NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE RÉMY COINTREAU USA, INC.

Petitioner.

______________________ 

Miscellaneous Docket No. 160

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

No. 13-CV-0168, Judge Rodney Gilstrap.

______________________ 

ON PETITION

______________________ 

Before DYK, MOORE, and TARANTO, Circuit Judges.

DYK, Circuit Judge. 

O R D E R

Before the court is Rémy Cointreau USA, Inc. (“Rémy”)’s petition for a writ of mandamus seeking to direct 

the United States District Court for the Eastern District 

of Texas (“Eastern District of Texas”) to transfer this case. 

We deny the petition.

BACKGROUND

Respondent Lamina Packaging Innovations LLC

(“Lamina”) owns U.S. Patent Nos. 6,207,242 (the “’242 

patent”) and 7,348,067 (the “’067 patent”), covering certain technology relating to laminated packaging. Rémy is 

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2 IN RE RÉMY COINTREAU USA, INC. 

an alcoholic beverage company that produces cognac, 

liqueurs, spirits, and champagnes that are imported and 

sold in the United States. 

In February 2013, Lamina filed a complaint in the International Trade Commission (“ITC”), alleging, inter 

alia, that the laminated packaging used by Rémy to 

import its alcoholic beverage products into the United 

States infringed the ’067 patent and ’242 patent in violation of 19 U.S.C. § 1337. Shortly thereafter, Lamina filed 

the underlying complaint against Rémy in the Eastern 

District of Texas, alleging infringement of the same two 

patents. 

Rémy asked the Eastern District of Texas to stay the 

case in light of the ITC action pursuant to 28 U.S.C. 

§ 1659(a). That provision specifies that where, as here, 

there are parallel proceedings before the ITC and district 

court, “at the request of a party to the civil action that is 

also a respondent in the proceedings before the [ITC], the 

district court shall stay, until the determination of the 

[ITC] becomes final, proceedings in the civil action with 

respect to any claim that involves the same issues involved in the proceedings before the [ITC].” 

As this court has explained, pursuant to § 1659(a), 

“the district court must await a final decision from the 

Commission before proceeding with its action.” Fuji 

Photo Film Co. v. Benun, 463 F.3d 1252, 1256 (Fed. Cir. 

2006). Accordingly, the Eastern District of Texas granted 

Rémy’s motion, and stayed proceedings “until the determination of the Commission becomes final.” § 1659(a). 

Thus, when Rémy subsequently requested that the Eastern District of Texas transfer the case to the United 

States District Court for the Southern District of New 

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IN RE RÉMY COINTREAU USA, INC. 

 

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York* before the ITC proceedings had become final, the 

court unsurprisingly took no action.

DISCUSSION

Rémy seeks immediate review in this court. In its

petition, Rémy asserts that § 1659(a) does not prohibit

courts during a stay from acting on purely procedural 

motions such as a motion to transfer venue. Rémy therefore asks this court to direct the district court to transfer 

the case or at least compel the district court to take up the 

transfer request while the stay remains in place. 

This court has authority to grant mandamus relief in

a patent infringement action, 28 U.S.C. § 1651, but in 

seeking such relief, a petitioner bears a heavy burden. It 

must show (1) that it has a clear legal right to relief; (2) 

that there are no adequate alternative legal channels 

through which petitioner may obtain that relief; and (3) 

that the grant of mandamus is appropriate under the 

circumstances. See Cheney v. U.S. Dist. Court, 542 U.S. 

367, 380-81 (2004); Kerr v. U.S. Dist. Court for N. Dist. of 

Cal., 426 U.S. 394, 403 (1976). 

Here, we are unable to say that this burden has been 

met. Even if Rémy’s interpretation of § 1659(a) is correct

such that the district court was not prohibited from acting 

on its transfer motion, it still does not follow that the

court is compelled to grant the relief requested. In arguing to the contrary, Rémy can only call this court’s attention to cases that stand for the proposition that district 

courts should decide a motion to transfer before addressing any substantive aspect of the case. See, e.g., In re 

* Rémy filed a declaratory judgment action against 

Lamina involving the same patents in the Southern 

District of New York. Notably, that action is also stayed 

pursuant to § 1659(a) pending final disposition of the ITC 

proceedings. 

 

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4 IN RE RÉMY COINTREAU USA, INC. 

Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003); 

McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30 (3d 

Cir. 1970). Such concern is not present here in light of 

the fact that all proceedings have been stayed. 

Rémy alternatively suggests that we should bypass 

the district court and direct it to transfer the case based 

on our assessment of the relevant factors. Section 

1404(a), however, assigns to the district court the primary 

responsibility for determining whether the convenience of 

the parties and witnesses, and the proper administration 

of justice, call for transfer. See In re Vistaprint Ltd., 628 

F.3d 1342, 1346 (Fed. Cir. 2010). When questions arise as 

to whether a case should be transferred, it is our practice 

to allow the trial court to act on the motion in the first 

instance, and for us to review that decision only under a 

highly deferential standard of review. Rémy, of course,

may seek mandamus if the stay is lifted and the district 

court denies the motion. 

Accordingly, 

 IT IS ORDERED THAT: 

The petition is denied. 

 

 FOR THE COURT

 /s/ Daniel E. O’Toole 

 Daniel E. O’Toole

 Clerk

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