Case: 21-118 Document: 5 Page: 1 Filed: 03/08/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: TRACFONE WIRELESS, INC.,
Petitioner
______________________
2021-118
______________________
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.
______________________
ON PETITION
______________________
Before REYNA, CHEN, and HUGHES, Circuit Judges.
PER CURIAM.
ORDER
TracFone Wireless, Inc. petitions for a writ of manda-
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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2 IN RE: TRACFONE WIRELESS, INC.
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).
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. 3
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.,
Case: 21-118 Document: 5 Page: 4 Filed: 03/08/2021
4 IN RE: TRACFONE WIRELESS, INC.
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
Case: 21-118 Document: 5 Page: 5 Filed: 03/08/2021
IN RE: TRACFONE WIRELESS, INC. 5
considering the transfer motion and should not color its de-
cision. See Google,
2015 WL 5294800 at *2.
FOR THE COURT
March 08, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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