Federal Circuit disposition — 2010-m933-8-2-10-1-pdf

NOTE: This order is nonprecedential.

# United States Court of Appeals for the Federal Circuit

IN RE ECHOSTAR CORP. and
DISH NETWORK CORP.
(formerly known as Echostar Communications
Corp.),
Petitioners.

Miscellaneous Docket No. 933

On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in case no.
2:08-CV-00070, Magistrate Judge Charles Everingham.

ON PETITION FOR WRIT OF MANDAMUS

Before RADER, Chief Judge, BRYSON, and MOORE, Circuit
Judges.

RADER, Chief Judge.

## ORDER

Echostar Corp. et al. (Echostar) seek a writ of man-
damus to direct the United States District Court for the
Eastern District of Texas to vacate its order denying

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Echostar's motion to transfer venue, and to direct the
Texas court to transfer the case to the United States
District Court for the District of Delaware. Personalized
Media Communications, L.L.C. (PMC) opposes. Echostar
replies.

This petition involves two separate suits brought by
PMC, alleging infringement of its multiple patents enti-
tled, "Signal Processing Apparatus and Methods." In the
action at bar, PMC brought suit in the United States
District Court for the Eastern District of Texas, accusing
Echostar of making, using, and selling broadband cable
television transmission products that infringe six of those
patents.

Echostar asked the district court to transfer the case
to the United States District Court for the District of
Delaware pursuant to 28 U.S.C. § 1404(a), which author-
izes transfer "for the convenience of parties and wit-
nesses, in the interest of justice." Echostar conceded that
the evidentiary and witness considerations were neutral
in this case. Nevertheless, Echostar argued that under
the "first-to-file" rule this case should be transferred
because it substantially overlapped with a pending suit in
that court PMC had filed against several other defendants
accused of making, using, and selling satellite television
transmission products. The Delaware suit has been
stayed since May of 2003, pending the completion of
reexamination proceedings involving two of the patents
before the Patent & Trademark Office.

The Texas district court denied Echostar's motion to
transfer. The district court determined that there was no
substantial overlap between the Texas and Delaware
suits. The court explained that "[w]hile the Delaware
action and this case both involve the same patents, in this
case, the plaintiff asserts different claims against differ-

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ent defendants and accuses different technology plat-
forms." The court added that "[t]ransferring this case to
Delaware will produce only minimal gains in judicial
economy, if any at all [because] [t]he Delaware court has
not evaluated the merits of PMC's complaint and has not
adopted any claim construction." The court also noted
that transfer could possibly result in a delay of this case
because it was uncertain when the PTO reexamination
proceedings would be completed.

Applying Fifth Circuit law in cases arising from dis-
trict courts in that circuit, this court has held that man-
damus may be used to correct a patently erroneous denial
of transfer. That standard is an exacting one, requiring
the petitioner to establish that the district court's decision
amounted to a failure to meaningfully consider the merits
of the transfer motion. See In re Nintendo Co., 589 F.3d
1194 (Fed. Cir. 2009); In re Hoffmann-La Roche Inc., 587
F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d
1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d
1315 (Fed. Cir. 2008); In re Volkswagen of Am., Inc., 545
F.3d 304 (5th Cir. 2008) (en banc).

Having conceded below that the private interest fac-
tors are neutral, Echostar cannot now argue to the con-
trary. We also cannot say that the district court's
application of the first-to-file rule was patently erroneous.
The defendants and accused technology are markedly
distinctive to each action. And, while four patent claims
may overlap in these two suits, 36 claims do not.
Echostar's arguments regarding the overlap of validity,
enforcement, and claim construction may be persuasive,
but they are simply not enough to satisfy the demanding
standard required to justify the issuance of a writ of
mandamus.

Accordingly,

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IN RE ECHOSTAR
IT IS ORDERED THAT:
The petition is denied.

FOR THE COURT

AUG 2 2010

Date

/s/ Jan Horbaly
Jan Horbaly
Clerk

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
AUG 02 2010

cc: Rachel Krevans, Esq.
Arun S. Subramanian, Esq.
Clerk, United States District Court for the Eastern
District Of Texas
s19

JAN HORBALY
CLERK