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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
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`VLSI TECHNOLOGY LLC,
`Plaintiff,
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`v.
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`INTEL CORPORATION
`Defendant.
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`NO. 1:19-CV-977 (LEAD CASE)
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`ORDER TRANSFERRING TRIAL VENUE FOR -00254 CASE
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`Before the Court is the issue of whether to move the trial for the 6:19-cv-00254 case1 from
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`the Austin division—which is currently closed—to the Waco division —which is currently open—
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`for the scheduled trial in January. After considering the parties’ briefing, pursuant to the Federal
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`Rules of Civil Procedure and the Court’s inherent authority, the Court ORDERS that if the Austin
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`courthouse does not reopen in time for a January trial, the trial for the -00254 case will be held in
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`Waco.
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`I. FACTUAL BACKGROUND
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`VLSI sued Intel in three different cases for allegedly infringing eight patents. No. 6:19-cv-
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`254, ECF #1; No. 6:19-cv-0255, ECF #1; No. 6:19-cv-0256, ECF #1. On October 7, 2019, the
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`Court granted Intel’s Motion to Transfer to Austin because, at the time, the Court determined that
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`the Austin division was clearly more convenient than the Waco division. ECF #78. But since that
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`motion was granted, the COVID-19 pandemic has spread across the world, causing many
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`courthouses to close, including Austin’s federal courthouse.2
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`1 VLSI originally filed three cases against Intel (6:19-cv-00254, 6:19-cv-00255, and 6:19-cv-00256). These cases
`were consolidated and transferred to Austin. This Order only pertains to what was originally the -00254 case.
`2 Some courts have substituted telephonic hearings for in-person hearings. See, e.g., Order Regarding Conducting
`Oral Arguments signed by Chief Judge Prost, http://www.cafc.uscourts.gov/sites/default/files/rules-of-
`practice/Administrative-Orders/AdministrativeOrder-2020-02-05182020.pdf.
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`ANCORA Ex. 2020, Page 1
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 2 of 8
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`On March 11, 2020, the World Health Organization declared the COVID-19 outbreak a
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`pandemic.3 Two days later, President Trump declared the outbreak a national emergency.4 On
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`April 3, Judges Yeakel and Pitman closed the Austin courthouse to in-person hearings and trials
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`for what was expected to be a month.5 At that time, this Court left the trial venue in the instant
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`case undisturbed, believing that trial could still resume in October of 2020.6 Since then, the Austin
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`division has issued an additional six orders restricting courthouse entry, until at least the end of
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`November 2020.7 During that time, Chief Judge Garcia issued nine orders regarding court
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`operations under the circumstances created by the COVID-19 pandemic.8 In his Ninth Order, the
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`Chief Judge stated that:
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`[C]ourts in the district may opt to conduct jury trials within their respective division
`subject to a determination, based upon the facts and circumstance unique to the
`division, that conducting jury trials would not compromise the health and safety of
`Court personnel, litigants, counsel, law enforcement, witnesses and jurors. If judges
`in a specific division determine jury trials can be safely conducted, the most senior
`district judge within the relevant division may enter an order making those findings
`and resuming jury trials for the division despite this order and with notice to the
`Chief Judge.
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`3 New ICD-10-CM code for the 2019 Novel Coronavirus (COVID-19), April 1, 2020, Center for Disease Control and
`Prevention (CDC) (Mar. 18, 2020), https://www.cdc.gov/nchs/data/icd/Announcement-New-ICD-code-for-
`coronavirus-3-18-2020.pdf
`4 Press Release, The White House, Message to the Congress on Declaring a National Emergency Concerning the
`Novel Coronavirus Disease (COVID-19) Outbreak (Mar. 13, 2020), https://www.whitehouse.gov/briefings-
`statements/message-congress-declaring-national-emergency-concerning-novel-coronavirus-disease-covid-19-
`outbreak/
`5 See Order Relating to Entry Into the United States Courthouse Austin, Texas signed by US District Judges Lee
`Yeakel and Robert Pitman (Apr. 3, 2020), https://www.txwd.uscourts.gov/wp-
`content/uploads/2020/03/Order%20Austin%2004%2003%202020%20COVID-19.pdf.
`6 In light of the closure of the Austin courthouse, the Court only recently reset the trial in the -00254 case from
`October 2020 to January 2021. ECF #320.
`7 See Coronavirus (COVID-19) Guidance, United States District Court Western District of Texas,
`https://www.txwd.uscourts.gov/coronavirus-covid-19-guidance/ (last visited Nov. 13, 2020).
`8 See Ninth Supplemental Order Regarding Court Operations Under the Exigent Circumstances Created by the
`COVID-19 Pandemic signed by Chief US District Judge Orlando Garcia (Oct. 14, 2020),
`https://www.txwd.uscourts.gov/wp-content/uploads/2020/03/NinthSuppCovidOrder101420.pdf
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`ANCORA Ex. 2020, Page 2
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 3 of 8
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`Id. at 2. The Austin division has not yet issued an order permitting trials, while Waco division has
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`issued two orders permitting jury trials beginning in September 2020.9
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`In sum, the Austin division has been closed for eight months and remains closed
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`indefinitely. Meanwhile, the Waco division reopened in September 2020 and has since
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`successfully conducted three in-person jury trials.
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`In light of the upcoming January trial and the potential unavailability of the Austin
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`courthouse, the Court ordered the parties to provide supplemental briefing on whether the trial in
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`the -00254 case should be held in Waco. ECF #281 (Intel), #282 (VLSI). The Court addresses
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`the parties’ briefing below.
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`II. LEGAL ANALYSIS
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`If the Austin courthouse has not reopened for a January trial by late November, the Court
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`will hold the trial for the -00254 case in the Waco division pursuant to the Federal Rules of Civil
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`Procedure and the Court’s inherent authority.
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`1. The Federal Rules of Civil Procedure permit the Court to transfer this case to
`Waco without the parties’ consent
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`Rule 1 of the Federal Rules of Civil Procedure provides that the rules should be “construed,
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`administered, and employed by the court and the parties to secure the just, speedy, and inexpensive
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`determination of every action and proceeding.” Fed. R. Civ. P. 1. The Rules set forth specific
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`powers of a federal district court in order to accomplish “Rule 1’s paramount command: the just,
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`speedy, and inexpensive resolution of disputes” Dietz v. Bouldin, 136 S. Ct. 1885, 1891 (2016).
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`Rule 77(b) provides that “Every trial on the merits must be conducted in open court and,
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`so far as convenient, in a regular courtroom . . . But no hearing—other than one ex parte—may be
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`9 See, e.g., Divisional Standing Order Regarding Trials in Waco signed by US District Judge Albright (Sept. 23,
`2020), https://www.txwd.uscourts.gov/wp-content/uploads/2020/03/WacoStandingOrderTrials092320.pdf.
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`ANCORA Ex. 2020, Page 3
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 4 of 8
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`conducted outside the district unless all of the affected parties consent.” Courts in the Fifth
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`Circuit10 have uniformly interpreted Rule 77(b) as giving a district court the discretion to hold the
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`trial at any division within the district, even without the parties’ consent. Rios v. Scott, No. 1:02-
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`CV-136, 2002 WL 32075775, at *4 (E.D. Tex. 2002) (“It is now clear that trial of an action
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`properly laying venue within a district may occur within any division within that district and
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`irrespective of the parties’ consent.”); Morrow v. City of Tenaha Deputy City Marshal Washington,
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`No. 2:08-CV-288, 2008 WL 5203843, at *2 (E.D. Tex. Dec. 11, 2008) (“[T]he Federal Rules allow
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`significant discretion to district courts in deciding the place of trial, so long as it within the same
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`district, even without the consent of the parties.”); see also Cutler v. Austin, No. 2:11-CV-447-
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`JRG, 2012 WL 12904088, at *2 (E.D. Tex. Sept. 5, 2012); Transdata, Inc. v. Tri-County Electric
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`Coop., Inc., 6:11cv46 LED-JDL, 2011 WL 13134895, at *1 (E.D. Tex. Aug. 18, 2011).
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`In accord with this discretion granted by Rule 77(b) and complying with the command of
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`Rule 1, the Court, at the end of November, will consult with Judges Yeakel and Pitman to
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`determine if the Austin division will reopen in time for a January trial. If the Austin judges are
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`unable to say that the Austin courthouse will be available for a January trial, the Court will exercise
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`its discretion pursuant to Rule 77(b) and move the trial for the instant case to the Waco division in
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`order to ensure a just, speedy, and inexpensive resolution of the dispute.
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`10 Because this is not a question unique to patent law, the law of the regional circuit, i.e., Fifth Circuit, law governs.
`In re ZTE (USA) 890 F.3d 1008, 1012 (Fed. Cir. 2018). The Court notes that courts in the Fourth and Eleventh
`Circuits have also interpreted Rule 77(b) in the same manner as Fifth Circuit courts. Alabakis v. Iridium Holdings,
`LLC, No. DKC 2007-2032, 2007 WL 3245060, at *1 (D. Md. 2007) (“It is now clear that trial of an action properly
`laying venue within a district may occur within any division within that district irrespective of the parties’
`consent.”); Bishop v. C & P Trucking Co., Inc., 840 F. Supp. 118, 119 (N.D. Ala. 1993) (“The clear implication of
`[Rule 77(b)] is that the trial of a case may be held at any courthouse within the district even without the consent of
`the parties.”).
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`ANCORA Ex. 2020, Page 4
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 5 of 8
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`2. The Court may transfer the case under its inherent power
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`The Supreme Court has long recognized that a district court possesses inherent powers that
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`are governed by the “control necessarily vested in courts to manage their own affairs so as to
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`achieve the orderly and expeditious disposition of cases.” Dietz, 136 S. Ct. at 1891; see also In re
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`Cragar Indus., Inc. 706 F.2d 503, 506 (5th Cir. 1983) (“the system works best when able district
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`judges . . . are able to manage their own dockets.”) But district court’s exercise of its inherent
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`power must be a reasonable response to a specific problem and the power cannot contradict any
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`express rule or statute. Dietz, 136 S. Ct. at 1892.
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`Here, the specific problem before the Court is the indefinite closure of the Austin
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`courthouse. As described above, the Austin courthouse is currently closed and has been closed on
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`a month-by-month basis since March 2020. Furthermore, because there is no foreseeable end to
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`the COVID-19 pandemic, there likewise is no foreseeable end to the closure of the Austin
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`courthouse. But, out of an abundance of caution, the Court asked Judges Yeakel and Pitman
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`whether there is a month-certain when the Austin courthouse will reopen, but their answer was no.
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`As such, that answer confirmed the Court’s conclusion that the Austin courthouse appears to be
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`closed indefinitely.
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`Given this reality, the Court only has two options11 with respect to the instant case: (1) wait
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`until the Austin courthouse reopens or (2) move the trial to an open courthouse in the district. The
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`Court does not believe that the first option is practical or reasonable for several reasons.
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`First, the Court has already delayed the trial date in the instant case by two months and
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`there is no foreseeable date or date-certain when the Austin courthouse will reopen. Second, the
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`pandemic has created a backlog of trials such that delaying one trial further delays other trials.
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`11 Unfortunately, unlike circuit courts that may be able to hold telephonic hearings or district courts that may be able
`to hold a virtual bench trial, the Court does not believe that it is fair and/or appropriate to hold a virtual jury trial.
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`ANCORA Ex. 2020, Page 5
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 6 of 8
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`Therefore, the Court believes that it must manage its docket proactively in order to minimize the
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`effect of that backlog. Third, because the trial dates for the -00255 and -00256 cases are two and
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`four months, respectively, after the trial date for the -00254 case, delaying the trial date of the -
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`00254 case not only delays the trial date of that case, but it has a multiplicative effect by delaying
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`the trial dates of the other two cases by the same amount of time. Fourth, because patents have a
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`limited term, the Court does not believe it should unnecessarily delay a trial date, especially when
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`an alternate venue is available. For at least these reasons, the Court does not believe that waiting
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`until the Austin courthouse reopens is a practical or reasonable. As such, the only other option
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`available to the Court is to move the trial to Waco.
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`Holding the trial in the Waco division is a reasonable response to the indefinite closure of
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`the Austin courthouse. First, the Court is holding the trial in the closest open division. Second,
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`because the courthouse in Waco is only 102 miles away from the Austin courthouse, the amount
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`of inconvenience is minimal, if any.
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`Therefore, the Court’s exercise of its inherent power to move the trial from the Waco
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`division to the Austin division is a reasonable response to the specific problem of the Austin
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`courthouse being closed for the indefinite future. Furthermore, not only does this not contradict
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`any express rule or statute, but, as described above, the Federal Rules of Civil Procedure permit a
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`district court to do so without the parties’ consent.
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`In its brief, Intel relies heavily on Cragar, but the Court believes that its conclusion is fully
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`in accord with the guidance provided in Cragar and that Cragar is factually distinguishable from
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`the instant case. In Cragar, Plaintiff filed suit in the Northern District of Mississippi, but then
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`filed an unopposed motion to transfer to the Western District of Louisiana. Id. at 504. Much later
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`in the case, after one defendant filed a summary judgment motion, Plaintiff filed a motion to return
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`ANCORA Ex. 2020, Page 6
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 7 of 8
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`the case to the Northern District of Mississippi, which the district court granted. Defendants filed
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`a petition for a writ of mandamus regarding the order to retransfer back to Mississippi. Id.
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`The panel in Cragar provided the following guidance regarding retransfers:
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`When such unanticipatable post-transfer events frustrate the original purpose for
`transfer, a return of the case to the original transferor court does not foul the rule of
`the case nor place the transferee court in a position of reviewing the decision of its
`sister court. It, instead, represents a considered decision that the case then is better
`tried in the original forum for reasons which became known after the original
`transfer order.
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`Id. at 505 (emphasis in original). The panel further states that a retransfer should only be granted
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`“under the most impelling and unusual circumstances.” Id.
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`The Court’s decision to move the trial to the Waco division is completely consistent with
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`the guidance provided in Cragar. At the time the transfer order was granted, to say the COVID-
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`19 pandemic was an “unanticipatable post-transfer event” or “the most impelling and unusual
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`circumstance[]” would be an understatement. If anything, a worldwide pandemic may be the most
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`quintessential example of an unusual circumstance. Furthermore, the closure of the Austin
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`courthouse due to the pandemic has frustrated the original purpose of transferring the case to
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`Austin. Therefore, the Court believes that holding the trial in Waco is a considered decision based
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`on reasons that became known only after the original transfer order.
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`The Court finds that Cragar is readily distinguishable based on the facts for at least three
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`reasons. First, in Cragar, Plaintiff moved to transfer the case from the Northern District of
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`Mississippi to the Western District of Louisiana and also to re-transfer the case back to the
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`Northern District of Mississippi. Here, Defendant moved to transfer to Austin and the Court raised
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`the issue of holding the trial in Waco. In other words, unlike like the Plaintiff in Cragar, VLSI
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`did not move to transfer to Austin or back to Waco. Second, in Cragar, Plaintiff moved to
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`ANCORA Ex. 2020, Page 7
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`Case 1:19-cv-00977-ADA Document 352 Filed 11/20/20 Page 8 of 8
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`retransfer the case to Mississippi for tactical reasons whereas in this case, the Court is moving the
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`trial as a result of the pandemic. Third, in Cragar, Plaintiff moved for an interdistrict re
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`transfer whereas the transfer of the trial in this case is intradistrict. Relatedly, in Cragar,
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`transferring the case to another district would assign that case to the docket of a different judge
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`whereas the judge remains the same in this case.
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`IV. Conclusion
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`Therefore, pursuant to the Federal Rule of Civil Procedure 77(b) and the Court’s inherent
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`authority, the Court ORDERS that if the Austin courthouse does not reopen with enough time to
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`hold a January trial, the trial for the -00254 case will be held in Waco.
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`SIGNED this 20th day of November, 2020.
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`ALAN D ALBRIGHT
`UNITED STATES DISTRICT JUDGE
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`ANCORA Ex. 2020, Page 8
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