in Re Aliphcom v. Acer, Inc., Case No. 10-cv-00124 "Texas Action" . The Texas Action complaint alleged…

# NOTE: This order is nonprecedential. United States Court of Appeals for the Federal Circuit

IN RE ALIPHCOM,
Petitioner.

Miscellaneous Docket No. 971

On Petition for Writ of Mandamus to the United
States District Court for the Northern District of Califor-
nia in case no. 10-CV-02337, Judge Lucy H. Koh.

ON PETITION

Before LOURIE, GAJARSA, and LINN, Circuit Judges.
LINN, Circuit Judge.

## ORDER

Aliphcom petitions for a writ of mandamus to direct
the United States District Court for the Northern District
of California ("the district court") to vacate its order
granting Wi-LAN, Inc.'s ("Wi-LAN") motion to transfer
venue. Wi-LAN opposes. Aliphcom replies.

On April 7, 2010, Wi-LAN filed suit against twenty-
eight defendants in the United States District Court for

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the Eastern District of Texas ("the Texas district court")
alleging infringement of U.S. Patent No. 5,515,369 ("the
'369 patent"). That case is Wi-LAN, Inc. v. Acer, Inc.,
Case No. 10-cv-00124 ("Texas Action"). The Texas Action
complaint alleged that the different defendants sell
products "compliant with the Bluetooth standards." Wi-
LAN did not name Aliphcom in its original complaint.

On May 20, 2010, Wi-LAN sent Aliphcom a letter in-
dicating its view that "Aliph's Jawbone® headset product
practiced United States Patent Nos. 6,549,749 and
5,515,369 ... . " Aliphcom responded by filing a declara-
tory judgment action in the United States District Court
for the Northern District of California on May 27, 2010,
asserting invalidity of the '369 patent and United States
Pat. No. 6,549,759 ("the '759 patent"). Aliphcom subse-
quently amended its complaint to include claims for
declaratory judgment of non-infringement of both patents
and unenforceability of the '759 patent. This action is
hereinafter referred to as the "Declaratory Judgment
Action."

On June 2, 2010, Wi-LAN amended its complaint in
the Texas Action to add claims that Aliphcom infringed
both the '369 and the '759 patents. Wi-LAN also added
claims of infringement against Cambridge Silicon Radio
("CSR"), the company that manufactures the Bluetooth
chips used in Aliphcom's products.

In addition to the Texas Action, there is another case
before the same judge in the Texas district court in which
Wi-LAN has asserted the '759 patent. In that case, Wi-
LAN, Inc. v. Acer, Inc. Case No. 07-cv-00473 ("Previous
Texas Action"), Wi-LAN was granted leave to assert the
'759 patent against various defendants (not including
Aliphcom) on February 3, 2009. A claim construction
order was issued in the Previous Texas Action on Sep-

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tember 20, 2010, construing the disputed claim limita-
tions in that action. Additionally, that case is scheduled
for trial in February 2011, although a motion to defer the
trial is pending before the trial court.

On July 28, 2010, Wi-LAN moved to transfer the De-
claratory Judgment Action to the Texas district court,
asserting that judicial efficiency supported the transfer,
because the issues in the Declaratory Judgment Action
overlapped with those in the Texas Action and the Previ-
ous Texas Action. The district court granted Wi-LAN's
motion, concluding that "the risk of inconsistent judg-
ments and waste of judicial resources must outweigh the
equitable concern of Aliphcom's convenience in litigating
its claims."

In reviewing a district court's ruling on a motion to
transfer, this court applies the law of the regional circuit.
See Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823,
836 (Fed. Cir. 2003). The United States Court of Appeals
for the Ninth Circuit reviews a district court's decision to
transfer for abuse of discretion. Sparling v. Hoffman
Const. Co., Inc., 864 F.2d 635, 639 (9th Cir. 1988); Com-
modity Futures Trading Comm'n v. Savage, 611 F.2d 270,
279 (9th Cir. 1979) ("Weighing of the factors for and
against transfer involves subtle considerations and is best
left to the discretion of the trial judge.").

A party seeking a writ bears the burden of proving
that the right to issuance of the writ is "clear and indis-
putable." Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33,
35 (1980). Thus, in order to succeed, Aliphcom must
demonstrate a clear and indisputable abuse of discretion
by the district court. This court concludes that Aliphcom
has failed to do so.

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The district court acknowledged that in the present
case there are multiple factors which might counsel
against transfer, such as the locations of documents and
witnesses and that Wi-LAN has admitted that it has no
regular U.S. employees in Texas or elsewhere and no
"robust" activities in Texas. However, the district court
concluded that these convenience elements were out-
weighed by the concerns of judicial efficiency and incon-
sistent judgments presented by allowing two cases with
overlapping claims to proceed in two different federal
courts.

This court recently held that substantial justification
for maintaining an action in a forum existed on the
ground of judicial economy when, inter alia, there was co-
pending litigation before the trial court involving the
same patent and underlying technology. See In Re Vis-
taprint, Misc. No. 954, -- F.3d -- , 2010 Westlaw 5136034
(Fed. Cir. Dec. 15, 2010). Specifically, this court ex-
plained "that having the same .. . judge handle this and
the co-pending case involving the same patent would be
more efficient than requiring another magistrate or trial
judge to start from scratch." Id. at *4. Therefore, this
court cannot say that the district court clearly and indis-
putably abused its discretion in ordering the declaratory
judgment action transferred to the Eastern District of
Texas. Id.

Accordingly,

IT IS ORDERED THAT:

The petition for a writ of mandamus is denied.

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FOR THE COURT

FEB 0 9 2011

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Claudia Wilson Frost, Esq.
Robert A. Cote, Jr., Esq.
Clerk, United States District Court for the Northern
District Of California

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT

FER 0 9 2011

JAN HORBALY
CLERK