Case: 21-118 Document: 5 Page: 1 Filed: 03/08/2021
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`NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
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`In re: TRACFONE WIRELESS, INC.,
`Petitioner
`______________________
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`2021-118
`______________________
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`On Petition for Writ of Mandamus to the United States
`District Court for the Western District of Texas in No. 6:20-
`cv-00303-ADA, Judge Alan D. Albright.
`______________________
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`ON PETITION
`______________________
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`
`
`Before REYNA, CHEN, and HUGHES, Circuit Judges.
`PER CURIAM.
`
`O R D E R
`TracFone Wireless, Inc. petitions for a writ of manda-
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`mus directing the United States District Court for the
`Western District of Texas to transfer this case to the
`United States District Court for the Southern District of
`Florida, or in the alternative, to direct the district court to
`stay proceedings until such time the district court rules on
`TracFone’s motion to transfer. Precis Group LLC responds
`and takes “no position regarding the relief requested.”
` We apply the law of the United States Court of Appeals
`for the Fifth Circuit in cases arising from district courts in
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`GOOGLE EXHIBIT 1042
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`IN RE: TRACFONE WIRELESS, INC.
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`that circuit. We therefore review a district court’s decision
`on a motion to transfer on a clear abuse of discretion stand-
`ard. In this regard, we have granted mandamus to stay
`proceedings and order prompt action on a long-pending mo-
`tion to transfer where the district court has refused to take
`action. See, e.g., In re SK hynix Inc., 835 F. App’x 600 (Fed.
`Cir. 2021); In re Google, No. 2015-138, 2015 WL 5294800
`(Fed. Cir. Jul. 16, 2015); cf. In re TS Tech USA Corp., 551
`F.3d 1315, 1319 (Fed. Cir. 2008).
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`Precis filed this patent infringement suit against
`TracFone on April 21, 2020. On June 22, 2020, TracFone
`moved to dismiss the case based on improper venue or al-
`ternatively to transfer the case to the United States Dis-
`trict Court for the Southern District of Florida pursuant to
`both 28 U.S.C. § 1404(a) and 28 U.S.C. § 1406. The motion
`was fully briefed by July 14, 2020. Shortly thereafter, the
`district court issued a scheduling order for discovery, a
`Markman hearing, and the start of trial.
`On October 1, 2020, TracFone moved the district court
`to stay all proceedings pending resolution of its venue mo-
`tion. Not having heard from the court on either the motion
`to dismiss or the motion to transfer by December 21, 2020,
`TracFone moved for a decision on its motion to transfer be-
`fore the Markman hearing scheduled for December 29,
`2020. The district court also did not rule on that request.
`Instead, the district court conducted the Markman hearing
`as scheduled and issued a claim construction order the fol-
`lowing day. Having still received no ruling from the dis-
`trict court on any of its requests, TracFone filed this
`petition for writ of mandamus on March 2, 2020.
`We addressed strikingly similar circumstances from
`the same district court last month in SK hynix. There, as
`here, the petitioners sought mandamus relief from this
`court after waiting nearly eight months for a ruling on a
`motion to transfer that was fully briefed. We agreed with
`the petitioner that “the district court’s handling of the
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`IN RE: TRACFONE WIRELESS, INC.
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`transfer motion up until this point in the case has
`amounted to egregious delay and blatant disregard for
`precedent.” 835 F. App’x at 600–01. We did not compel
`further action because the district court scheduled a hear-
`ing while the petition was pending before this court, but we
`directed the district court to stay proceedings, including
`the upcoming Markman hearing, until the district court
`ruled on the motion. We explained that mandamus was
`appropriate because “precedent compels entitlement to
`such relief and the district court’s continued refusal to give
`priority to deciding the transfer issues demonstrates that
`SK hynix has no alternative means by which to obtain it.”
`Id. at. 601.
`In Google, we explained that lengthy delays in resolv-
`ing transfer motions can frustrate the intent of § 1404(a)
`by forcing defendants “to expend resources litigating sub-
`stantive matters in an inconvenient venue while a motion
`to transfer lingers unnecessarily on the docket.” 2015 WL
`5294800 at *1. We concluded that a trial court’s failure to
`act on a fully briefed transfer motion that had been pend-
`ing for approximately eight months while pressing forward
`with discovery and claim construction issues amounted to
`an arbitrary refusal to consider the merits of the transfer
`motion. Id. at *1–2. We therefore directed the district
`court to promptly rule and to stay all proceedings pending
`completion of the motion. Id. at *2.
`Our decisions in Google and SK hynix rest on a princi-
`ple well-established in Fifth Circuit law: That district
`courts must give promptly filed transfer motions “top pri-
`ority” before resolving the substantive issues in the case.
`In re Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003)
`(“[I]n our view disposition of that [transfer] motion should
`have taken a top priority in the handling of this case by the
`. . . District Court.”); see also In re Apple, Inc., 979 F.3d
`1332, 1337 (Fed. Cir. 2020 (explaining that “once a party
`files a transfer motion, disposing of that motion should un-
`questionably take top priority.”); In re Nintendo Co., Ltd.,
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`IN RE: TRACFONE WIRELESS, INC.
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`544 F. App’x 934, 941 (Fed. Cir. 2013) (“[A] trial court must
`first address whether it is a proper and convenient venue
`before addressing any substantive portion of the case.”).
`We agree with TracFone that the circumstances here
`are comparable to those in Google. As in Google, the facts
`here establish that the district court has clearly abused its
`discretion. And, unlike in SK hynix, the court to date has
`taken no action to suggest it is proceeding towards quick
`resolution of the motion.
`We order the district court to stay all proceedings until
`such time that it issues a ruling on the motion to transfer
`that provides a basis for its decision that is capable of
`meaningful appellate review. See SK hynix, 835 F. App’x
`at 601. We do not here address TracFone’s motions, leav-
`ing those decisions to be made by the district court in the
`first instance. But we remind the lower court that any fa-
`miliarity that it has gained with the underlying litigation
`due to the progress of the case since the filing of the com-
`plaint is irrelevant when considering the transfer motion
`and should not color its decision. See Google, 2015 WL
`5294800 at *2.
`Accordingly,
`IT IS ORDERED THAT:
`The Petition for Writ of Mandamus is granted and the
`district court is ordered to issue its ruling on the motion to
`transfer within 30 days from the issuance of this order, and
`to provide a reasoned basis for its ruling that is capable of
`meaningful appellate review. See SK hynix, 835 F. App’x
`at 601. We also order that all proceedings in the case are
`stayed until further notice. We do not address the merits
`of TracFone’s motions, leaving those decisions to be made
`by the district court in the first instance. But we remind
`the lower court that any familiarity that it has gained with
`the underlying litigation due to the progress of the case
`since the filing of the complaint is irrelevant when
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`considering the transfer motion and should not color its de-
`cision. See Google, 2015 WL 5294800 at *2.
`FOR THE COURT
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` March 08, 2021
`/s/ Peter R. Marksteiner
`Date
`Peter R. Marksteiner
`Clerk of Court
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`s24
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