What’s Next for VLSI-Intel!

Based on yet another Federal Circuit mandamus order issued earlier today, we now know the answer to the question we posed a few weeks back, about when the VLSI v. Intel trial scheduled before Judge Albright is actually likely to open.

To review, in November and December, we covered:

  1. Judge Albright’s decision to transfer the trial in VLSI v. Intel from Austin to Waco (after having previously transferred the case from Waco to Austin), in light of COVID-related restrictions that rendered the Austin federal courthouse indefinitely unavailable;
  2. The Federal Circuit’s subsequent mandamus ruling reversing Judge Albright’s transfer order; and 
  3. Judge Albright’s follow-on decision to transfer the entire VLSI v. Intel case from Austin to Waco, based on the Court’s assessment that “unanticipated post-transfer events frustrated the original purpose for transfer of the case from Waco to Austin originally.”

As Intel indicated it would, Intel pursued a second round of mandamus relief before the Federal Circuit, casting the Court’s February 16 trial date into doubt. But today’s Federal Circuit ruling lets Judge Albright’s transfer order stand. The vast majority of the Federal Circuit’s order is simply a detailed recitation of the case procedural history, with analysis limited to the two final paragraphs, reproduced here (citations omitted; emphasis added):

Issuance of a writ of mandamus is a “drastic” remedy, “reserved for really extraordinary causes.” A district court generally has considerable discretion in deciding whether to transfer an action under § 1404(a), and we review its decision on mandamus only for a clear abuse of discretion producing a patently erroneous result. That means we will not second guess a district court’s determinations “as long as there is plausible support in the record for that conclusion.” Intel has not satisfied that exacting standard here. 

Complying with our order, the district court assessed whether “‘unanticipated post-transfer events frustrated the original purpose for transfer’ of the case from Waco to Austin originally.” Taking into account the relevant traditional transfer factors, the district court concluded that it did and that re-transfer to Waco was warranted. While we may have evaluated these factors and the parties’ arguments differently, we are unable to say that the district court’s conclusion amounts to a clear abuse of discretion.

Those who have been closely following Federal Circuit mandamus proceedings relating to Judge Albright’s Court will note that the Federal Circuit applied a much lighter touch to its analysis here than it did in its early November mandamus ruling in In re: Apple, which reversed Judge Albright’s prior denial of a motion to transfer. In that case, Judge Moore’s spirited dissent argued that the panel majority had “usurp[ed] the district court’s role in the transfer process” by micromanaging the District Court’s transfer analysis. Notably, Federal Circuit Chief Judge Prost authored both the Apple and Intel mandamus rulings. Does Intel represent a step back by the appellate court? Was Judge Albright’s transfer order more fulsomely detailed in Intel than in Apple? We won’t presume to answer those questions just yet, but we welcome opinions from other close watchers of the Federal Circuit.

In terms of next steps, we may soon see Judge Albright’s second-ever patent trial. The most recent case activity still reflects the February 16 trial date. As always, we will watch the docket and bring you any significant updates.

In particular, we’ll track late-breaking developments from a declaratory judgment action launched by Intel against Fortress Investment Group LLC in the Delaware Court of Chancery on January 11. It’s complicated, but Intel alleges essentially that (1) Intel was licensed to a patent portfolio owned by Finjan Holdings, Inc., via a 2012 agreement; (2) the terms of Intel’s agreement with Finjan grant Intel a license to patent assets owned or controlled by Finjan’s affiliates; (3) Fortress acquired Finjan in July 2020; (4) Fortress controls the patents presently asserted by Fortress’s subsidiary VLSI; and thus (5) Intel’s prior license with Finjan now also grants Intel a license to all patents owned or controlled by Fortress, including VLSI’s portfolio. We are not presently aware of any steps taken by Intel to further push back the February 16 Waco trial based on the Delaware action, but we will continue to monitor both the WDTX and Delaware cases.

It’s always interesting…

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Image credit to S K.