The Federal Circuit’s Newest Mandamus Ruling in In re: SK hynix Highlights (Again) the Need for “Top Priority” in Resolving Transfer Motions

Earlier today the Federal Circuit granted a petition for mandamus in In re: SK hynix, the fourth in a recent string of significant orders concerning transfer-motion practice before Judge Albright. However, unlike the Federal Circuit’s prior orders in In re: Apple and In re: Intel (parts 1 and 2), this ruling doesn’t concern the substance of the transfer request. Rather, the Federal Circuit, in an opinion authored by Judge Moore, instead saw merit in petitioner SK hynix’s complaint that the District Court was taking too long to rule on its pending transfer motion—and thus granted SK hynix’s alternative request for relief, by staying all further substantive proceedings until the transfer motion is resolved.

As background, Netlist filed suit against SK hynix in March 2020. SK hynix moved to transfer to the Central District of California on May 4, 2020; briefing was completed on May 26. The Markman hearing was scheduled for March 19, 2021. As of this writing, the District Court has not yet ruled on the transfer motion. 

With the Markman hearing approaching, on December 15 SK hynix moved to stay further substantive proceedings pending disposition of its transfer motion. On January 6, 2021, the District Court “informed the parties of its policy ‘to proceed with all deadlines while [it] resolves the jurisdictional issues in parallel.’” (The District Court’s statement does not appear in a docketed filing; it is drawn from an email from chambers to the parties, submitted as record support for SK hynix’s petition.) SK hynix filed its mandamus petition on January 22—requesting as relief that the case be transferred to the C.D. Cal., or in the alternative, that all substantive proceedings be stayed pending the District Court’s transfer order. The District Court then set a hearing on the transfer motion for February 2.

In its ruling, the Federal Circuit declined to order transfer to C.D. Cal., noting that “[i]n light of the fact that the district court has now scheduled a hearing on the motion and is presumably proceeding toward a resolution of the transfer issue, we are not prepared to say that a writ of mandamus to compel the court to act on the motion would be necessary or appropriate at this juncture.” However, the Federal Circuit put a halt to all non-transfer-related activities: “The petition is granted to the extent that the district court must stay all proceedings concerning the substantive issues in the case until such time that it has issued a ruling on the transfer motion capable of providing meaningful appellate review of the reasons for its decision.”

In support of its ruling, the Federal Circuit quoted its own recent In re: Apple order: “[a]lthough district courts have discretion as to how to handle their dockets, once a party files a transfer motion, disposing of that motion should unquestionably take top priority.” In applying that principle to the facts of SK hynix, the Federal Circuit found that “[n]o such priority was given to the motion here, as it simply lingered unnecessarily on the docket while the district court required the parties to proceed ahead with the merits.”

One initial takeaway: When the Federal Circuit in Apple said transfer motions should receive “top priority,” it meant what it said. But as far as go-forward guidance to the District Court (and litigants), the SK hynix decision doesn’t draw a bright line about how that “priority” should be practically implemented. About all that’s clear is that eight months following close of briefing, with no order yet issued, is too long. 

But perhaps that’s unsurprising: Only two weeks ago in its second Intel mandamus order, the Federal Circuit acknowledged the “considerable discretion” that the District Court retains with respect to the substantive aspects of Section 1404 analysis. It is also interesting to see that this SK hynix ruling was authored by Judge Moore, who vigorously dissented from the panel majority’s opinion in Apple, on the grounds that the appellate court had “usurp[ed] the district court’s role in the transfer process”—with apparently no such reservations here.

So all in all, the Federal Circuit’s SK hynix ruling apparently leaves some measure of discretion with the District Court as to the timing of conducting transfer analyses—but with limits. As always, we’ll watch the space and keep our readers apprised of relevant developments.

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