What Comes Next in Waco When the Federal Circuit Orders Venue Transfer?

Welcome to continuing coverage of the Federal Circuit’s In re: Apple mandamus order. In this post we’ll focus on the near-term consequences of the ruling.

First, here’s what’s happened to the litigants: Monday afternoon the Court convened a status conference involving plaintiff Uniloc 2017 and defendant Apple. The hearing was intended to address percolating discovery disputes, along with Apple’s pending motion to stay further discovery. Apple’s position was essentially twofold: (1) the case should be immediately transferred to NDCA in light of the Federal Circuit’s ruling; and (2) failing that, all further discovery should be stayed. In response, Uniloc maintained that (1) no NDCA transfer should occur till Uniloc has exhausted its opportunities to challenge the Federal Circuit on rehearing, and (2) since discovery would proceed if the case were to be transferred to NDCA, it might as well keep moving forward in WDTX in the meanwhile.

The Court took a middle path: Judge Albright indicated that because the panel was so divided (we covered both the majority and dissenting opinions last week), he was inclined to await ultimate resolution of any Federal Circuit rehearing before transferring the case to NDCA, lest it immediately (and inefficiently) “boomerang” right back to Waco. Without committing to a ruling in any future case, Judge Albright indicated that the Court might well have proceeded differently had the Federal Circuit’s ruling been unanimous. But Judge Albright also acknowledged the Federal Circuit panel majority’s statements that disfavor pressing ahead with merits-based issues while a transfer motion is pending.

Ultimately, the Court posed a question to Uniloc: Would Uniloc prefer the case be transferred to NDCA so Uniloc could pursue discovery in that forum, or would Uniloc prefer to stay the WDTX case pending resolution of the Federal Circuit proceedings? Uniloc indicated the latter, and the Court’s ensuing order reflected that: “[T]he Court determined that it will not transfer the case since the Order to Transfer is being reviewed. The Case is currently stayed with no activity until it is determined whether it will be transferred or not.” (ECF No. 109.)

So how does the Uniloc-Apple case fit into context? We haven’t yet covered it on the blog—in part because some relevant rulings pre-date our publication’s launch—but the Federal Circuit has recently ordered at least partial relief in connection with three other mandamus petitions relating to transfer motions pending before Judge Albright. (To be clear, the Federal Circuit has also denied other mandamus petitions for transfer-related relief; the focus here is on orders that necessitated follow-up steps at the District Court.) Those three cases are:

SynKloud Techs., LLC v. Adobe, Inc. (No. 6:19-cv-527): On July 28 the Federal Circuit issued a mandamus order in In re: Adobe, Inc., directing the District Court to transfer SynKloud’s litigation against Adobe to NDCA. On July 31 the District Court then stayed litigation deadlines pending a status conference (ECF No. 48). At an August 5 conference, much as in Uniloc-Apple, the Court indicated that it would allow SynKloud to pursue relief from the mandamus order before ordering transfer—but that pending deadlines for claim construction briefing and the Markman hearing would be taken off the calendar. Following that conference:

  • On August 27 SynKloud informed the District Court that it was pursuing panel rehearing and rehearing en banc at the Federal Circuit (ECF No. 54).
  • On September 30 the Federal Circuit issued its order denying SynKloud’s rehearing request (ECF No. 56).
  • On November 3 the Court transferred the case to NDCA (ECF No. 60).

SynKloud Techs., LLC v. DropBox, Inc. (No. 6:19-cv-526): The Federal Circuit issued a companion mandamus order in In re: DropBox, Inc. on the same day as In re: Adobe, noting that, since the District Court had relied in part on related cases pending in the WDTX in conducting its transfer analysis, the District Court should revisit that analysis on remand in light of the Adobe transfer. The SynKloud-DropBox case was subject to the same July 31 stay, August 5 conference, and adjournment of claim-construction deadlines as the SynKloud-Adobe case—but thereafter the cases diverged. On August 5 DropBox moved for reconsideration of the Court’s prior transfer order; briefing closed August 26. Since then DropBox has twice “pinged” the Court, filing a notice of the Federal Circuit’s Adobe rehearing denial on September 30 (ECF No. 74), and filing a notice of supplemental authority on October 2 relating to the Federal Circuit’s In re: HP mandamus order concerning HP’s motion to transfer from the EDTX (ECF No. 75). But there’s been no recent substantive activity on the docket, apparently indicating that the Court continues to consider the transfer-related issues while claim construction (and all other discovery) remains stayed.

Cameron Int’l Corp. v. Nitro Fluids L.L.C. (No. 6:20-cv-125): On October 28, the Federal Circuit issued a mandamus order in In re: Nitro Fluids L.L.C., in which, because of a legal error in its prior order, the Federal Circuit directed the District Court to revisit its analysis of the Fifth Circuit’s Volkwagen transfer factors in light of a correct interpretation of the first-filed rule. Since then, in the companion District Court case, the Court has issued its Markman Order (the hearing was October 16); the parties jointly moved on November 6 to enter a scheduling order for post-Markman discovery; and the Court entered that scheduling order on November 9. The docket does not indicate any attempts by defendant Nitro to “fast-forward” the transfer reconsideration analysis on remand.

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What conclusions, if any, can we draw? It appears that, if the Federal Circuit grants a mandamus transfer, and if the party seeking transfer so asks, at the very least the Court will stay discovery in the short run pending final (or near-final) resolution of the transfer request. It also appears that the Court will allow the party opposing transfer to exhaust its appellate rights before moving the case to the transferee venue. Of course, whether the Court will continue that pattern if the Federal Circuit issues any future unanimously-decided transfer orders is an open question.