By Ryan Davis

Law360 (January 4, 2021, 8:15 PM EST) -- Intel asked the Federal Circuit on Monday to again block Western District of Texas Judge Alan Albright from moving a patent trial to a different court amid the pandemic, saying that after the appeals court faulted him for moving it last month, he moved it again with flawed new reasoning.

In a petition for a writ of mandamus, Intel said Judge Albright abused his discretion with a Dec. 31 decision that moved the case, in which Intel says VLSI Technology LLC is seeking billions of dollars in damages, from the district's Austin courthouse, which closed because of COVID-19, to the Waco division, which is open.

The judge's ruling, which also moved the trial date from Jan. 11 to Feb. 16, came eight days after the Federal Circuit vacated an earlier order in which he moved only the trial to Waco, ruling that he lacked the authority to do that, rather than moving the whole case. Intel said the new ruling is based on faulty reasoning and was made "for the sole purpose of rushing to trial" during the pandemic.

"This court should correct the district court's errors once again and reverse (rather than vacate) the latest retransfer order," Intel said. "The district court can then conduct a trial in the proper forum when the Austin courthouse reopens — which, with vaccines now being distributed, should only be a few months away."

While the Federal Circuit said last month that Judge Albright could not move just the trial to Waco, it said it took no position on whether the entire case could be moved there. It said only that doing so required a showing that Waco is the more convenient forum, an analysis it said Judge Albright did not perform.

VLSI filed an emergency motion on the day of the Federal Circuit's ruling seeking to transfer the whole case to Waco, which Judge Albright granted on New Year's Eve. He wrote that Waco is now the more convenient forum because "scheduling a trial in the Austin courthouse presents a practical problem: it is closed for the foreseeable future."

"Thus, the pandemic has frustrated transfer by changing what was clearly more convenient pre-pandemic to what is not clearly more convenient mid-pandemic," so it is appropriate to transfer the case to Waco, he concluded.

He also noted that he is "extremely busy" with at least one trial a month scheduled from now through 2022, so not holding the Intel trial next month will mean many months might pass before it could be held.

Intel said in its mandamus petition that Judge Albright's latest ruling contains critical errors that require the Federal Circuit to step in again, including "improperly elevating time-to-trial considerations." It asked the court to stay the transfer order until it rules on the mandamus petition.

VLSI, which is owned by investment funds with assets managed by Fortress Investment Group LLC, originally filed the suit over computer chip patents in Waco. But in 2019, Judge Albright moved it to Austin at Intel's request, finding that to be the more convenient forum because witnesses and documents were located there, among other factors.

None of those factors has changed as a result of the pandemic, Intel told the Federal Circuit, so the case should not be moved.

"The district court failed to explain — and cannot explain — how the Austin courthouse's temporary closure has frustrated the 'reasons of convenience that caused the earlier transfer to … Austin,' as required by this court's first mandamus order," Intel said.

Moreover, it said, the judge improperly shifted the burden to Intel to show that Austin, where the case was pending, is more convenient, rather than requiring VLSI, which sought transfer, to show that Waco is more convenient.

"Again, the district court has clearly abused its discretion, as it has ignored this court's instructions regarding the proper legal standards and misapplied [the law] in an attempt to justify its holding," Intel said.

It also said that the judge "completely disregarded evidence regarding the state of the COVID-19 pandemic, which is currently worse in Waco than Austin," meaning that holding the trial "would subject both trial participants and the Waco community to serious health risks."

Intel had asked Judge Albright to delay the trial for several months because of the dangers of the pandemic, but he refused last month, saying that because his wife is an intensive care unit nurse in Waco, he has better "first-hand information about what's going on inside the hospitals" than the parties do.

Counsel for Intel declined to comment on the case. Counsel for VLSI could not immediately be reached for comment Monday.

The patents-in-suit are U.S. Patent Nos. 7,725,759, 7,523,373 and 8,156,357.

VLSI is represented by Morgan Chu, Benjamin Hattenbach, Iian D. Jablon, Alan J. Heinrich, Ian Washburn, Amy Proctor, Dominik Slusarczyk, Elizabeth Tuan, Charlotte Wen, Brian Weissenberg, Benjamin Monnin, Jordan Nafekh, Michael Strub Jr. and Babak Redjaian of Irell & Manella LLP, J. Mark Mann, G. Blake Thompson and Andy Tindel of Mann Tindel Thompson, and Craig Cherry of Haley & Olson PC.

Intel is represented by William Lee, Louis Tompros, Kate Saxton, Gregory Lantier, Amanda Major, Gregory Lantier, Richard Crudo, Steven Horn, Joseph Mueller and Lauren Fletcher of WilmerHale, J. Stephen Ravel of Kelly Hart & Hallman LLP; and James Wren of Baylor Law School.

The district court case is VLSI Technology LLC v. Intel Corp., case number 1:19-cv-00977, in the U.S. District Court for the Western District of Texas. Intel's new mandamus petition is In re: Intel Corp., case number 21-111, in the U.S. Court of Appeals for the Federal Circuit.

--Editing by Michael Watanabe.

Correction: An earlier version of this story incorrectly described the relationship between VLSI and Fortress. The error has been fixed.

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