N OTE : This order is nonprecedential

. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________

In re : TRACFONE WIRELESS, INC., Petitioner

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2021

- 118

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On Petition for Writ of Mandamus to the United States District Court for the Western District of Texas in No. 6:20

-

cv

- 00303

- ADA, Judge Alan D. Albright.

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ON PETITION

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Before R EYNA
, C HEN
, and H UGHES
, Circuit Judges

. P ER C URIAM

. O R D E R

TracFone Wireless, Inc. petition s for a writ of mandamus directing the United States District Court for the Western District of Texas to transfer this case to the United States District Court for the Southern District of Florida, or in the alternative, to direct the district court to stay proceedings until such time the district court rules on TracFone’s motion to transfer

. Precis Group LLC responds and takes “ no position regarding the relief requested

. ”

We a pply the law of the United States Court of Appeals for the Fifth Circuit in cases arising from district courts i n Case: 21-118 Document: 5 Page: 1 Filed: 03/08/2021IN RE : TRACFONE WIRELESS
, INC

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that circuit . We therefore review a district court’s decision on a motion to transfer on a clear abuse of discretion standard. In this regard, we have granted mandamus to stay proceedings and order prompt action on a long

- pending motion to transfer whe re the district court has refus ed to take action

. See, e.g., In re SK hynix Inc. , 835 F. App’x 600 (Fed. Cir. 2021); In re Google

, No. 2015

- 138, 2015 WL 5294800 (Fed. Cir. Jul. 16, 2015 ); cf

. In re TS Tech USA Corp. , 551 F.3d 1315, 1319 (Fed. Cir. 2008).

Precis filed this patent infringement suit against TracFone o n April 21, 2020 . On June 22, 2020 , TracFone moved to dismiss the case based on improper venue or alternatively to transfer the case to the United States District Court for the So uthern District of Florida pursuant to both 28 U.S.C. § 1404(a) and 28 U.S.C. § 1406 . The motion was fully briefed by July 14, 2020

. Shortly thereafter, the district court issued a scheduling order for discovery, a Markman hearing, and the start of trial.

On October 1, 2020, TracFone moved the district court to stay all proceedings pending resolution of its venue motion. Not having h eard from the court on either th e motion to dismiss or the motion to transfer by December 21, 2020, TracFone moved for a decision on its motion to transfer before the Markman hearing scheduled for December 2 9

, 2020. The di strict court also did not rule on that request. Instead , the district court conducted the Markman hearing as scheduled and issued a claim construction order the following day

. Having still received no ruling from the district court on any of its requests, TracFone filed this petition fo r writ of mandamus on March 2, 2020.

We addressed strikingly similar circumstances from the same district court last month in SK h ynix

. There, as here, the petitioners sought mandamus relief from this court after waiting nearly eight months for a ruling on a motion to transfer that was fully briefed. We agree d with the petitioner that “the district court’s handling of the Case: 21-118 Document: 5 Page: 2 Filed: 03/08/2021IN RE : TRACFONE WIRELESS
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transfer motion up until this point in the case has amounted to egregious delay and blatant disregard for precedent.” 835 F. App’x at 600

– 01. W e did not compel further action because the district court scheduled a hearing while the petition was pending before this court, but we directed the district court to stay pr oceedings, including the upcoming Markman hearing, until the district court ruled on the motion. We explained that mandamus was appropriate because “precedent compels entitlement to such relief and the district court’s continued refusal to give priority to d eciding the transfer issues demonstrates that SK hynix has no alternative means by which to obtain it.” Id . at. 601.

In Google

, we ex plained that lengthy delays in resolving transfer motions can frustrate the intent of § 1404(a) by forcing defendants “to expend resources litigating substantive matters in an inconvenient venue while a motion to transfer lingers unnecessarily on the docket.” 2015 WL 5294800 at *1. We concluded that a trial court’s failure to act on a fully briefed transfer motion that had been pending for approximately eight months while pressing forward with discovery and claim construction issues amounted to an arbitrary refusal to consider the merits of the transfer motion. Id . at *1

– 2. We therefore directed the district court to p romptly rule and to stay all proceedings pending completion of the motion. Id. at *2.

Our decision s in Google and SK h ynix rest on a principle well

- established in Fifth Circuit law: T hat districtcourts must give promptly filed transfer motions “top priority” before resolving the substantive issues in the case. In re Horseshoe Entm ’ t , 337 F.3d 429, 433 (5th Cir. 2003) (“[I]n our view disposition of that [transfer] motion should have take n a top priority in the handling of this case by the

. . . District Court.”) ; see also In re Apple, Inc. , 979 F.3d 1332, 1337 (Fed. Cir. 2020 (explaining that “once a partyfiles a transfer motion, disposing of that motion should unquestionably take top pr iority.”); In re Nintendo Co., Ltd.

, Case: 21-118 Document: 5 Page: 3 Filed: 03/08/2021IN RE : TRACFONE WIRELESS
, INC

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544 F. App’x 934, 941 (Fed. Cir. 2013) (“[A] trial court must first address whether it is a proper and convenient venue before addressing any substantive portion of the case

. ”).

We agree with TracFone that the circumst ances here are comparable to those in Google

. As in Google , the facts here establish that the district court h as clearly abused its discretion. And, u nlike in SK hynix , the court to date has taken no action to suggest it is proceeding towards quick resolution of the motion.

We order the district court to stay all proceedings until such time that it issue s a ruling on the motion to transfer that provides a basis for its decision that is capable of meaningful appellate review. See SK hynix , 835 F. App’x at 601. We do not here address TracFone ’s motions

, leaving those de cisions to be made by the district court in the first instance. But w e remind the lower court that any familiarity that it has gained with the underlying litigationdue to the progress of the case since the filing of the complaint is irrelevant when considering the transfer motion and should not color its decision. See Goo gle , 2015 WL
5294800 at *2.

Accordingly

, I T I S O RDERED T HAT : The Petition for Writ of Mandamus is granted and the district court is ordered to issue its ruling on the motion to transfer within 30 days from the issuance of this order, and to provide a reasoned basis for its ruling that is capable of meaningful appellate review. See SK hynix , 835 F. App’x at 601. We also order that all proceedings in the case are stayed until further notice. We do not address the merits of TracFone’s motions, leaving those decisions to be made by the district court in the first instance. But we remind the lower court that any familiarity that it has gained with the underlying litigation due t o the progress of the case since the filing of the complaint is irrelevant when Case: 21-118 Document: 5 Page: 4 Filed: 03/08/2021IN RE : TRACFONE WIRELESS
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considering the transfer motion and should not color its decision. See Google , 2015 WL 5294800 at *2.

March 08 , 2021 Date F OR THE C OURT

/s/ Peter R. Marksteiner Peter R. Marksteiner Clerk of Court

s24 Case: 21-118 Document: 5 Page: 5 Filed: 03/08/2021