F.4th at 1379, 1381; In re Juniper Networks, Inc., 14 F.4th 1313, 1319–23 (Fed. Cir. 2021).

Despite the ubiquity of eDiscovery in patent litigation, the Federal Circuit has narrowly construed the Gilbert factors—found nowhere in the text of § 1404(a)—at the expense of the actual text and purpose of the statute: to grant venue-transfer motions “[f]or the convenience of parties and witnesses” and “in the interest of justice.”25328 U.S.C. § 1404(a). Take the Federal Circuit’s In re Juniper Networks, Inc.25414 F.4th 1313 (2021). decision, where the court found that the sources-of-proof factor favored transfer when Juniper provided a declaration stating that it “stores the majority of its documentary evidence relevant to the Accused Products . . . at its Sunnyvale headquarters.”255Id. at 1321. It is unclear what files Juniper possessed that could not be accessed remotely during eDiscovery or transferred electronically before trial without inconvenience. Such a rigid application of this common-law factor does not serve the convenience of the parties. But this is old hat. The District Court of Delaware offered a similar sentiment in 2011 in XPRT Ventures, LLC v. eBay, Inc.:256No. 10-595, 2011 WL 2270402 (D. Del. June 8, 2011).

With respect to discovery, documents generally are stored, transferred and reviewed electronically. It would be surprising to the court to find that sophisticated litigants . . . still maintain their business records in hard copy, thus requiring either travel to [the requested venue] for review of the documents or the copying and transporting of documents. With respect to witnesses, generally the parties agree to take depositions where the witnesses are located (or the court can so order). Moreover, for those cases that get to trial, only a handful of witnesses testify live, and only a very small proportion of those documents produced during discovery are used as trial exhibits. Given these realities, this factor is outdated, irrelevant, and should be given little weight, if any, except for those rare exceptions where truly regional defendants are litigating.257Id. at *3.

In short, the current rigid and myopic application of two of the Gilbert factors—the sources of proof and convenience of the witnesses—is objectionable for at least three reasons. First, modern trial rates should reduce the weight given to the hypothetical inconvenience imposed on hypothetical witnesses under the hypothetical trial test. The rare exception—a patent infringement case proceeding to trial—should not be the default presumption. Second, the convenience of the witnesses is best served by remote hearings and trials. Thus, if the district court exercising jurisdiction offers remote hearings and trials but the requested district does not, the district court should find that this factor weighs against transfer. Third, the Federal Circuit overemphasizes the words lurking inside the Gilbert factors, such as “relative ease of access,” while ignoring the text of § 1404(a). The sources-of-proof factor made sense when relevant documents were stored as hard copies. But Congress used the words “convenience of the parties” in § 1404(a), a phrase broad enough to allow judges to infuse the effects of technological changes into the transfer-motion calculus.

III.      A Path Forward: A New Venue-Transfer Framework

Since venue transfer out of the WDTX is within the Fifth Circuit’s geographical jurisdiction, it should be the final arbiter of the Federal Circuit–Judge Albright disagreement. And the Fifth Circuit’s recent decision in In re Planned Parenthood provides a well-reasoned foundation to return the venue-transfer analysis to what Congress had intended—a practical application of the Gilbert factors focused on the convenience of the parties. After discussing suggested changes to the application of the Gilbert factors, this Part concludes by applying them to In re Apple, Inc.—a representative venue-transfer case in which the Federal Circuit granted mandamus.258In re Apple, Inc., 979 F.3d 1332, 1347 (Fed. Cir. 2020).

A modern framework that would best facilitate the convenience of the parties requires three major changes. First, the rules below would apply to the witness-convenience factor when online proceedings are an option for the parties. If the original district court offers online proceedings while the defendant’s requested venue does not, then the witness-convenience factor should militate against transfer. If both courts offer online proceedings, however, then this factor would be neutral. If only the requested forum offers online proceedings, then this factor weighs heavily towards transfer. If neither court has an online hearing option, then In re Volkswagen of America applies.

Second, for the sources-of-proof factor, the court could go further than In re Planned Parenthood and establish a rebuttable presumption that eDiscovery makes the physical location of documents irrelevant, rendering the factor neutral when all discoverable documents are electronic. A defendant could rebut this presumption, however, by showing that there is relevant physical evidence unable to be shared electronically in the requested forum. The volume and significance of this evidence would then dictate whether this factor shifts from neutral to favoring transfer.

Third, for the administrative difficulties flowing from court congestion, the Federal Circuit has considered and rejected several metrics.259See, e.g., In re Hulu, LLC, No. 2021-142, 2021 WL 3278194, at *5 (Fed. Cir. Aug. 2, 2021) (finding that “‘a courts general ability to set a fast-paced schedule is not particularly relevant to the court congestion factor (quoting In re Apple, 979 F.3d at 1344)). And even when this factor weighs slightly in favor of transfer, slight imbalance alone is not enough to tip the scales in favor of denying transfer because this factor often calls for speculation. Id. (citing In re Apple, 979 F.3d at 1344 n.5). This section explores other metrics that could be useful for quantifying the actual inconvenience created by court congestion.

Since the Federal Circuit in thirteen out of eighteen mandamus grants ordered transfer from the WDTX to California (eleven to the NDCA, and two to the Central District of California (“CDCA”)),260See Federal Circuit Mandamus Docket 2021, supra note 1. metrics for these three courts from 2019–2021 are compared below.261See Docket Navigator Analytics, Docket Navigator  [hereinafter WDTX–NDCA–CDCA Case Outcomes Comparison], (last visited Jan. 9, 2022) (searching cases for each district court, viewing the case outcome analytics for each court, and recording the 2019–21 results; then navigating to the Court Milestones tab from the main page and viewing the Omnibus Report (2008 to Present), filtering and recording information for each court on three tabs: Time to Termination; Time to Trial; and Time to Markman). Three metrics are examined: (1) cumulative settlement rate and average time to case dismissal; (2) median time to claim construction; and (3) median time to trial.

Beginning with the first, Table 3 below compares the rates of settlement or voluntary dismissal in the three districts.


Table 3: Patent Litigation Metrics for the WDTX, NDCA, and CDCA (2019–2021)262Id. Voluntary dismissal is defined as case withdrawal without judicial intervention, but no official consent decree filed with the court. See Docket Navigator, Case Outcomes: The Complicated, But Necessary, Process of Determining Wins and Losses in Federal Patent Cases 7 (2021),
Litigation Metric WDTX NDCA CDCA
Total Cases Decided 1170 721 811
Total Cases Settled or Voluntarily Dismissed 1135 497 692
Average Settlement or Voluntary Dismissal Rate 97% 69% 85%
Average Time to Termination (days) 238 609 339


Some quick conclusions: parties have settled or voluntarily dismissed cases at much higher rates in the WDTX (97%) than in either the CDCA (85%) or the NDCA (69%); and the average time it has taken for a case to be settled or voluntarily dismissed in the WDTX was 1.5 times higher in the CDCA and 2.5 times higher in the NDCA.263One thing to note: Each courts operational responses to the COVID‑19 pandemic, which began in January 2020, may have skewed some of this data. But since Judge Albright only recently took the bench, PN1523—Alan D. Albright—The Judiciary, supra note 25, this data was the best available when this Comment was written. Future investigation should re-examine these metrics when new data become available.

There are several possible explanations for this disparity. For one, it could stem from the WDTX’s case management procedures, which include early exchange of invalidity and infringement contentions between parties; limited discovery; and a default, expedited claim construction hearing date.264Standing Order Governing Proceedings (OGP) 4.2—Patent Cases, U.S. 3, 7, 12 (W.D. Tex. Sept. 16, 2022) [hereinafter Albright Patent Rules], (signed by Judge Albright). Since the result of claim construction is often dispositive on a case’s merits,265See Vincent P. Kovalick, Markman Hearings and Their Critical Role in U.S. Patent Litigation, Lexology (Oct. 31, 2009), earlier claim construction hearings could result in earlier case termination. But a more cynical explanation is that Waco’s patent docket hosts a larger portion of patent trolls that file borderline frivolous patent infringement cases to extract settlements from large corporations. Some evidence supports this.266See, e.g., Anderson & Gugliuzza , supra note 27, at 422. Whether the high settlement or voluntary dismissal rate means that large corporations benefit from having the Waco Division is unclear. On the one hand, faster case termination in Waco suggests that a case filed there would be resolved faster and cheaper than if that same case was filed in the CDCA or NDCA. By contrast, one could argue that plaintiffs—especially NPEs—bring these cases only because they believe settlements can be more readily extracted through litigation in the Waco Division. Judge Albright’s case management procedures guarantee that a given plaintiff will have a chance to be heard soon after filing.267Albright Patent Rules, supra note 264, at 1–2. The CDCA and NDCA, by contrast, have longer docket times and allow for broader discovery, which provides corporations with a simple path to victory: a war of attrition. Both explanations are plausible and the subject merits further investigation.

Another set of metrics that helps to quantify the court-congestion factor are the median time to claim construction and time to trial, shown below in Table 4.


Table 4: Median Time to Claim Construction & Time to Trial Metrics for the WDTX, NDCA, and CDCA (2019-2021)268See WDTX–NDCA–CDCA Case Outcomes Comparison, supra note 261.
Court Time to Claim Construction (days) Time to Trial (days)
2019 2020 2021 Average 2019 2020 2021 Average
WDTX 673 371 404 483 N/A 636 854 745
NDCA 898 766 1019 894 609 N/A 1095 852
CDCA 500 591 535 542 936 1421 1587 1315


From 2019 through 2021, the WDTX boasted faster median times to both claim construction hearings and trial than the NDCA and CDCA.269Id. The COVID‑19 pandemic, however, likely accounts for some of the trial-time increases since 2019. At any rate, this data set is well suited to reveal how a judge could meaningfully resolve the court-congestion factor. Compare a transfer between the WDTX and NDCA. The large difference between each court’s median time to claim construction favors retention. But the small difference between time to trial would only slightly favor retention. Because the frequency of claim construction hearings far exceeds patent infringement trials, more weight should be given to the former. And so the court-congestion factor, applied to a request seeking transfer from the WDTX to the NDCA, would weigh against transfer.

Yet some may still find that median times to specific case events are too indirectly related to party inconvenience to serve as an appropriate proxy. True enough. But perhaps quantifying an expected litigation cost by district could make party inconvenience more tangible. Provided below in Table 5 is a portion of a table from the AIPLA’s Economic Survey for 2021270See Am Intell. Prop. L. Ass’n & ARI Ass’n Rsch., Inc., AIPLA 2021 Report of the Economic Survey 60 (2021) [hereinafter AIPLA Economic Report]. that provides the average cost of patent litigation by procedural posture for patent infringement suits where the plaintiff is seeking over $25 million in damages.271In 2021, the average patent damages award exceeded $61 million. See Berman, supra note 240, at fig.18. Thus, the AIPLA category of patent litigation with over $25 million at risk was chosen as representative.


Table 5: AIPLA’s 2021 Economic Survey – Cumulative Cost by Litigation Activity When Over $25 Million is at Risk272AIPLA Economic Report, supra note 270, at 60.
Litigation Activities Included in Cost Cumulative Cost in 2020 (USD)
Initial Case Management (ICM) $250,000.00
ICM + discovery, motions, and claim construction (DMC) $2,125,000.00
ICM +DMC + pre and post-trial, and appeal if applicable $4,000,000.00


Combining the data from Tables 3, 4, and 5, we can then derive an equation for the expected cost of patent litigation by district. Beginning with the information in Tables 3 and 4, each court has a far faster median time to case termination than median time to claim construction hearing. So we can assume that more cases are dismissed before claim construction than after.273The author assumes that if more cases were dismissed after claim construction, then the median time to either settlement or voluntary dismissal would exceed the median time to claim construction. To approximate the procedural distribution of cases, this Comment conservatively assumes that 50% of cases settle early after initial case management; 30% are dismissed before the claim construction hearing; and 20% are dismissed after the claim construction hearing. Further, the historical 3% trial rate is used as the expected rate of cases that will continue to trial.274See supra Section II.A. Thus, the expected cost to defend against a patent infringement suit by district with over $25 million at risk is summarized below in Table 6.


Table 6: Expected Cost of Patent Litigation for Cases Seeking over $25 Million in Damages in the WDTX, NDCA, and CDCA275The expected cases come from multiplying the settlement or voluntary dismissal rates by the distribution described above. The distribution is then multiplied based on the cost at each stage of litigation and summed to determine the expected cost, which is rounded to the nearest $100,000.
Stage of Litigation (Cost) WDTX (Expected % of Cases) NDCA (Expected % of Cases) CDCA (Expected % of Cases)
(1) Voluntarily Dismissed After ICM ($250,000) 49% 35% 43%
(2) Dismissed Before Claim Construction ($1.5M)276Note this value is not present in the AIPLA survey. The author made this approximation based on his understanding of patent litigation generally.. 29% 21% 26%
(3) Dismissed After Claim Construction or Disposed of on Summary Judgment ($2.125M) 19% 41% 28%
(4) Full-Trial ($4M) 3% 3% 3%
Expected Cost: $1,100,000 $1,400,000 $1,200,000


In sum, a defendant would expect to expend anywhere from $100,000 to $300,000 less per suit in the WDTX instead of the NDCA or CDCA for the average patent infringement case.277The cost disparity estimated in Table 6 is likely conservative because it does not include the added cost of briefing the venue-transfer motion and any later motions associated with it (i.e., motion for reconsideration, petition for mandamus, motion for rehearing en banc, and so on.), nor does it include the cost of any subsequent administrative filings (ex: Motion for Admission Pro Hac Vice) and status conferences necessary to begin the case in the new forum. Decreasing the cost of patent litigation is in the “interest of justice” because it enables more litigants to access the Article III court system for fair and prompt adjudications. And reducing the time and cost a party must divert from productive business endeavors to litigate also decreases party inconvenience. In short, court congestion creates measurable effects on party convenience that implicate the text of § 1404(a). Thus, courts should treat this factor more seriously.278Creating a standard, reliable way to quantify this factor would put parties on notice of what arguments to make, and better tie this factor to § 1404(a). Further research is recommended.

Using In re Apple Inc. as a representative mandamus grant from the WDTX, Table 7 below compares the factor-by-factor findings of the Federal Circuit’s majority opinion with the likely outcome of each factor under a framework that applies the changes proposed by this section. Applying this framework results in four neutral factors, two favoring retention, one slightly favoring retention, and one favoring transfer. Thus, the petitioners in In re Apple Inc. would likely be denied its requested mandamus relief.


Table 7: In re Apple Inc.: Venue-Transfer Factor Determinations by the Federal Circuit Majority and by Using the Proposed Framework279See In re Apple Inc., 979 F.3d 1332, 1339–45 (Fed. Cir. 2020)..
Venue-Transfer Factor Federal Circuit Majority Proposed Framework
(1) Relative Ease of Access to Sources of Proof Favored transfer because of sources of proof in the NDCA. Presumed neutral unless Apple shows that it has relevant non-electronic documents.
(2) Availability of Compulsory Process Neutral. Neutral.
(3) Cost of Attendance for Willing Witnesses Favored transfer because a California trial was convenient for party witnesses and only slightly inconvenient for third-party witnesses. Favors retention because fully remote hearings are more convenient to all parties than in-person hearings and were only an option at the WDTX.
(4) All Other Practical Problems Favored transfer slightly because of the judicial economy gained by allowing the NDCA to resolve related patent cases together, and historically the NDCA was faster to trial. Slightly favors retention because the judicial economy is offset by the large disparity in time to dismissal, time to claim construction, and time to trial.
(5) Administrative Difficulties from Court Congestion Neutral because the court’s ability to set an early trial date was not that relevant to the court-congestion factor. Favors retention because cases are dismissed faster in the WDTX, and cases are terminated in the WDTX more economically.
(6) Local Interest in Deciding Case Favored transfer because of Apple’s strong presence in the NDCA. Favors transfer.
(7) Familiarity with Law Neutral. Neutral.
(8) Conflicts of Law Neutral. Neutral.
Outcome: Mandamus was Granted. Mandamus Should Be Denied.


Previous attempts to resolve the venue-transfer problem in patent infringement suits have been unsuccessful. Neither Congress nor the Supreme Court appear poised to provide a meaningful resolution soon. And standing orders are too easily retracted to provide litigants with the certainty they need to efficiently conduct business.

But Judge Elrod’s In re Planned Parenthood decision is a great first step towards constraining the Federal Circuit and ending the mandamus mania. Depending on the Federal Circuit’s response, the Fifth Circuit should continue to build from this decision and modernize the application of the Gilbert factors.

While this approach has several benefits, the most notable is that it remains faithful to the text, history, and traditional use of § 1404(a). Indeed, by evaluating the actual inconvenience imposed on the parties, rather than the theoretical inconvenience imposed by an unlikely trial or by seamlessly accessing electronic documents across states, the Fifth Circuit can dispense the justice that Congress created § 1404(a) to provide.

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