Federal Circuit Denies Two WDTX Transfer-Related Mandamus Petitions

On May 25, 2021, the Federal Circuit denied Bose Corporation’s mandamus petition seeking to direct Judge Alan Albright to stay all non-venue-related proceedings until he rules on Bose’s pending motion to dismiss or transfer. The Federal Circuit relied on Judge Albright’s March 23, 2021 standing order which confirmed the court would not conduct a Markman hearing until Bose’s pending motion is resolved. With the absence of a ruling on a substantive motion and the expectation that “the court will promptly decide the pending motion,” the Federal Circuit denied the petition.

Earlier this month, the Federal Circuit denied Western Digital’s mandamus petition seeking to direct Judge Albright to transfer the case from the Western District of Texas to the Northern District of California. While the Federal Circuit observed “the district court incorrectly overstated the burden on [Western Digital] as ‘heavy’ and ‘significant’” and acknowledged it may have evaluated some factors differently, the Federal Circuit concluded the district court’s “ultimate conclusion” was not a clear abuse of discretion.

This is not the first time the Federal Circuit has suggested it would have weighed the factors under 28 U.S.C. § 1404(a) differently from Judge Albright. Earlier this year, the Federal Circuit made the same observation in its denial of Intel’s mandamus petition seeking to vacate Judge Albright’s order re-transferring its case from the Austin Division back to the Waco Division pursuant to 28 U.S.C. § 1404(a).

In addition to analyzing Judge Albright’s transfer orders and procedures for 1Q 2021, we have analyzed all 19 transfer-related mandamus orders the Federal Circuit has issued since Judge Albright took the bench in September 2018. Of these 19 orders, the Federal Circuit granted 7 mandamus petitions, denied 11, and denied 1 as moot. Over the last several months, the Federal Circuit has indicated its concerns with the timing of the Western District’s rulings on pending motions to transfer in two orders granting mandamus. The Western District responded to the Federal Circuit’s concerns with rule changes, including a new standing order on March 23, 2021 to resolve pending motions to transfer before a Markman hearing, which based on the Federal Circuit’s decision in In Re Bose Corporation, seems to have addressed the concern.

Similarly, the Federal Circuit has taken issue with the Western District’s evaluation of the private interest factors related to willing and unwilling witnesses, noting in some instances that the Western District “misapplied the law in finding that any inconvenience to [willing non-party witnesses] outweighed the convenience of having several party witnesses be able to testify at trial without having to leave home.” See, e.g., In re TracFone Wireless, Inc., 2021 WL 1546036 (Fed. Cir. April 20, 2021). Based on the Western District’s decisions granting motions to transfer in Correct Transmission LLC. v. ADTRAN, Inc. and  Infogation Corp. v. Google LLC, however, it appears the Western District has also addressed the Federal Circuit’s concerns.

The orders granting mandamus are:
GRANTED

The orders denying mandamus are:
DENIED / DENIED AS MOOT