by Dennis Crouch
In re True Chemical Solutions, LLC (Fed. Cir. 2021)
This is another mandamus petition out of Judge Albright’s courtroom — this time denied. The patentee True Chem filed the declaratory-judgment lawsuit against PCC in the Midland division of W.D.Tex. back in 2018, before Judge Albright joined the bench. In 2019 the case was reassigned to Judge Albright who conducted some of the proceedings in his Waco courtroom. Texas is big — the Western District of Texas is larger than most state, and the drive from Midland to Waco is 300+ miles (both parties are from Midland/Odessa).
Judge Albright suggested to the parties that the trial may also be handled in Waco. Although True Chem wanted a Midland jury, PCC moved to transfer the case to the Waco Division, and Judge Albright granted the motion. A primary reason for the transfer was that Waco already had proven procedures for a socially-distanced trial. True Chem then petition for writ of mandamus to the Federal Circuit.
Most litigation regarding venue transfer is inter-district — from one district to another district. This case is about intra-district — from one division to another division within the same district. Both situations are captured by 28 U.S.C. 1404(a).
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.
Id. In its opinion denying mandamus, the Federal Circuit noted that the law generally gives district court “broad discretion” on this issue, and the discretion is “even greater” when the transfer is intra-district. Although the appellate court did not fully endorse Judge Albright’s decision and reasoning, it found no clear abuse of discretion.
We are not prepared to say that the district court clearly abused that discretion. The district court meaningfully analyzed the transfer factors. The court found that the more congested docket in plaintiff’s chosen forum would likely cause additional delay and prejudice to PCC, particularly given it was seeking injunctive relief. The district court further found that no non party witness resides within the Midland-Odessa Division and several non-party witnesses residing in other parts of Texas would find it significantly easier, safer, and cheaper to travel to Waco for trial. The district court added that it was unlikely that an actual physical trailer located in Midland would be an exhibit during the trial and did not foresee the opportunity for any field trips during a trial. Under these circumstances, we cannot say True Chem has established a clear and indisputable right to relief.
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The lawsuit focuses on Performance Chemical Company’s U.S. Patent No. 9,834,452 (“water treatment trailer”). The complaint by True Chem seeks a declaratory judgment of non-infringement and invalidity. The complaint walks through PCC’s use of this type of trailer going back to 2014 — three years before the application was filed. True Chem then counterclaimed alleging infringement of the ”452 patent as well as the child; U. S. Patent 10,011,501.
I’ll note here the patent prosecution timeline. PCC filed a provisional application in April 2017, followed by a non-provisional in July 27, 2017. The patent issued December 5, 2017. This is less than 4.5 months following Track One (prioritized examination).