Federal Circuit Orders Transfer Of Another Judge Albright Case
On October 19, 2021, the United States Court of Appeals for the Federal Circuit (“CAFC”) granted a petition for writ of mandamus ordering the United States District Court for the Western District of Texas to transfer the underlying action to the United States District Court for the District of Colorado. In re DISH Network, L.L.C., No. 2021-182 (Fed. Cir. Oct. 19, 2021). The CAFC held that Judge Albright abused his discretion when denying DISH’s motion to transfer on convenience grounds pursuant to 28 U.S.C. § 1404(a).
As we have written in other posts, in a Section 1404(a) analysis, the district court addresses two questions. First, the court must determine whether the action could have been brought in the transferee forum. Second, if so, the court weighs a number of private and public “convenience” factors to determine whether the transferee forum is “clearly more convenient.” The private factors include: “(1) the relative ease of access to sources of proof; (2) the availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious and inexpensive.” In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). The public factors include: “(1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflict of laws or the application of foreign law.” Id.
The CAFC’s review of district-court transfer decisions is governed by regional circuit law (here, the Fifth Circuit in which the Western District of Texas sits). Although a district court enjoys broad discretion in its transfer decisions, it is not unlimited. When a court’s denial of a motion to transfer clearly contravenes governing legal standards and is an abuse of discretion, a mandamus to overturn denial is warranted.
This is the second time DISH petitioned the CAFC for a writ of mandamus in the underlying district court action. In its first petition, the CAFC denied mandamus. Although the CAFC “noted several specific errors in the court’s analysis of the convenience of the witnesses, practical problems, and local interest factors” based on the CAFC’s decisions In re Samsung Electrs. Co., 2 F.4th 1371 (Fed. Cir. 2021) and In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020), the CAFC stated that it does “not view issuance of mandamus as needed here because [the CAFC is] confident the district court will reconsider its determination in light of the appropriate legal standard and precedent on its own.” In re DISH Network L.L.C., 856 F. App’x 310, 311 (Fed. Cir. 2021). However, Judge Albright again denied DISH’s renewed motion to transfer, leading to the instant petition.
This time, the CAFC granted mandamus and ordered transfer. First, according to the court, “the center of gravity of this patent infringement action is clearly in Colorado, not in Western Texas.” Second, the district court erred in not weighing the sources of proof factor in favor of transfer, as DISH’s relevant documents are in Colorado, and no sources of proof were in Western Texas. The district court further erred by stating that the factor was neutral because DISH’s documents were stored electronically. That is legal error under Fifth Circuit precedent (though it is a statement that Judge Albright continues to make frequently in his transfer decisions). Third, the district court erred in not weighing the compulsory process factor in favor of transfer, including prior art witnesses and former DISH employees. This too was legal error, as it was based on the court “improperly substitut[ing] its own assumption that prior art witnesses were unlikely to testify in place of a specific reason to believe that those identified witnesses would not testify.” (This too is a frequent position taken by Judge Albright.) Fourth, the local interest factor favors transfer, because although DISH has facilities in Western Texas, that “connection is insubstantial compared to Colorado’s significant connection to the design and development of the accused features.” Fifth, the district court erred in weighing the practical problems factor significantly against transfer, noting that the mere co-pendency of other cases does not automatically tip the scale to deny transfer. Last, the district court erred in analyzing the court-congestion factor, because, as in Samsung, “a court’s general ability to set a fast-paced schedule is not particularly relevant to this factor.”
After analyzing Judge Albright’s rationale to deny transfer, the CAFC found that—similar to prior cases—“several of the most important factors bearing on the transfer decision in this case strongly favor the transferee court.” Accordingly, the CAFC ordered transfer. This is the latest in a string of mandamus petitions ordering cases transferred from Judge Albright’s court. It remains interesting to see if the pace will continue.