Case: 13-152    Document: 28     Page: 1   Filed: 11/21/2013




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

                   IN RE ICM, INC.,
                       Petitioner.
                 ______________________

                        2013-152
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the Southern District of Indiana
in No. 10-ML-2181, Judge Larry J. McKinney.
                 ______________________

                     ON PETITION
                 ______________________

    Before REYNA, NEWMAN, and PROST, Circuit Judges.
REYNA, Circuit Judge.
                        ORDER
    Petitioner ICM, Inc. seeks a writ of mandamus to
vacate certain statements made by the United States
District Court for the Southern District of Indiana in an
order relating to a potential transfer of venue at the
conclusion of the multi-district litigation (“MDL”) proceed-
ing. Respondents GS CleanTech Corporation and Green-
Shift Corporation oppose the petition. We deny the
petition for the following reasons.
    In October 2009, petitioner filed suit against respond-
ents in the United States District Court for the District of
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2                                             IN RE ICM, INC.




Kansas. Petitioner’s complaint, as amended, sought, inter
alia, declaratory judgment of non-infringement, invalidity
and unenforceability of respondents’ patents. (the “Kan-
sas action”). Soon thereafter, respondents filed their own
action in the United States District Court for the South-
ern District of New York, alleging infringement of its
patents by petitioner and other defendants. (the “New
York action”).
    In September 2010, the Kansas action, New York ac-
tion, and other related cases were consolidated pursuant
to 28 U.S.C. § 1407 for pre-trial proceedings in the South-
ern District of Indiana, (the “MDL court”). Before that
court, respondents moved to dismiss petitioner’s com-
plaint or, alternatively, to transfer the action to the
Southern District of New York. The MDL court granting-
in-part that motion, and dismissed some of petitioner’s
claims in the Kansas action.
    The MDL court’s order further expressed the view
that at the completion of the MDL proceedings it would be
in the interest of justice to transfer the Kansas action. In
doing so, the court stated in pertinent part: “ICM Inc.’s
declaratory judgment claims in Count II are properly pled
and the transferor court will retain jurisdiction over them
on remand; however, it is in the interests of justice to
transfer this proceeding to the Southern District of New
York after the Multidistrict Litigation proceedings.”
    Mandamus is a drastic remedy, to be invoked only in
“extraordinary situations.”      Allied Chemical Corp. v.
Daiflon, Inc., 449 U.S. 33, 34 (1980). As such, three
conditions must be satisfied before a writ of mandamus
may issue: (1) the party seeking issuance must have no
other adequate means to attain the desired relief—“a
condition designed to ensure that the writ will not be used
as a substitute for the regular appeals process;” (2)
petitioner must establish that he or she has a “clear and
indisputable” right to relief; and (3) “the issuing court, in
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IN RE ICM INC.                                              3



the exercise of its discretion, must be satisfied that the
writ is appropriate under the circumstances.” Cheney v.
U.S. Dist. Court for the Dist., 542 U.S. 367, 380-81 (2004).
That standard has not been satisfied here.
    To be sure, it does not appear that the MDL court has
authority to transfer the Kansas action to the Southern
District of New York or to any other district court. Sec-
tion 1407(a), which governs MDL proceedings, provides,
in relevant part, that “[e]ach action so transferred shall be
remanded by the panel at or before the conclusion of such
pretrial proceedings to the district from which it was
transferred unless it shall have previously terminated.”
28 U.S.C. § 1407(a) (emphasis added).
    As the Supreme Court has explained, the straightfor-
ward language of section 1407(a) “obligates the Panel to
remand any pending case to its originating court,” Lex-
econ Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523
U.S. 26, 41 n.4 (1998), and thus “precludes a transferee
court from granting any § 1404(a) motion[.]” Id. at 41 n.4.
See also In re Bridgestone/Firestone, Inc., 288 F.3d 1012,
1015 (7th Cir. 2002) (“Once [consolidated pretrial proceed-
ings] have been completed, the cases must be returned to
the originating districts for decision on the merits.”); Shah
v. Pan Am. World Serv., Inc., 148 F.3d 84, 91 (2d Cir.
1998) (“[A]ny further transfers of venue for trial under
any statute must follow such remand.”).
    Here the MDL court has not transferred petitioner’s
case. Rather, the court’s statement that “it would be in
the interest of justice to transfer this proceeding to the
Southern District of New York after the Multidistrict
Litigation proceedings,” is better characterized as a
recommendation. To view the order as doing anything
more than that would ignore the court’s statement that
“ICM Inc.’s declaratory judgment claims in Count II are
properly pled and the transferor court will retain jurisdic-
tion over them on remand. . . .”
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4                                               IN RE ICM, INC.




           Because ICM will have the opportunity to chal-
      lenge any request to transfer the case on remand, and
      because it would be inappropriate to grant this ex-
      traordinary remedy merely to strike a recommenda-
      tion in an opinion that does not rise to the level of an
      actual decision, the legal conditions for mandamus re-
      lief have not been satisfied. The court therefore de-
      nies ICM’s petition.
      Accordingly,
      IT IS ORDERED THAT:
      The petition is denied.
                                     FOR THE COURT

                                     /s/ Daniel E. O’Toole
                                         Daniel E. O’Toole
                                         Clerk of Court

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