By Ryan Davis

Law360 (January 13, 2021, 7:17 PM EST) -- VLSI Technology LLC urged the Federal Circuit Tuesday to reject Intel's challenge to Western District of Texas Judge Alan Albright's decision to transfer a patent trial set for next month out of a courthouse that is closed due to the pandemic, calling the move "eminently sensible."

VLSI, which Intel says is seeking billions of dollars in damages over computer chip patents, told the appeals court that Judge Albright was correct to transfer the case, scheduled for Feb. 16, from the district's Austin courthouse, which is closed indefinitely due to COVID-19, to Waco, which remains open.

The suit was originally filed in Waco by VLSI, which is owned by investment funds with assets managed by Fortress Investment Group LLC, but the judge transferred it to Austin at Intel's request in 2019, finding it more convenient. That will no longer be the case because the courthouse there has been closed since April because of the pandemic, VLSI said, adding that Waco is "a mere 102 miles away."

"It has since become clear that for the indefinite future, trial proceedings cannot be conducted in the Austin courthouse," it said. "Judge Albright therefore took the eminently sensible step of reconsidering his earlier ruling in view of intervening facts that were not only unforeseen, but were unforeseeable, and which frustrated the purpose of his original order transferring the case to Austin."

Judge Albright last year moved only the trial — not the whole case — from Austin to Waco, but the Federal Circuit granted a mandamus petition by Intel on Dec. 23 and ruled that he did not have the authority to do that.

However, the appeals court said he could move the entire case to Waco, but he had to show how Waco would be more convenient. VLSI then asked the Judge Albright to do that, which he did on New Year's Eve, noting among other things that the Austin courthouse is closed and that he is "extremely busy," so rescheduling the Intel trial would require rescheduling others.

That led Intel to file a second mandamus petition last week, arguing that none of the factors that made Austin more convenient, like the location of witnesses and evidence, have changed because of the pandemic.

"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," it said.

Intel said the Waco courthouse is open only because Judge Albright, the only district judge there, has unilaterally kept it open even though many other courthouses in Texas are closed in light of surging COVID-19 cases.

The judge moved the trial to Waco "for the sole purpose of rushing to trial" during the pandemic, which will "subject both trial participants and the Waco community to serious health risks," Intel said.

VLSI scoffed at that reasoning Tuesday, saying that when the case was moved to Austin, Intel argued there was no reason to think the case would proceed more quickly in Waco.

"Obviously, due to the pandemic, Intel's arguments regarding Austin being a faster-to-trial venue than Waco proved to be wrong — very wrong," VLSI said.

The judge simply rethought his original decision to transfer the case to Austin and correctly found it was no longer convenient because it is closed due to the pandemic, the company said. It also noted that even amid the pandemic, Judge Albright has held "multiple safe trials" since September.

VLSI said Judge Albright therefore made the right call to send the case to Waco, "a division whose courthouse is a mere 102 miles away, where Judge Albright routinely sits, that is open for trials and is now far more convenient and would allow a far more expeditious resolution than the Austin division whose courthouse has already been closed for nearly ten months and is presently closed indefinitely."

VLSI also objected to Intel's motion to stay the transfer order until the appeal is resolved, saying there's no reason to do that as long as the Federal Circuit issues a decision by Feb. 8, the day Intel said its attorneys will have to travel to Waco for trial.

Counsel for the parties could not immediately be reached for comment Wednesday.

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 Manzin-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. The appellate case is In re: Intel Corp., case number 21-111, in the U.S. Court of Appeals for the Federal Circuit.

--Editing by Adam LoBelia.

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

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