Federal Circuit Scolds Texas Court for Letting Transfer Motion Linger

By IPWatchdog
February 2, 2021

“Although district courts have discretion as to how to handle their dockets, once a party files a transfer motion, disposing of that motion should unquestionably take top priority.” – CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled on February 1 that Western District of Texas Judge Alan Albright’s handling of a motion to transfer by SK hynix “amounted to egregious delay and blatant disregard for precedent” and ordered the district court to stay all proceedings until it has issued a ruling on the transfer motion “capable of providing meaningful appellate review of the reasons for its decision.”

The order was in response to a petition for writ of mandamus filed by SK hynix Inc. and SK hynix America Inc. asking the CAFC to either direct the district court to transfer Netlist Inc.’s patent infringement suit against SK Hynix to the United States District Court for the Central District of California or to direct the district court to stay the proceedings in order to rule on the motion to transfer. Netlist had filed a suit against SK hynix in March 2020, alleging infringement of its standard essential patents relating to DDR4 [Double Data Rate 4] memory module standards, U.S. Patent No. 9,858,218 and U.S. Patent No. 10,474,595. In response, SK hynix moved to transfer the case and Netlist filed a response on May 18, while SK hynix replied to that response on May 26. However, the court has still not ruled on the motion and discovery has been ordered and Markman proceedings scheduled for March 2021. A December 2020 request to stay proceedings pending the decision on the transfer motion was denied in January 2021, when “the court informed the parties of its policy ‘to proceed with all deadlines while [it] resolves the jurisdictional issues in parallel.’” On January 28, after SK hynix’s petition to the CAFC had been filed, the district court issued an order setting a hearing on the transfer motion for the morning of February 2, 2021.

The CAFC called the district court’s handling of the matter “egregious,” said that it “amounted to egregious delay and blatant disregard for precedent,” and accused the court of allowing the transfer motion to linger “unnecessarily on the docket while the district court required the parties to proceed ahead with the merits.” Citing In re Apple Inc., 979 F.3d 1332, 1337 (Fed. Cir. 2020), the CAFC explained that “[a]lthough district courts have discretion as to how to handle their dockets, once a party files a transfer motion, disposing of that motion should unquestionably take top priority.”

While the CAFC stopped short of granting the writ of mandamus to compel the court to act on the motion, stating that court seemed to now be proceeding toward a resolution of the transfer, the appellate court said that “given the lengthy delay and upcoming Markman hearing, we find it appropriate to grant the petition to the extent that the district court must stay all proceedings concerning the substantive issues of the case and all discovery until such time that it has issued a ruling on the motion capable of providing meaningful appellate review of the reasons for its decision.”

 

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Discuss this

There are currently 21 Comments comments.

  1. Pro Say February 2, 2021 5:07 pm

    “amounted to . . . blatant disregard for precedent,”

    . . . so says the very same court which repeatedly refuses to follow the Supreme Court’s (unconstitutional though it be) explicit instructions of how to conduct a proper claim eligibility analysis (including — but from limited to — alleging more than one abstract concept in a claim).

    Which refusal is the proximate cause of the crippling, grand mal seizure of American innovation.

  2. Anon February 2, 2021 7:06 pm

    Pro Say,

    I think that you have (errantly) beaten that “only one” dead horse into oblivion.

    At this point, it is more detrimental and induces a skipping over any other point that you may be sharing.

  3. Pro Say February 3, 2021 11:50 am

    Ouch. Sorry, my friend Anon, but you miss the mark here.

    That the CAFC — and sadly the Patent Office as well (no doubt feeling that the CAFC leaves them no choice in the matter) — approves of (CAFC) and alleges (PTO) multiple abstract ideas within the same claim constitutes a blatant, innovation-crippling misapplication of the Supreme Court’s express instruction to the contrary.

    When and how did SCOTUS’s one . . . become 2, 3, 4 or more?

    Read the decision again. One is one is one.

    That I continue to beat the drum on this is no different than you continuing to beat your own drum that “the scoreboard is broken.”

    Isn’t that: “more detrimental and induces a skipping over any other point you may be sharing?”

    We are both correct, and if and until the powers that be restore patent eligibility to all areas of innovation, we should — and indeed must — continue to beat these drums.

    American innovation deserves no less.

  4. Anon February 3, 2021 2:40 pm

    Pro Say,

    the use of the singular often includes the use of the plural (and vice versa) in legal contexts.

    Further, your view is crabbed in that any ONE idea may well be considered to be a compilation of several SUB-ideas.

    Sorry, my pal (I know that you mean well), but it is not I that misses the legal mark her, but thee.

  5. Pro Say February 3, 2021 5:10 pm

    Anon, my friend. Looks like we’ll have to agree to disagree on this one. 🙂

    Your “approach” feeds right into the CAFC’s abhorrent, “the ends justifies the means” approach to the eligibility analysis.

    In this particular case, one really is . . . one and only one. There is no “one can be one, two, three, or more” legal context escape hatch.

    Had such not been the case, SCOTUS certainly would have said so.

    They — wisely and presciently — did not.

    The CAFC made multiple abstract ideas up out of thin air.

    If you don’t believe that one means one, is there any cap to the number of abstract ideas / concepts which may be alleged that a given claim contains?

    In a claim with 10 limitations, may 10 abstract ideas be alleged — one for each limitation?

    Can there even be multiple abstract ideas alleged . . . in each limitation?

    Under your belief, this is apparently just fine.

    And “sub-ideas?”

    But this is all insanity my friend.

    Unadulterated insanity.

  6. Anon February 4, 2021 7:39 am

    Yes, we will have to agree to disagree, even as I point out how you want to appear to paint the Supreme Court as “wise” — even as the blight is directly traceable to them.

    Sadly, the singular/plural is a legal construct, and you are stuck in a colloquial view.

  7. Pro Say February 4, 2021 4:18 pm

    “how you want to appear to paint the Supreme Court as ‘wise'”

    To insure clarity, at a minimum when it comes to patent issues, they are on the whole far from wise.

    “the singular/plural is a legal construct, and you are stuck in a colloquial view.”

    I understand well the differences between the singular / plural legal construct and a colloquial view.

    However, in some cases — as here with patentable subject matter — they are one in the same.

    Please answer me this. In your view:

    1. Is there any limit to the number of abstract ideas which can be alleged a single claim contains?

    2. Can other claims in the same patent (or application); including dependents; contain other, different abstract ideas?

    Even though SCOTUS said to — if possible — identify one abstract idea to which all the claims at issue are directed to?

  8. Anon February 4, 2021 8:33 pm

    However, in some cases — as here with patentable subject matter — they are one in the same.l

    That would be a hard no.

    Much like I understand your “what” and “why” when
    It comes to matters of privacy, your wants simply have no foothold in the legal world.

    Trust me, I “get” your position. It is just not a legal position.

  9. Anon February 4, 2021 8:49 pm

    To your questions, a single claim is by law to a single invention. Inventions are simply not constrained though to a single idea. In fact you may want to explore the traditional prohibition against single means claims that most closely aligned with your thoughts.

    You should also easily recognize how most all claims have multiple people elements. It is axiomatic that each element may represent itself as an “idea” – which I have previously demarcated as sub-ideas in relation to a claims single invention being the overarching idea.

    Your colloquialism faces to make the legal translation from the plurality of ideas (sub-ideas) as claim elements that are distinct of themselves AND contribute to the single idea of the claimed invention.

    Your penchant (blind and unyielding) ignores the plain fact (and legal nature) of claim elements.

  10. Anon February 4, 2021 9:00 pm

    As to your question 2, it is well known that each claim of a patent may rest on its own accord. When you seek to o enforce your patent, young may select any claim (even down to but one claim) to do so. With that understanding, perhaps you would like to pause and perhaps rephrase your question.

  11. Anon February 4, 2021 9:03 pm

    Your last comment is nothing more than you yet again restating your error, and it falls of its own accord.

  12. Pro Say February 5, 2021 10:35 am

    O.K. Anon; I get it. You don’t want to answer my two simple, yes or no questions:

    1. Is there any limit to the number of abstract ideas which can be alleged a single claim contains?

    2. Can other claims in the same patent (or application); including dependents; contain other, different abstract ideas?

    Oh, well.

  13. Anon February 5, 2021 12:03 pm

    Not sure how you “get it,” with the assertion of my “not wanting” when I HAVE answered your questions.

    Do you not understand the legal basis of my replies?

  14. Pro Say February 5, 2021 6:41 pm

    Ugh Anon. Abstruseness rules.

    I’ll simplify — let’s try just one question, then:

    Is there any limit to the number of abstract ideas which can be alleged a single claim contains?

    Yes or no.

    Yes. Or. No.

  15. Anon February 6, 2021 8:20 am

    Ugh right back at you, Pro Say.

    I have already answered this one question (no matter how many periods you may want to use).

    Again, the answer is one that answers the legal question.

    You seem to not want that legal answer, and instead want to be stuck on a colloquial meaning.

    That colloquial meaning simply does not help you.

    It does not help you understand the law.

    It does not help you understand your lack of convincing anyone of the viability of your view.

    Quite in fact, it drives home the lack of understanding in your choice of moniker, and shows that you are unwilling to grasp the legal grounds upon which you may want to choose to do battle.

  16. Pro Say February 6, 2021 10:35 am

    Yes. Or. No.

  17. Anon February 6, 2021 12:58 pm

    Asked and answered.

    Hint: your desire for a colloquial answer is simply misplaced.

  18. Pro Say February 6, 2021 8:40 pm

    My friend @17: “your desire for a colloquial answer is simply misplaced”

    @6: “Sadly, the singular/plural is a legal construct, and you are stuck in a colloquial view.”

    Yet, on 2.4; your comment @9: ” . . . that in effect are more colloquially obvious, will also result in most cases to be legally obvious.”

    https://www.ipwatchdog.com/2021/01/28/cafc-partially-vacates-ptab-legal-error-reasonable-expectation-success-analysis/id=129484/

    Ergo; no more than one — and only one — alleged abstract idea per (all) the claims at issue.

    Both colloquially AND legally.

    Doh! 🙂

  19. Anon February 7, 2021 3:14 pm

    Your “ergo” misapplies my comment on another thread, and the different context there – which has absolutely nothing to do with our discussion here.

    I cannot help you if you are unwilling to recognize your limits of colloquial thinking and lack of understanding of the legal terms of art.

  20. Pro Say February 8, 2021 2:18 pm

    Sigh. Stop digging my friend.

    Stop.

    Digging.

  21. Anon February 8, 2021 8:01 pm

    There is no digging from me. Your last post simply does not carry the point that you appear to think that it did.

    No one questions your desire, and I am certain that your heart is in the right place, but you are simply mistaken to think that your lack of legal understanding can be made up by your passion.