The Federal Circuit has resolved another skirmish in its ongoing battle with District Judge Alan D. Albright over convenience transfers. On August 13, the appellate court ruled that Judge Albright had once again erred in his application of certain substantive factors in denying DISH’s motion to transfer a case filed against it by Broadband iTV, Inc. to Colorado. The Federal Circuit’s decision is notable in part for its procedural posture, since the court declined to grant DISH’s petition for mandamus review yet still directed Judge Albright to revisit his decision. That basis for granting relief prompted Circuit Judge Jimmie Reyna to fault the Federal Circuit’s rationale in a concurrence, warning that the ruling essentially created a “mandamus light” standard based on a potentially improper reading of underlying precedent.

The transfer decision at issue is just the latest in a series of such rulings by Judge Albright that have made their way up to the Federal Circuit, which has on multiple occasions questioned his approach to convenience transfers with increasing firmness. These objections have focused on both timeliness, given Judge Albright’s tendency to delay transfer rulings while moving forward on other issues, as well as his substantive handling of the applicable factors, with a variety of legal errors identified by the appellate court. While Judge Albright has taken systemic steps to address those procedural issues, as detailed further below, his substantive transfer analyses continue to be a point of contention—even after the Federal Circuit’s first precedential reversal of one such decision in late June, in In re: Samsung.

DISH objected to both the timeliness and substantive disposition of its venue challenge, as detailed in RPX’s prior coverage. As to the former issue, Judge Albright did not resolve the company’s motion to dismiss until April 2021, nearly a year after it was filed, while proceeding through claim construction. But it was Judge Albright’s substantive rationale for denying the motion that led DISH to challenge the ruling in a May 28 petition for mandamus review, which asserted multiple grounds for reversal.

Several of those arguments formed the basis for the Federal Circuit’s August 13 ruling that directed Judge Albright to reconsider his decision. These included DISH’s assertion that Judge Albright had erred in finding the “local interest” factor to be neutral as a result of the presence of “over 1,000 employees and owns call centers, warehouses, a remanufacturing center, and a service center in this District”. The Federal Circuit agreed with DISH that it was improper to consider such “generalized connections” to a venue “that are untethered to the lawsuit”, in light of the appellate court’s holding to that effect from its November In re: Apple decision.

Additionally, the Federal Circuit accepted DISH’s argument that Judge Albright had improperly discounted the convenience of party witnesses and that he had relatedly erred by presuming that such witnesses would be unwilling to testify—both as dictated by Samsung. Moreover, the Federal Circuit also agreed with DISH that Judge Albright was wrong to conclude that overlap with a co-pending case could lead to efficiencies in claim construction under the “practical problems” prong, determining instead that the technologies were too different to justify that conclusion and that he should have factored in the availability of multi-district litigation procedures.

However, the Federal Circuit stopped short of granting mandamus, despite those identified legal errors: “We do not view issuance of mandamus as needed here because we are confident the district court will reconsider its determination in light of the appropriate legal standard and precedent on its own. . . . We therefore deny the petition for a writ of mandamus at this time. We expect, however, that the district court will expeditiously reconsider this matter before resolving substantive issues in the case”. In denying mandamus review, the court cited the Fifth Circuit’s 2003 decision from In re: Avantel, which similarly established that “mandamus need not issue when a panel is confident that the district court will reconsider its determination in light of the appropriate legal standard”.

Judge Reyna concurred in the denial of mandamus but questioned the court’s reliance on Avantel, briefly stating that he was “dubious” that the ruling “directs us to require the district court’s reconsideration as we have done in this case”. But the primary basis for his concurrence was to “express concern that the court grants a unique form of mandamus relief that I am not convinced is supported by precedent”. The issue here, Judge Reyna explained, was that the court’s decision does not fall into either of the categories in which the Federal Circuit has previously directed courts to reconsider prior rulings on mandamus. In some of those rulings, the court has done so after granting mandamus in order to decide “an issue of first impression”, subsequently vacating and remanding for further consideration in light of its ruling. “In other cases, we have identified a recent change in law or an applicable case apparently overlooked by the district court, denied the petition without prejudice to refiling, and invited the petitioner to seek the district court’s reconsideration in light of the case law we identified” (emphasis added), whereas the present case does not involve a change in law.

Rather, Judge Reyna argued that the court’s ruling here “is an amalgamation of the two kinds of relief, which could be referred to as [m]andamus light. We deny the petition but explain errors in the district court’s decision and affirmatively instruct the district court to reconsider its decision in light of our discussion”. Indeed, Judge Reyna remarked that the process followed by the court “seems more interlocutory than mandamus”, and recommended that the Federal Circuit proceed cautiously. Otherwise, he warned, it would “risk creating a new form of relief that is not the mandamus relief established in rule or precedent”.

Finally, as noted above, the Federal Circuit has also previously criticized Judge Albright over the timing of his transfer decisions, with several defendants pursuing mandamus review over long-delayed rulings. That issue came to a head earlier this year through one such appeal involving defendant TracFone Wireless, which filed a mandamus petition after its convenience transfer decision sat undecided for eight months. The Federal Circuit granted that defendant’s petition on March 8 in In re: TracFone Wireless I, faulting Judge Albright for proceeding with claim construction and other matters without resolving that transfer motion—ruling that “district courts must give promptly filed transfer motions ‘top priority’ before resolving the substantive issues in the case”. As a result, Judge Albright issued a standing order later that month establishing that he either will rule on pending interdistrict transfer motions before holding a Markman hearing or delay the hearing. However, the order also imposed several requirements on the parties to such disputes, including one preventing litigants from filing a motion for interdistrict transfer within eight weeks of a scheduled claim construction hearing absent leave from the court. Judge Albright also directed parties to advise the court no later than six weeks before the Markman hearings when a pending transfer motion has been fully briefed and is “ready for resolution”.

Judge Albright has twice amended that order. In June, a first set of amendments established that in the event the Markman hearing is delayed due to a pending transfer motion, fact discovery will begin on the original hearing date. (In Judge Albright’s courtroom, all discovery is stayed before the Markman hearing except that which is related to venue, jurisdiction, and claim construction.) On August 18, Judge Albright issued a second amended order that shortened the “ready for resolution” notice deadline from six to four weeks prior to the Markman hearing, essentially giving the parties another two weeks to complete briefing. That latest order further asks that parties advise Judge Albright’s clerk within one week of that hearing that if he still has not issued a transfer decision.

See here for more on the Federal Circuit’s prior rulings on transfer timing in Judge Albright’s courtroom. A deep dive on the appellate court’s recent, precedential In re: Samsung ruling can also be found here.