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`EXHIBIT A
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`EXHIBIT A
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`

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`NOTE: This order is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE EMC CORP., DECHO CORP., IOMEGA
`CORP., AND CARBONITE, INC.,
`Petitioners.
`_____________________
`
`Miscellaneous Docket No. 142
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in case no.
`10-CV-0435, Magistrate Judge Amos L. Mazzant.
`______________________
`
`ON PETITION
`______________________
`
`Before RADER, Chief Judge, DYK, and MOORE, Circuit
`Judges.
`
`DYK, Circuit Judge.
`
`O R D E R
`This is petitioners EMC Corporation, Decho Corpora-
`tion, Iomega Corporation and Carbonite Corporation’s
`second request for a writ of mandamus in this case; as we
`noted before, this matter arose out of a single complaint
`filed by respondent Oasis Research LLC (“Oasis”) charg-
`ing a total of eighteen companies with offering online
`
`

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`(cid:220)–‰«‡»†‹(cid:230) (cid:237)(cid:238)
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`2b
`
`IN RE EMC CORP
`ackup and storage for home or business computer users
`that allegedly infringed its patents. In re EMC Corp., 677
`F.3d 1351 (Fed. Cir. 2012). The United States District
`Court for the Eastern District of Texas denied EMC and
`Carbonite’s requests to sever the claims against them in
`separate motions filed shortly after the complaint. In its
`view, Rule 20 of the Federal Rules of Civil Procedure—
`which governs joinder of claims arising out of the same
`transaction or occurrence—was met because the defen-
`dants’ accused services and products were “not dramati-
`cally different.” Oasis Research LLC v. ADrive LLC, No.
`4:10-CV-435, 2011 WL 3099885, at *2 (E.D. Tex. May 23,
`2011). Given its conclusion that all eighteen claims
`belonged in the same action, the district court also denied
`EMC and Carbonite’s motions to transfer venue to the
`United States District Courts for the Districts of Utah
`and Massachusetts, respectively, on the ground that
`transfer would divide a single action into several “differ-
`ent lawsuits scattered across the country.” Id. at *4.
`
`On petition this court reversed. We held that claims
`against independent defendants cannot be joined under
`the transaction-or-occurrence test “unless the facts under-
`lying the claim of infringement asserted against each
`defendant share an aggregate of operative facts.” EMC,
`677 F.3d at 1359. Because application of the improper
`joinder test could preclude a proper transfer analysis and
`prevent the defendants from having a “meaningful oppor-
`tunity to present individualized defenses on issues such
`as infringement, willfulness, and damages,” we granted
`the petition to the limited extent that we directed the
`district court to apply the correct test. Id. at 1354-55. We
`did not express any opinion on the issue of transfer of
`venue.
`
`After our opinion, the district court severed the mat-
`ter into four separate cases, including creating a separate
`
`

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`3
`IN RE EMC CORP
`action against Carbonite and a separate action against
`EMC, Decho, and Iomega, consolidated the cases for pre-
`trial proceedings, and again denied the petitioners’ mo-
`tions for transfer in separate orders.
`In its denial of
`transfer orders, the district court concluded that in each
`case the petitioners had failed to show that the transferee
`venues were clearly more convenient.
`In so finding, the
`district court acknowledged that at least one party in each
`case had maintained significant operations relating to an
`accused product in the transferee venues and that the
`petitioners had identified five potential witnesses who
`reside in Utah and two potential witnesses who reside in
`Massachusetts. However, the court concluded that the
`petitioners had not met their burden of demonstrating the
`need for transfer, particularly in light of the fact that
`some potential witnesses were located in or closer to the
`Eastern District of Texas, and several witnesses and
`sources of proof were located in various other states,
`including New York, Virginia, Colorado, and Washington,
`D.C. The district court, moreover, concluded in each case
`that judicial economy weighed heavily against transfer.
`In that regard, the district court noted that if it were to
`transfer the cases other courts “would have to spend
`significant resources to familiarize [themselves] with the
`patents, prosecution history, claim construction, and
`other issues in th[ese] case[s].” Taking particular issue
`with that analysis, the petitioners now seek a writ of
`mandamus with regard to those orders.
`
`The petitioners’ request for a writ directing the dis-
`trict court to transfer these cases runs up against a highly
`deferential standard of review. The question before us on
`mandamus is not whether the transferee venues are more
`convenient and fair; nor is it even whether in our view it
`was an abuse of discretion for the trial court to have
`denied transfer, which is the applicable standard of
`review on direct appeal. See In re TS Tech USA Corp.,
`
`

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`(cid:220)–‰«‡»†‹(cid:230) (cid:237)(cid:238)
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`45
`
`IN RE EMC CORP
`51 F.3d 1315, 1319 (Fed. Cir. 2008). Instead, the ques-
`tion is whether the denial of transfer was such a “‘clear’
`abuse of discretion” that refusing transfer would produce
`a “patently erroneous result.” Id. (quoting In re Volks-
`wagen of Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en
`banc)). Under this highly deferential standard, we must
`leave the district court’s decision undisturbed unless it is
`clear “that the facts and circumstances are without any
`basis for a judgment of discretion.” Volkswagen, 545 F.3d
`at 317 n.7 (quoting McGraw-Edison Co. v. Van Pelt, 350
`F.2d 361, 363 (8th Cir. 1965)). Here, we cannot say that
`standard has been met.
`
`This case is a prime example of the importance of ad-
`dressing motions to transfer at the outset of litigation. As
`the Fifth Circuit stated in In re Horseshoe Entm’t, “in our
`view disposition of [a] motion [to transfer] should have
`taken a top priority in the handling of this case by the . . .
`District Court.1” 337 F.3d 429, 433 (5th Cir. 2003).
`Congress’ intent “to prevent the waste of time, energy and
`money and to protect litigants, witnesses and the public
`against unnecessary inconvenience and expense,” Van
`Dusen v. Barrack, 376 U.S. 612, 616 (1964) (internal
`quotation marks omitted), may be thwarted where, as
`here, defendants must partake in years of litigation prior
`to a determination on a transfer motion.
`
`Similarly, the Third Circuit has concluded that
`1
`“[j]udicial economy requires that [a] district court should
`not burden itself with the merits of the action until it is
`decided [whether] a transfer should be effected” and thus
`“it is not proper to postpone consideration of the applica-
`tion for transfer under § 1404(a) until discovery on the
`merits is completed.” McDonnell Douglas Corp. v. Polin,
`429 F.2d 30, 30 (3d Cir. 1970).
`
`

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`5
`IN RE EMC CORP
`Here, the district court based its denial of the peti-
`tioners’ motions to transfer venue in part on considera-
`tions of judicial economy. Petitioners protest that there is
`no “legitimate judicial economy factor” here because the
`district court’s familiarity with the case arises only from
`its earlier error in refusing to sever and transfer claims
`against them. Petition at 11. Petitioners are correct that
`the district court could not properly rely on judicial econ-
`omy involved in retaining the very cases that were the
`subject of the transfer motion. Motions to transfer venue
`are to be decided based on “the situation which existed
`when suit was instituted.” Hoffman v. Blaski, 363 U.S.
`335, 343 (1960)
`(quoting Paramount Pictures, Inc. v.
`Rodney, 186 F.2d 111, 119 (3d Cir. 1950) (Hastie, J.,
`dissenting)). Any subsequent familiarity gained by the
`district court is therefore irrelevant.
`
`It does not follow, however, that the district court’s
`judicial economy rationale was wholly misplaced. While
`considerations of judicial economy arising after the filing
`of a suit do not weigh against transfer, a district court
`may properly consider any judicial economy benefits
`which would have been apparent at the time the suit was
`filed. For example, we have held that a district court’s
`experience with a patent in prior litigation and the co-
`pendency of cases involving the same patent are permis-
`sible considerations in ruling on a motion to transfer
`venue.
`In re Vistaprint, Ltd., 628 F.3d 1342, 1346-47 &
`n.3 (Fed. Cir. 2010). The latter consideration is applicable
`here.
`The district court could properly consider the
`benefits to judicial economy arising from having the same
`judge handle both Oasis’s suits against the petitioners
`and Oasis’s suits against other parties involving the same
`patents and technology as to which there was no issue of
`transfer. Petitioners complain that Oasis’s claims against
`other defendants have since been dismissed, but, as
`discussed above, the relevant inquiry is the state of affairs
`
`

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`6a
`
`IN RE EMC CORP
`t the time “when suit was instituted.” Hoffman, 363
`U.S. at 343. Because the dismissal of Oasis’s suits as to
`the other defendants occurred later, it is not relevant to
`the venue inquiry. Accordingly, the district court could
`properly conclude that considerations of judicial economy
`favored retention of the cases.
`
`To be clear, we are not suggesting that the judicial
`economy of having the same judge handle multiple suits
`involving the same patents should dominate the transfer
`inquiry. After all, the MultiDistrict Litigation Procedures
`exist to effectuate this sort of efficiency. Here, the peti-
`tioners concede that the district court considered all of the
`other relevant interest factors in reaching the conclusion
`that the transferee venues were not clearly more conven-
`ient for trial than the Eastern District of Texas. See
`Petition at 9. The district court found not only that
`judicial economy weighed against transfer, but also that a
`significant number of identified potential sources of proof
`and witnesses are located outside of the transferee ven-
`ues, including at least one witness in Carbonite’s case and
`two witnesses in EMC’s case who reside in the Eastern
`District of Texas. Given these facts, we cannot say that,
`on the whole, the district court’s determination as to
`transfer was so unreasonable as to warrant mandamus
`relief.
`
`Accordingly,
`
`(1) The petition for a writ of mandamus is denied.
`
`(2) The motion for a stay is denied as moot.
`
`

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`IN RE EMC CORP
`
`s19
`
`7
`
`FOR THE COURT
`
`/s/ Jan Horbaly
`Jan Horbaly
`Clerk