Case: 21-105 Document: 14 Page: 1 Filed: 12/23/2020
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: INTEL CORPORATION,
Petitioner
______________________
2021-105
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 1:19-
cv-00977-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before PROST, Chief Judge, LOURIE and CHEN, Circuit
Judges.
PER CURIAM.
ORDER
VLSI Technology LLC filed the underlying patent in-
fringement suit against Intel Corporation in the United
States District Court for the Western District of Texas,
Waco Division. In October 2019, the assigned district court
judge granted Intel’s motion to transfer venue of the action
pursuant to
28 U.S.C. § 1404(a) to the Austin Division of
the Western District of Texas, where the same judge con-
tinued to preside over the case. However, on November 20,
2020, the district court ordered, over Intel’s objection, that
Case: 21-105 Document: 14 Page: 2 Filed: 12/23/2020
2 IN RE: INTEL CORPORATION
if the Austin courthouse does not lift its COVID-19 in-per-
son trial restrictions with enough time to hold a January
2021 trial, then trial would be held in Waco. Intel now pe-
titions this court for a writ of mandamus directing the dis-
trict court to vacate that order and to stay that order
pending consideration of the petition.
The district court relied exclusively on two bases to re-
transfer the trial back to Waco: first, authority under Fed-
eral Rule of Civil Procedure 77(b), and second, inherent au-
thority for docket management. Neither authority
authorizes the order at issue, and so we grant Intel’s man-
damus petition for the reasons discussed below.
***
There is no real dispute here that mandamus is an ap-
propriate means of reviewing the district court’s order. In-
deed, it is difficult to see how Intel could obtain meaningful
review of the decision otherwise. Whether seeking our
mandamus review of an erroneous order transferring the
entire action or merely just moving trial proceedings, Intel
would not have an adequate remedy by way of a post-judg-
ment appeal because Intel would not be able to prove that
it would have won the case had the case been tried in the
Austin Division. 1 See In re Volkswagen of Am., Inc.,
545
F.3d 304, 311 (5th Cir. 2008) (en banc); In re Nat’l Presto
Indus., Inc.,
347 F.3d 662, 663 (7th Cir. 2003); Fed. R. Civ.
P. 61 (harmless error rule).
On the merits, we agree with Intel that moving the
trial from the Austin to Waco Division over Intel’s objection
would be fundamentally inconsistent with the governing
1 On December 10, 2020, the order implementing
COVID-19 restrictions was extended through January 31,
2021 unless otherwise vacated or modified, and thus ab-
sent relief here, Intel is correct that trial would be held in
the Waco division.
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IN RE: INTEL CORPORATION 3
statutes. Congress has expressly provided that “[c]ourt for
the Austin Division shall be held in Austin.”
28 U.S.C.
§ 124(d)(1). That does not mean that the trial must be held
in any particular courthouse in Austin, as under
28 U.S.C.
§ 1404(c) “a district court may order any civil action to be
tried at any place within the division in which it is pend-
ing.” But what it does mean, in the words of the Fifth Cir-
cuit, is that Intel generally has a “statutory right” to have
this case tried in the division in which the action lies. In re
Gibson, 423 F. App’x 385, 390 (5th Cir. 2011). 2
In support of moving trial proceedings to the separate
division of Waco, VLSI calls to this court’s attention cases
relying on
28 U.S.C. § 1404(b). That provision states that
“[u]pon motion, consent or stipulation of all parties, any ac-
tion, suit or proceeding of a civil nature or any motion or
hearing thereof, may be transferred, in the discretion of the
court, from the division in which pending to any other divi-
sion in the same district.” It is true that such authority
would authorize moving just the trial proceedings from one
division to another. But the problem with relying on such
authority to transfer the trial to the Waco Division here is
that section 1404(b), “by its terms, applies only when all of
the parties consent,” Gibson, 423 F. App’x at 389;
15 Wright & Miller, Federal Practice & Procedure § 3842
(4th ed., Oct. 2020 update) (“Section 1404(b) applies only
when all parties agree to the transfer.”), and Intel did not
consent to moving the trial to Waco.
2 Because this petition does not involve substantive
issues of patent law, this court applies the laws of the re-
gional circuit in which the district court sits, in this case
the Fifth Circuit. See Storage Tech. Corp. v. Cisco Sys.,
Inc.,
329 F.3d 823, 836 (Fed. Cir. 2003).
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4 IN RE: INTEL CORPORATION
VLSI also contends that moving trial is authorized un-
der
28 U.S.C. § 1404(a). 3 But we see at least two problems
with this argument. First, the district court did not rely on
§ 1404(a) as authority for its ruling or find that re-transfer
would be for the convenience of the parties or witnesses
and in the interest of justice. And second, the district court
did not purport to transfer the entire action from the Aus-
tin Division to the Waco Division. Instead, the court
merely ordered “that if the Austin courthouse does not re-
open with enough time to hold a January trial, the trial for
the -00254 case will be held in Waco.” VLSI Tech. LLC v.
Intel Corp., No. 1:19-cv-977, slip op. at 8 (W.D. Tex. Nov.
20, 2020), ECF No. 352. VLSI’s argument thus overlooks
the fact that § 1404(a) cannot authorize transfer of just the
trial from one judicial division to another. See Chrysler
Credit Corp. v. Country Chrysler, Inc.,
928 F.2d 1509, 1518
(10th Cir. 1991) (“A court acting under § 1404(a) may not
transfer part of a case for one purpose while maintaining
jurisdiction for another purpose; the section contemplates
a plenary transfer of the entire case.” (internal quotation
marks and citation omitted)); In re Flight Transp. Corp.
Sec. Litig.,
764 F.2d 515, 516 (8th Cir. 1985).
VLSI further argues that there is authority, over and
above § 1404, for moving the trial to Waco based on the dis-
trict court’s inherent authority to manage its docket. But
our plain reading of the above-noted statutes simply leaves
no room to invoke such authority here. See Dietz v.
Bouldin,
136 S. Ct. 1885, 1892 (2016) (explaining that the
“exercise of an inherent power cannot be contrary to any
express grant of or limitation on the district court’s power
3 Subsection 1404(a) provides that “[f]or the conven-
ience of parties and witnesses, in the interest of justice, a
district court may transfer any civil action to any other dis-
trict or division where it might have been brought or to any
district or division to which all parties have consented.”
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IN RE: INTEL CORPORATION 5
contained in a rule or statute”); see also Fed. R. Civ. P. 83
(explaining that district courts can “regulate [their] prac-
tice in any manner consistent with federal law”).
Finally, like the district court, VLSI cites Rule 77(b) of
the Federal Rules of Civil Procedure as authorizing trans-
fer. But that rule merely says that “[e]very trial on the
merits must be conducted in open court and, so far as con-
venient, in a regular courtroom” and that “no hearing—
other than one ex parte—may be conducted outside the dis-
trict unless all the affected parties consent.” First, even
assuming that Rule 77(b) empowers a district court to de-
cide where to initially assign a case within a district, it does
not follow that Rule 77(b) also allows a district court to
later sidestep the transfer rules set forth in § 1404 gener-
ally. Neither the court nor VLSI cites any appellate court
case, nor are we aware of one, that has held that Rule 77(b)
independently authorizes a court to move a trial from one
judicial division to another. 4 And we see no sound basis for
doing so, particularly given our reading of the above stat-
utes. Cf. Fed. R. Civ. P. 82 (“These rules do not extend or
limit . . . venue.”). Further, this reading of Rule 77(b)
would undermine
28 U.S.C. § 124 and make § 1404(c) su-
perfluous.
***
In these circumstances, the district court’s decision to
move trial outside of the division on the sole basis of Rule
77(b) and “inherent authority” amounts to a clear abuse of
discretion. In granting mandamus, we do not hold that the
district court lacks the ability to effectuate holding trial in
the Waco Division. We only hold that it must effectuate
4 The cases that are cited for Rule 77(b)’s supposed
authorization of inter-division trial transfer do not apply
Rule 77(b) in this way—that is, divorced from a full
§ 1404(a) analysis.
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6 IN RE: INTEL CORPORATION
such result under appropriate statutory authority, such as
moving the entire action to the Waco Division after con-
cluding, based on the traditional factors bearing on a
§ 1404(a) analysis, that “unanticipated post-transfer
events frustrated the original purpose for transfer” of the
case from Waco to Austin originally. In re Cragar Indus.,
Inc.,
706 F.2d 503, 505 (5th Cir. 1983). Such analysis
should take into account the reasons of convenience that
caused the earlier transfer to the Austin division. The dis-
trict court’s order failed to perform this analysis, and we
take no position on whether such finding can be made here.
Accordingly,
IT IS ORDERED THAT:
(1) The petition for a writ of mandamus is granted to
the extent that the district court’s November 20, 2020 order
is vacated.
(2) The motion to stay is denied as moot.
FOR THE COURT
December 23, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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