NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: SK HYNIX INC., SK HYNIX AMERICA INC.,

Petitioners

______________________

2021-114

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Western District of Texas in No. 6:20-

cv-00194-ADA, Judge Alan D. Albright.

______________________

ON MOTION

______________________

O R D E R

Before DYK, BRYSON, and TARANTO, Circuit Judges.

TARANTO, Circuit Judge.

In March 2020, Netlist, Inc. sued SK hynix Inc. and SK 

hynix America Inc. (collectively, “SK hynix,” unless otherwise indicated) in the Western District of Texas, asserting 

infringement of U.S. Patent Nos. 9,858,218 and 10,474,595. 

In early May, SK hynix moved to transfer venue to the Central District of California, and the papers were complete by 

the end of May. In January 2021, with no ruling having 

been issued, SK hynix sought mandamus from this court to 

compel transfer. We ordered that district court 

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2 IN RE: SK HYNIX INC.

proceedings be stayed until the district court ruled on the 

transfer motion in a reviewable opinion. In re SK hynix 

Inc., No. 2021-113, 2021 WL 321071 (Fed. Cir. Feb. 1, 

2021). The next day, the district court denied the transfer

motion, issuing an opinion that explains why. Appx647–

63. SK hynix now petitions for mandamus again. We deny 

the petition, concluding that SK hynix has not shown that 

the district court clearly abused its discretion.

I

A

Netlist and SK hynix have opposed each other on a 

number of Netlist patents in several forums, including the 

International Trade Commission and the Patent Trial and 

Appeal Board (PTAB). At present, four district-court actions by Netlist against SK hynix are pending, each including claims for patent infringement and a counterclaim for 

breach of contract. Two are in the Central District of California; the present case and one other (consolidated with 

this one) are in the Western District of Texas.

Several years before filing the Texas actions, Netlist 

filed two actions against SK hynix in the Central District 

of California. In the first, filed on August 31, 2016, Netlist 

alleged that SK hynix infringed six patents, including U.S. 

Patent No. 8,489,837, by manufacturing, selling, or using 

certain memory modules. Appx196–215 (Case No. 8:16-cv01605) (California I). SK hynix counterclaimed, alleging 

that Netlist breached a contractual commitment to offer licenses to a portfolio of Netlist patents, on reasonable and 

nondiscriminatory (RAND) terms, to implementers of 

memory-module standards of the Joint Electronic Device 

Engineering Council (JEDEC). Appx229–49. Netlist filed 

a second suit against SK hynix in the same forum on June 

14, 2017, alleging that SK hynix infringed two other patents, including U.S. Patent No. 9,535,623, which issued 

from a continuation of the application that issued as the 

’837 patent. Appx298–310 (Case No. 8:17-cv-01030)

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IN RE: SK HYNIX INC. 3

(California II). SK hynix asserted the same JEDEC-based 

contract counterclaim. Appx344–51.

Both California actions were fully stayed in February

2018, by which time challenges to patentability in the 

PTAB were underway. In 2018 and 2019, in a number of 

decisions, the PTAB ruled unpatentable all the patent 

claims asserted in California I & II. See Pet. at 8; Appx80–

82; SAppx884–85. Besides the PTAB decision involving 

the ’623 patent, the unpatentability decisions were final 

and unreviewable before March 2020. Netlist appealed the 

decision involving the ’623 patent (raising only an Appointments Clause challenge in its short January 2020 brief) but 

dropped its appeal on June 25, 2020, after the present case 

was filed (and motion for transfer briefed). Although SK 

hynix suggests that Netlist “could attempt to amend its 

complaint or infringement contentions” in California I & II 

to assert previously unasserted claims of the patents at issue in those cases, Reply at 4, all the patent claims asserted 

in those actions are now due to be cancelled under 35 

U.S.C. § 318(b). California I & II remain pending but inactive.

In the present action, filed on March 17, 2020, Netlist

alleged that SK hynix, through its manufacture, use, and 

sale of the same memory modules as those at issue in the 

California actions, was infringing the ’218 and ’595 patents. Appx27–42 (Case No. 6:20-cv-00194). Those patents 

issued from continuations of the application that issued as 

the ’837, and thus are in the same family as the ’837 and 

’623 patents in the California actions, and Netlist alleged 

that they are essential to practice of JEDEC standards. 

Appx27. SK hynix asserted a JEDEC-based RAND contract counterclaim. Appx478–501.1

1 On June 15, 2020, Netlist filed another action against 

SK hynix in the same Texas forum, asserting infringement 

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B

On May 4, 2020, SK hynix moved to transfer the present case to the Central District of California. Notably, SK 

hynix moved to transfer the entire case. It neither sought 

severance of SK hynix Inc. (a foreign entity, to which the 

venue requirement of 28 U.S.C. § 1400(b) is inapplicable) 

nor sought transfer of the case against SK hynix Inc. even 

if there was no transfer of the case against SK hynix America, Inc. (a domestic entity subject to § 1400(b), with headquarters in the Northern District of California). On 

February 2, 2021, the day after our February 1 mandamus

order, the district court denied transfer. Appx647–63. The

court rejected the two arguments that SK hynix presses 

now: that the first-to-file rule and 28 U.S.C. § 1404(a) require transfer to the Central District of California.2

As to the first-to-file rule: The court initially concluded 

that the rule is inapplicable because SK hynix had no presence in the Central District of California sufficient for 

venue under 28 U.S.C. § 1400(b), so the present case could 

of U.S. Patent No. 10,217,523. Appx61–73 (Case No. 6:20-

cv-00525). That patent, though not in the same family as 

the ’218, ’595, ’837, and ’623 patents, is in the same family 

as three other patents that were asserted in California I 

(all of whose asserted claims were held unpatentable by the 

PTAB in now-final rulings). With SK hynix’s agreement, 

the two Texas actions were consolidated, Appx649, and the 

parties stipulated that a ruling on transfer in the present 

action “shall be binding upon and have the same effect” in 

the second Texas action, Appx565. 

2 28 U.S.C. § 1404(a) reads: “For the convenience of parties and witnesses, in the interest of justice, a district court 

may transfer any civil action to any other district 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: SK HYNIX INC. 5

not “have been brought” in that forum within the meaning 

of § 1404(a). Appx651 n.2. (This analysis focused on U.S.-

entity SK America Inc., because the motion sought transfer 

only of the entire case, not of the case against foreign-entity

SK hynix Inc. alone.) The court explained that SK hynix 

had cited no authority supporting use of the first-to-file 

rule to compel a transfer that would flunk § 1404(a)’s 

threshold requirement for the transferee forum—that the 

case “might have been brought” there or “all parties have 

consented” to adjudicating the case there. Appx651 n.2. 

In any event, the court concluded, considerations of 

“extent of overlap,” “likelihood of conflict,” and “comparative advantage and the interest of each forum in resolving 

the dispute” made transfer under the first-to-file rule unwarranted. Appx651–54. Regarding overlap, the court 

stated that “[t]ransfer under the first-to-file rule requires 

far more than patents from the same family, same parties, 

and same accused products,” and it discounted SK hynix’s 

reliance on its RAND counterclaims because “there are no 

viable RAND claims pending in the California cases concerning the ’837 or ’623 patent” given that “the PTAB has 

already invalidated both patents.” Appx652. For that forward-looking reason, and given that the district judge in 

California I & II stayed those cases before taking any significant merits actions, the court determined that there 

was little chance of conflict should transfer of the present 

case be denied. Appx652–53. The court also compared the 

two forums’ involvement in the case—including its own involvement after the filing of the motion to transfer—and 

found no comparative advantage or interest of the California forum. Appx653–54. On those bases, the court concluded: “all three factors weigh against transfer under the 

first-to-file rule.” Appx654.

As to transfer under § 1404(a): The court explained 

that SK hynix failed to establish “the threshold requirement,” namely, either that the present action “might have 

been brought” in the Central District of California (where 

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SK hynix America Inc. lacks the presence required by 

§ 1400(b)) or that “all parties have consented” to that venue 

for this action, § 1404(a). See Appx656. The court noted 

that SK hynix did not dispute the inapplicability of the 

“might have been brought” basis, but relied only on the alternative threshold basis, arguing that “all parties have 

consented” to venue in the Central District of California 

over the present case. Id. (internal quotation marks omitted). The district court rejected that contention. It noted

Netlist’s objection to the current transfer motion and observed that SK hynix had “cited no mandatory or persuasive authority to show that by filing suits in CDCA [the 

Central District of California] . . . , Netlist has automatically consented to venue in that district for any following 

suits involving different patents.” Id. 

In the alternative, the court analyzed the public- and 

private-interest factors relevant under § 1404(a). It concluded that SK hynix had not shown that the Central District of California is “‘clearly more convenient’” than the 

Western District of Texas. Appx657. Specifically, the court 

determined that four factors weighed against transfer and 

four factors were neutral. Appx661. For example, the 

court determined that SK hynix had no presence in the 

Central District of California, but it did have an office and 

a major customer in the Texas forum; that SK hynix had 

no documents in the California forum; that two former 

Netlist employees (an inventor and licensing officer), who 

are potential witnesses and who allegedly live in the California forum, were not shown to be unwilling to testify voluntarily; the costs of attending proceedings are not 

materially different between the forums; that, although 

Netlist is headquartered in the California forum, Netlist 

itself took that into account in choosing the Texas forum; 

and that the Texas forum is likely to be faster in adjudicating the matter. Appx657–60. The court also again cited its 

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IN RE: SK HYNIX INC. 7

own experience with the case since the filing and briefing 

of the motion to transfer. Appx660.3

SK hynix petitioned for mandamus. SK hynix also 

moved for a stay of the proceedings because the district 

court sua sponte moved the claim-construction hearing 

scheduled for March 18, 2021, to March 1, 2021, and advanced the trial date.

II

Under the All Writs Act, federal courts “may issue all 

writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of 

law.” 28 U.S.C. § 1651(a). “In general, three conditions 

must be satisfied for a writ to issue: (1) the petitioner must 

demonstrate a clear and indisputable right to issuance of 

the writ; (2) the petitioner must have no other adequate 

method of attaining the desired relief; and (3) the court 

must be satisfied that the writ is appropriate under the circumstances.” In re Apple Inc., 979 F.3d 1332, 1336 (Fed. 

Cir. 2020) (citing Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 

367, 380–81 (2004)). We ask whether the denial of transfer 

was such a “‘clear’ abuse of discretion” that refusing transfer would produce a “‘patently erroneous result.’” In re TS 

Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); see

also In re Apple, 979 F.3d at 1336; In re Nitro Fluids, 

L.L.C., 978 F.3d 1308, 1310–11 (Fed. Cir. 2020). Under 

Fifth Circuit law, where a decision applies transfer rules, 

we must deny mandamus unless it is clear “that the facts 

and circumstances are without any basis for a judgment of 

discretion.” In re Volkswagen of America, Inc., 545 F.3d 

304, 317 n.7 (5th Cir. 2008) (en banc), quoted in In re EMC 

3 The district court denied SK hynix’s alternative request to transfer the case from the Waco division to the 

Austin division of the Western District of Texas. Appx662. 

SK hynix does not challenge that ruling here.

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Corp., 501 F. App’x 973, 975 (Fed. Cir. 2013). We do not 

find the required clear abuse resulting in a patently erroneous result.

A

As to § 1404(a), we see no clear abuse regarding the 

district court’s determination that SK hynix did not meet 

the threshold requirement for transfer under the statute. 

SK hynix did not differentiate between the foreign and domestic SK hynix entities for purposes of its transfer motion. The district court properly focused on whether the 

present action “might have been brought” against the domestic entity and whether, in the alternative, “all parties 

have consented” to venue in the Central District of California. It concluded that neither alternative basis for a 

§ 1404(a) transfer is met. SK hynix has not established a 

clear legal right to relief from those conclusions, which suffice to deny transfer.

When the statute contained only the “might have been 

brought” alternative, the Supreme Court explained: “[W]e 

do not see how the conduct of a defendant after suit has 

been instituted can add to the forums where it might have 

been brought. In the normal meaning of words this language of Section 1404(a) directs the attention of the judge 

who is considering a transfer to the situation which existed 

when suit was instituted.” Hoffman v. Blaski, 363 U.S. 

335, 343–44 (1960) (cleaned up). The Supreme Court also 

cautioned against an interpretation of § 1404(a) that permitted transfer based on the “wish or waiver of the defendant.” Id. The current language of § 1404(a) reinforces the 

understanding that the “might have been brought” alternative is not met by the defendant asserting that it would 

consent to venue in the proposed transferee forum. After 

Hoffman was decided, Congress amended § 1404(a) to add 

that a district court may transfer venue “to any district or 

division to which all parties have consented.” (emphasis 

added). SK hynix has not shown a clear right to have the 

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“might have been brought” standard applied other than by 

applying the governing venue statutes for reaching a defendant without consent. 

Here, SK hynix has not shown error in the district 

court’s conclusion that 28 U.S.C. § 1400(b) governs venue 

over SK hynix America Inc. in this case and does not support venue. Under § 1400(b), venue is proper “in the judicial district where the defendant resides, or where the 

defendant has committed acts of infringement and has a 

regular and established place of business.” SK hynix 

America Inc. is a California corporation with its principal 

place of business in the Northern District of California, 

Appx95–96, and it resides there, not in the Central District 

of California, see In re BigCommerce, Inc., 890 F.3d 978, 

986 (Fed. Cir. 2018) (“[W]e hold that for purposes of determining venue under § 1400(b) in a state having multiple 

judicial districts, a corporate defendant shall be considered 

to ‘reside’ only in the single judicial district within that 

state where it maintains a principal place of business, or, 

failing that, the judicial district in which its registered office is located.”). And SK hynix has not pressed any argument that SK hynix America Inc. has “a regular and 

established place of business” in the Central District of California. For that reason, SK hynix has not shown clear 

abuse in the district court’s conclusion that this is not an 

action that “might have been brought” against SK hynix in 

that district.4

4 Nor has SK hynix established that § 1404(a), which is 

written in terms where the “action” sought to be transferred might have been brought, is clearly satisfied if the 

same claims might have been presented by amending a 

complaint in an earlier action, especially if there was no 

right to amend. Cf. Phillips Petroleum Co. v. Fed. Energy 

Admin., 435 F. Supp. 1234, 1238 (D. Del. 1977) (“Th[e] dependence on other parties and a Court’s discretion is 

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We also see no basis for disturbing, on this mandamus 

petition, the district court’s conclusion that SK hynix also 

failed to establish applicability of the alternative threshold 

basis for a § 1404(a) transfer—namely, that all parties 

have consented to venue over this action in the Central District of California. Netlist has objected, not consented, to 

such venue over this “action,” § 1404(a). And SK hynix has 

identified no legal authority establishing a clear legal right 

to an inference of consent as to this action from Netlist’s 

conduct regarding other actions, including its filing of California I & II in the Central District of California. 

In these circumstances, the district court did not 

clearly abuse its discretion causing a patently erroneous 

result when it determined that SK hynix did not meet the 

threshold conditions for transfer under § 1404(a). We need 

not separately review whether the district court clearly 

abused its discretion, causing a patently erroneous result, 

in applying the multi-factor analysis under that provision.

B

As to the first-to-file rule, we conclude that the standard for mandamus relief is not met for the same reason. 

Specifically, SK hynix has not shown a clear legal right to 

a transfer under the first-to-file rule to a federal forum that 

could not be a transferee forum under the threshold requirements of § 1404(a).

The Supreme Court has long recognized that § 1404(a)

modified common-law principles involving transfer between federal forums. See Norwood v. Kirkpatrick, 349 

U.S. 29, 32 (1955) (“When Congress adopted § 1404(a), it 

intended to do more than just codify the existing law on 

inconsistent with Hoffman v. Blaski, supra, and its progeny which teach that a party must have a right to be in the 

transferee forum before transfer to that forum can be ordered.”).

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forum non conveniens. . . . Congress, in writing § 1404(a), 

which was an entirely new section, was revising as well as 

codifying.”); cf. Van Dusen v. Barrack, 376 U.S. 612, 616 

(1964) (noting that the “transfer power is . . . expressly limited by the final clause of § 1404(a) restricting transfer to 

those federal districts in which the action ‘might have been 

brought’”). The first-to-file doctrine certainly has not been 

displaced, where § 1404(a)’s threshold conditions are met, 

as a tool affecting the customary multi-factor analysis of 

convenience and interests of justice. See In re Nitro Fluids, 

978 F.3d at 1311. But it is a different question whether 

there is a legal right under the first-to-file rule to compel a 

transfer between federal forums when § 1404(a)’s threshold conditions are not met.

SK hynix has not shown that there is a clear right to 

use the first-to-file rule in that way. The Ninth Circuit has, 

in fact, answered that question against SK hynix’s position. 

It has concluded: “A contrary understanding of the interaction between the first-to-file rule and § 1404(a) would allow 

a judge-made doctrine to contravene a congressionally enacted statute—a result that the Supreme Court has made 

clear we cannot countenance.” In re Bozic, 888 F.3d 1048, 

1054 (9th Cir. 2018). SK hynix has identified no contrary 

authority.

SK hynix cites Cadle Co. v. Whataburger of Alice, Inc., 

174 F.3d 599 (5th Cir. 1999), but that decision is not to the 

contrary. In that case, involving review of a dismissal under the first-to-file rule, the Fifth Circuit concluded that 

the court with the second-filed case, in considering application of the first-to-file rule, need not decide whether the 

court with the first-filed case had jurisdiction over the firstfiled case—a question, the Fifth Circuit ruled, that is 

properly left to the court with the first-filed case in front of 

it. Id. at 605. In contrast, the present matter involves the 

court with the second-filed case deciding whether the second-filed case (the one in front of it) could have been 

brought in the court with the first-filed case. Cadle does 

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not address that question, which is a question that 

§ 1404(a) affirmatively directs the court with the secondfiled case to consider.

We conclude that SK hynix has not shown a clear legal 

entitlement to a different conclusion from the one the district court reached as to what is one sufficient basis on 

which the district court rejected transfer under the first-tofile rule. We need not separately address the district 

court’s analysis of the non-threshold factors for application 

of the rule. This conclusion hardly leaves the two district 

courts at issue, in Texas and California, without means, including stays, to try to fulfill the first-to-file rule’s objective 

of avoiding “inconsistent judgments or waste of party and 

judicial resources.” In re: VoIP-Pal.com, Inc., No. 2021-112, 

2021 WL 650626, at *2 (Fed. Cir. Feb. 19, 2021).

IT IS ORDERED THAT:

(1) The petition is denied

(2) The motion to stay is denied.

February 25, 2021

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

s29

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