“In the end, the Federal Circuit found that mandamus was not the last alternative as it was ‘confident the district court will reconsider its determination in light of the appropriate legal standard and precedent on its own.’”
On August 13, the U.S. Court of Appeals for the Federal Circuit issued a decision in In re: DISH Network L.L.C. in which the appellate court denied a petition for mandamus relief stemming from another appeal of a denial to transfer venue entered by U.S. District Judge Alan D. Albright of the Western District of Texas. Although the Federal Circuit avoided the entry of mandamus relief directing Judge Albright to grant Dish Network’s motion to transfer, the appellate court voiced its expectation that Judge Albright “will expeditiously reconsider this matter before resolving substantive issues” in the patent infringement suit filed by interactive TV and video-on-demand (VOD) provider Broadband iTV.
DISH Appeals Albright’s Analysis of Private, Public Interest Factors
The present appeal stems back to a complaint for patent infringement filed in December 2019 by Broadband iTV against DISH Network asserting claims of four patents covering on-demand content delivery systems. In April 2021, Judge Albright denied a motion filed by DISH Network to transfer the patent suit from Western Texas to the District of Colorado. In that ruling, Judge Albright assessed the private interest and public interest factor weighing upon the legal analysis of a motion to transfer venue under 28 U.S.C. § 1404(a). In particular, Judge Albright found that the private interest factor in expeditiously trying cases strongly weighed against transfer, in large part because the patents-in-suit have been asserted by Broadband iTV in a series of cases filed in Western Texas. Further, the public interest in administrative difficulties caused by court congestion also weighed heavily against transfer, Judge Albright found, because a Markman hearing has already been held in Western Texas and there is no evidence that the District of Colorado was as well equipped to handle remote proceedings during the COVID-19 pandemic as Western Texas.
On appeal to the Federal Circuit, DISH Network argued that Judge Albright had erred in his legal analysis by finding that judicial economy considerations strongly favored retaining the case in Western Texas. Additionally, DISH Network contended that, under the proper legal analysis, neither the willing witness factor, which measures the private interest in reducing costs required to provide witnesses willing to give testimony at trial, nor the local interest factor, which measures the public interest in deciding local issues within a home judicial district, should have been found to be neutral. In Judge Albright’s April 2020 order, he found that the Broadband iTV’s willing witnesses would have to travel more than 1,000 miles regardless of whether the suit was in Western Texas or Colorado. Further, Judge Albright found that DISH Network had a significant localized presence within Western Texas, employing more than 1,000 people and operating various facilities within the district, making the local interest factor neutral despite the fact that Colorado is DISH Network’s home state.
In a very short opinion, the Federal Circuit per curiam opinion, delivered by a panel consisting of Circuit Judges Kathleen M. O’Malley, Jimmie V. Reyna and Raymond T. Chen, noted that Judge Albright’s local interest factor analysis erred in light of the Federal Circuit’s 2020 decision in In re: Apple Inc. In that decision, based on another petition for mandamus relief directing transfer of a patent case out of Judge Albright’s court, the Federal Circuit clarified that the local interest factor “most notably regards not merely the parties’ significant connections to each forum writ large, but rather the ‘significant connections between a particular venue and the events that gave rise to the suit.’” Much like Judge Albright’s error in Apple, which relied too heavily on Apple’s general presence within Western Texas and state and local tax benefits it received, the Federal Circuit in DISH Network found that Judge Albright relied too heavily upon DISH Network’s general presence in terms of employees and facilities without tying that presence to the alleged infringements.
In the end, the Federal Circuit found that mandamus was not the last alternative as it was “confident the district court will reconsider its determination in light of the appropriate legal standard and precedent on its own,” in large part because of an intervening decision on the issue in In re: Samsung Electronics Co., Ltd., decided in late June. In that decision, involving yet another appeal of a denial to transfer motion entered by Judge Albright, the Federal Circuit held that Judge Albright erred in affording little weight to the convenience of witnesses in attending trial, generally assuming that party witnesses are not likely to testify and non-party witnesses are less likely to do so. In DISH Network, the Federal Circuit similarly found it improper that Judge Albright diminished witness convenience as a factor based on a general unlikelihood that all listed witnesses would testify. And like in Samsung, Judge Albright in DISH Network failed to take account of differences in the underlying technology at the various Western Texas lawsuits filed by Broadband iTV, as well as the availability of multi-district litigation procedures in assessing the practicality of transferring the suit.
Reyna Raises ‘Mandamus Light’ Concerns
Circuit Judge Reyna penned a concurrence in the Federal Circuit’s per curiam decision that expressed concerned with the court’s decision to hand out a kind of “Mandamus light” relief on DISH Network’s petition. Unlike other cases where the Federal Circuit had remanded for reconsideration, the issues presented in DISH Network were not issues of first impression for the court. “In other cases, we have identified a recent change in law or an applicable case apparently overlooked by the district court, denied the petition without prejudice to refiling, and invited the petitioner to seek the district court’s reconsideration in light of the case law we identified,” Judge Reyna wrote. However, “[t]his case does not involve a recent change in law” and Judge Reyna was skeptical that the interlocutory posture of the appeal allowed the Federal Circuit to order reconsideration under the In re: Avantel, S.A. (2003) standard cited by the per curiam majority.
In recent months, the Federal Circuit has issued a series of decisions in which the appellate court has taken umbrage with Judge Albright’s analysis on several issues, particularly where it involves motions to transfer venue. This June, Judge Albright entered a pair of new standing orders on limits to venue discovery and timely resolution of transfer motions in part owing to Federal Circuit remands on those issues. In a recent interview with IAM, Judge Albright noted that the oversight from the Federal Circuit is part of his learning process during his first few years as a U.S. district judge and noted that, while the standing orders were entered to address shortcomings in his court’s docketing procedures, Federal Circuit remands have recognized that Judge Albright’s decisions have been made in part to ensure procedural safeguards in patent cases on his docket.