Message to Judge Albright: See motions are first order of business | McDermott Will & Emery

The United States Court of Appeals for the Federal Circuit has vacated a scheduling order from the United States District Court for the Western District of Texas and ordered the court to defer fact finding and other substantive proceedings until it has considered a motion to transfer. With reference to: Apple Inc., Case No. 22-162 (Fed. Cir. Nov. 8, 2022) (Reyna, J.) The Federal Circuit directed that Apple’s motion to transfer must proceed expeditiously as the first order of business, precluding the discovery of facts and other substantive matters. The court has repeatedly rebuked Judge Albright for his refusal to transfer patent cases out of the Western District of Texas.

Aire Technology sued Apple for patent infringement in October 2021. In April 2022, Apple transferred the action to the United States District Court for the Northern District of California, pursuant to 28 USC § 1404(a) . Upon discovery, Apple submitted statements from its employees, offered to make registrants available for deposition and said it did not object to a “reasonable continuation” of the transfer proceeding. Judge Albright granted Apple’s motion but his spontaneity ordered the parties to complete discovery of the facts (which the court extended by 30 weeks) followed by another six weeks of review before it would rule on Apple’s transfer request. Apple has petitioned for mandamus with the Federal Circuit seeking an order to vacate the District Court’s scheduling order and promptly adjudicate on the motion to transfer, staying all proceedings on the merits until the transfer is resolved.

Apple argued that the district court abused its discretion by ordering the parties to complete an additional 30 weeks of fact-finding and six weeks of review of the matter to decide on Apple’s transfer request. Apple noted that by the time the District Court heard Apple’s motion, it would have been a full year since Apple initially applied for the transfer, fact discovery would have been complete, the parties’ infringement and invalidity claims would have been settled. notified, the alleged claims and references to the prior art would have been restricted and the parties would have exchanged preliminary trial documents and witness lists.

The Federal Circuit agreed with Apple that the District Court’s scheduling order went too far. The Court stated that “it is a clear abuse of discretion to require the parties to expend additional party and court resources challenging the substantive issues of the case while Apple’s motion for transfer remains unnecessarily on the record.” The Court noted that Aire agreed to resolve Apple’s motion to transfer at any time, provided no suspension would interfere with discovery, the claim construction process, or preparing the case for trial.

The Federal Circuit did not agree with the District Court’s view that delaying the decision until after full discovery of the facts and reexamination could reduce “speculation” and “allow the parties to provide the court with the best evidence to rule on a motion to transfer”. The Court said that the discovery of the motion to transfer itself was sufficient to allow for a decision on that motion, especially since the parties agreed that further discovery of the venue was unnecessary. The Federal Circuit ordered the District Court to “proceed expeditiously [on the transfer motion] as the first order of business.

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