CAFC Cautions Against IPR Stay Considerations in Venue Dispute
A mandamus is considered an extraordinary remedy — especially in the venue context where district courts are accorded broad discretion. Nevertheless, where a motion to transfer presents an indisputable right, mandamus is proper. Recently, the Federal Circuit has been uncharacteristically outspoken that the WDTX is doing it wrong.
The most recent WDTX mandamus on this issue, while unsuccessful, found the Federal Circuit once again pointing out improper analysis.
In a dispute involving Intel, (here) the WDTX considered that it could likely resolve the Intel case faster than the California court, and that, in fact, the NDCA was likely to stay the case pending the PTAB’s IPR process. The Federal Circuit explained this consideration was misplaced, nothing that the policy behind PTAB proceedings is to simplify the work of the courts.
To be sure, the district court erred in weighing against transfer the likelihood that the California court would stay proceedings pending the Patent Office’s review.
. . . . ¶ The inter partes review process, like other post-issuance review proceedings, was designed to give the agency an opportunity to correct its mistakes, to give courts the benefit of the agency’s consideration of the effect of prior art on patents being asserted in litigation, and to reduce the burden of litigation on the parties and the courts. . . .For that reason, the willingness of a court in the transferee forum to consider granting stays pending inter partes review (and the disposition of the transferor court not to grant such stays) is not a justification for denying transfer.
(internal citations omitted)
As can be appreciated, if appropriate, this kind of analysis would in effect stack the deck against transfer to NDCA (where stays are always far more likely than Texas courts). The WDTX has been ordered by the Federal Circuit to transfer cases out of the WDTX in an increasing number of disputes.
The forthcoming “Restoring the America Invents Act” is going to “strongly encourage” stays pending PTAB review.