The Federal Circuit has just issued another order addressing a venue challenge in litigation before Western District of Texas Judge Alan D. Albright. Late last month, defendant SK Hynix sought the appellate court’s intervention after its motion to transfer litigation filed by Netlist to California sat fully briefed for eight months, while Judge Albright moved ahead on claim construction. On February 1, the Federal Circuit partly granted the defendant’s mandamus petition, agreeing that the delay was unwarranted and ordering the district court to stay the case until it ruled on the transfer motion. That stay would prove short-lived, as Judge Albright denied the transfer motion the next day—holding that the case could not be moved under either the first-to-file rule or on convenience grounds. In the wake of that ruling, the Federal Circuit has declined to extend its stay in the case pending its consideration of a second, pending mandamus petition to be filed by SK Hynix.
Since 2016, Netlist has twice sued SK Hynix in the Central District of California. Each of those suits has been stayed in whole or in part to await the outcome of two parallel actions that Netlist filed against SK Hynix before the International Trade Commission (ITC), as well as final outcomes in a storm of corresponding inter partes reviews (IPRs). Last year, things looking tough both domestically and in analogous international proceedings, Netlist sued SK Hynix twice more, this time in the Western District of Texas before Judge Alan D. Albright. In May 2020, SK Hynix moved for a transfer to California so that the issues universally presented, including Netlist’s declaration of essentiality to JEDEC standards for memory modules and SK Hynix’s counterclaims concerning fair, reasonable, and non-discriminatory (FRAND) licensing, might be resolved in a single district court. However, while the transfer motion sat fully briefed for months, the West Texas court pressed forward instead on claim construction, setting a hearing in March 2021. SK Hynix has now turned to the Federal Circuit for help.