Today, Judge Albright entered his Second Amended Standing Order Regarding Motions for Inter-District Transfer, which replaces the previous June 8 Order.
The Second Amended Order still requires a party who has filed a motion for inter-district transfer to provide the Court with a report regarding the briefing status prior to the Markman hearing, but with a few changes:
- A party must file the status report with respect to whether the motion has been fully briefed and is ready for resolution no later than four weeks prior to the date of the Markman hearing (amended from six weeks in the prior order).
- If, by one week before the Markman hearing, the Court has not ruled on a pending inter-district motion to transfer, the moving party is directed to email the Court’s law clerk and the technical advisor (if appointed) to indicate that the motion to transfer is pending.
Below is the text of a portion of the Second Amended Order with the amendments highlighted. The full Standing Order can be found HERE.
Judge Albright, who has presided over patent cases in multiple Divisions within the Western District of Texas, appears to have issued his first order denying a motion to transfer venue for convenience from the Waco Division to the Austin Division. Until this point, he has generally been very open to intra-district transfers for convenience, both opposed and unopposed.
Case No. 6:20-cv-108 (ParkerVision, Inc. v. Intel Corp.) was filed in the Waco Division in February 2020. On July 10, 2020, Intel moved to transfer the case under § 1404(a) to the District of Oregon or, alternatively, the Austin Division of WDTX. ParkerVision initially agreed that a transfer to Austin was proper, but subsequently filed a Notice of Clarification stating that “if a transfer of this case to Austin results in a different case schedule, then ParkerVision submits that Austin would not be a clearly more convenient forum than Waco appeared to initially.” A hearing on the motion was held on September 2, 2020. Supplemental submissions were filed in September and December.
On January 26, Judge Albright entered his order denying Intel’s motion to transfer in its entirety, finding that Intel did not met its “heavy burden” to demonstrate that either the District of Oregon or the Austin Division was “a clearly more convenient forum than Waco.”
In light of the recent ruling by the Federal Circuit (see previous post HERE) and the Austin Federal Courthouse’s continued closure during COVID, this is likely not the last order declining to transfer a case from Waco to Austin.
Yesterday, the Federal Circuit denied Intel’s latest petition for writ of mandamus, declining to vacate Judge Albright’s December 31 Order re-transferring Case No. 6:19-cv-254 (now Case No. 6:21-cv-57) back to Waco from Austin (See previous post detailing Intel’s petition HERE). Thus, VLSI Technology LLC v. Intel Corp. appears to be headed to a jury in the Waco Division on February 16.
The three-judge panel consisting of Chief Judge Prost, and Circuit Judges Lourie and Chen (the same panel that granted Intel’s first mandamus petition in this case – see previous post HERE), stated that the district court took “into account the relevant traditional transfer factors” to conclude that “unanticipated post-transfer events frustrated the original purpose for transfer of the case from Waco to Austin originally” and thus “re-transfer to Waco was warranted.” The panel noted that it “will not second guess a district court’s determinations ‘as long as there is plausible support in the record for that conclusion.'” Although the panel noted that “we may have evaluated these factors and the parties’ arguments differently, we are unable to say that the district court’s conclusion amounts to a clear abuse of discretion.”
The ripple effect of this order remains to be seen, but it would not be surprising (especially in cases previously transferred from Waco to Austin that are set for trial in the next few months) to see more motions to transfer from Austin back to Waco for convenience as long as the Austin courthouse remains closed due to COVID.
As anticipated, Intel has filed another petition for writ of mandamus challenging Judge Albright’s Dec. 31 Order re-transferring the case from Austin back to Waco (see previous post about the first petition HERE). Intel specifically asked the Federal Circuit to “reverse (rather than vacate) the latest retransfer order”, a reference to the Circuit Court’s Dec. 23 Order granting mandamus and vacating the first retransfer order (see previous post HERE summarizing the limitations of the opinion).
Intel’s first argument has been presented a multitude of times in its earlier briefing in both the district court and Federal Circuit: that the facts underlying the initial decision to transfer the case from Waco to Austin in 2019 remain unchanged today. While the pandemic was undoubtedly unforeseeable, Intel argues that it did not frustrate the original purpose for transfer to Austin and thus, the case cannot be transferred back to Waco on that basis.
Intel’s second argument centers on the district court’s 1404(a) analysis. This issue was not directly addressed by the Federal Circuit in the last mandamus proceeding because the district court did not base its original retransfer order (the subject of the first mandamus proceeding) on a renewed analysis of the 1404(a) convenience factors. Intel argues that the analysis in the most recent order applied the wrong legal standard and improperly shifted the burden to Intel.
The district court’s decision to reset the trial date for next month gives the parties enough time to take the issue up with the Federal Circuit, but we can still expect another round of shortened briefing schedules and quick opinions to issue from the Federal Circuit. We will keep you posted.
On December 23, the Federal Circuit appeared to give Intel an early Christmas present by granting Intel’s Petition for Writ of Mandamus, vacating the previously set trial date of January 11, 2020 in Waco (see our previous post HERE regarding Intel’s petition and the November 20 transfer back to the Waco Division). However, the Circuit Court was very deliberate in its limited holding and, more importantly, explicit in what it was not holding, overtly stating “we do not hold that the district court lacks the ability to effectuate holding trial in the Waco Division.”
The Federal Circuit then essentially handed the parties and the district court a road map for its next steps, declaring: “We only hold that it must effectuate such result under appropriate statutory authority, such as moving the entire action to the Waco Division after concluding, based on the traditional factors bearing on a § 1404(a) analysis, that ‘unanticipated post-transfer events frustrated the original purpose for transfer’ of the case from Waco to Austin originally. In re Cragar Indus., Inc., 706 F.2d 503, 505 (5th Cir. 1983). Such analysis should take into account the reasons of convenience that caused the earlier transfer to the Austin division.” The Circuit Court concluded that it takes “no position on whether such finding can be made here.”
To absolutely no one’s surprise, VLSI immediately (read: later that very same day) filed an emergency motion to transfer venue from Austin to Waco for convenience, conducting the 1404(a) analysis laid out by the Federal Circuit. Intel’s victory was short-lived as it then spent the holiday responding to VLSI’s Motion in preparation for a December 30 hearing.
During the hearing, Judge Albright indicated that he would grant the Motion. However, he also stated that he would set the trial for mid-February, instead of January 11, in order to give Intel time to seek relief from the Federal Circuit yet again. On December 31, Judge Albright issued his written opinion and order granting VLSI’s Motion and transferring the case back to the Waco Division. Taking heed of the Federal Circuit’s directive, he went factor by factor and even included a chart comparing the weight of each 1404(a) factor at the time of the original transfer to Austin compared to the weight right now.
We can expect another Petition for Writ of Mandamus to be filed by Intel shortly. It seems the Federal Circuit will then have to bring some clarity as to the affect that the COVID-19 pandemic has on the traditional convenience factors and how it affects the overall transfer analysis. We will keep you updated!