Federal Circuit disposition — 13-160

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE RÉMY COINTREAU USA, INC.
Petitioner.
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Miscellaneous Docket No. 160
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On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 13-CV-0168, Judge Rodney Gilstrap.
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ON PETITION
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Before D YK, MOORE, and T ARANTO, Circuit Judges.
D YK, Circuit Judge.
O R D E R
Before the court is Rémy Cointreau USA, Inc. (“Ré-
my”)’s petition for a writ of mandamus seeking to direct
the United States District Court for the Eastern District
of Texas (“Eastern District of Texas”) to transfer this case.
We deny the petition.
BACKGROUND
Respondent Lamina Packaging Innovations LLC
(“Lamina”) owns U.S. Patent Nos. 6,207,242 (the “’242
patent”) and 7,348,067 (the “’067 patent”), covering cer-
tain technology relating to laminated packaging. Rémy is
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IN RE RÉMY COINTREAU USA, INC. 2
an alcoholic beverage company that produces cognac,
liqueurs, spirits, and champagnes that are imported and
sold in the United States.
In February 2013, Lamina filed a complaint in the In-
ternational Trade Commission (“ITC”), alleging, inter
alia, that the laminated packaging used by Rémy to
import its alcoholic beverage products into the United
States infringed the ’067 patent and ’242 patent in viola-
tion of 19 U.S.C. § 1337. Shortly thereafter, Lamina filed
the underlying complaint against Rémy in the Eastern
District of Texas, alleging infringement of the same two
patents.
Rémy asked the Eastern District of Texas to stay the
case in light of the ITC action pursuant to 28 U.S.C.
§ 1659(a). That provision specifies that where, as here,
there are parallel proceedings before the ITC and district
court, “at the request of a party to the civil action that is
also a respondent in the proceedings before the [ITC], the
district court shall stay, until the determination of the
[ITC] becomes final, proceedings in the civil action with
respect to any claim that involves the same issues in-
volved in the proceedings before the [ITC].”
As this court has explained, pursuant to § 1659(a),
“the district court must await a final decision from the
Commission before proceeding with its action.” Fuji
Photo Film Co. v. Benun, 463 F.3d 1252, 1256 (Fed. Cir.
2006). Accordingly, the Eastern District of Texas granted
Rémy’s motion, and stayed proceedings “until the deter-
mination of the Commission becomes final.” § 1659(a).
Thus, when Rémy subsequently requested that the East-
ern District of Texas transfer the case to the United
States District Court for the Southern District of New
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IN RE RÉMY COINTREAU USA, INC. 3
York* before the ITC proceedings had become final, the
court unsurprisingly took no action.
D ISCUSSION
Rémy seeks immediate review in this court. In its
petition, Rémy asserts that § 1659(a) does not prohibit
courts during a stay from acting on purely procedural
motions such as a motion to transfer venue. Rémy there-
fore asks this court to direct the district court to transfer
the case or at least compel the district court to take up the
transfer request while the stay remains in place.
This court has authority to grant mandamus relief in
a patent infringement action, 28 U.S.C. § 1651, but in
seeking such relief, a petitioner bears a heavy burden. It
must show (1) that it has a clear legal right to relief; (2)
that there are no adequate alternative legal channels
through which petitioner may obtain that relief; and (3)
that the grant of mandamus is appropriate under the
circumstances. See Cheney v. U.S. Dist. Court, 542 U.S.
367, 380-81 (2004); Kerr v. U.S. Dist. Court for N. Dist. of
Cal., 426 U.S. 394, 403 (1976).
Here, we are unable to say that this burden has been
met. Even if Rémy’s interpretation of § 1659(a) is correct
such that the district court was not prohibited from acting
on its transfer motion, it still does not follow that the
court is compelled to grant the relief requested. In argu-
ing to the contrary, Rémy can only call this court’s atten-
tion to cases that stand for the proposition that district
courts should decide a motion to transfer before address-
ing any substantive aspect of the case. See, e.g., In re
* Rémy filed a declaratory judgment action against
Lamina involving the same patents in the Southern
District of New York. Notably, that action is also stayed
pursuant to § 1659(a) pending final disposition of the ITC
proceedings.
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IN RE RÉMY COINTREAU USA, INC. 4
Horseshoe Entm’t, 337 F.3d 429, 433 (5th Cir. 2003);
McDonnell Douglas Corp. v. Polin, 429 F.2d 30, 30 (3d
Cir. 1970). Such concern is not present here in light of
the fact that all proceedings have been stayed.
Rémy alternatively suggests that we should bypass
the district court and direct it to transfer the case based
on our assessment of the relevant factors. Section
1404(a), however, assigns to the district court the primary
responsibility for determining whether the convenience of
the parties and witnesses, and the proper administration
of justice, call for transfer. See In re Vistaprint Ltd., 628
F.3d 1342, 1346 (Fed. Cir. 2010). When questions arise as
to whether a case should be transferred, it is our practice
to allow the trial court to act on the motion in the first
instance, and for us to review that decision only under a
highly deferential standard of review. Rémy, of course,
may seek mandamus if the stay is lifted and the district
court denies the motion.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
F OR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk
s19
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