in Re Vertical Computer Systems, Inc v. U.S. Dist. Court for the Southern Dist. of Iowa, 490 U.S. 296, 309, 109 S.Ct. 1814,…

# .NOTE: This order is nonprecedential.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

IN RE VERTICAL COMPUTER SYSTEMS, INC.,
Petitioner.

Miscellaneous Docket No. 985

On Petition for a Writ of Mandamus to the United
States District Court for the Northern District of Califor-
nia in case no. 10-CV-4645, Judge Richard Seeborg.

ON PETITION

Before BRYSON, LINN, and PROST, Circuit Judges.

PROST, Circuit Judge.

ORDER

Vertical Computer Systems, Inc. seeks a writ of man-
damus directing the United States District Court for the
Northern District of California to vacate its May 2, 2001
order denying Vertical's renewed motion to transfer the
case to the District Court for the Eastern District of Texas
and remand with instructions to transfer the case. Inter-
woven, Inc. opposes. Vertical replies.

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The remedy of mandamus is available only in ex-
traordinary situations to correct a clear abuse of discre-
tion or usurpation of judicial power. In re Calmar, Inc.,
854 F.2d 461, 464 (Fed. Cir. 1988). A party seeking a writ
bears the burden of proving that it has no other means of
attaining the relief desired, Mallard v. U.S. Dist. Court
for the Southern Dist. of Iowa, 490 U.S. 296, 309, 109
S.Ct. 1814, 104 L.Ed.2d 318 (1989), and that the right to
issuance of the writ is "clear and indisputable," Allied
Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980). A
court may deny mandamus relief "even though on normal
appeal, a court might find reversible error." In re Cordis
Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).

In January 2009, Vertical sent a letter to Interwoven
relating to one of Vertical's patents at issue, and two
months later, the parties met for licensing discussions.
No action was taken again until August 2010, when
Vertical sent another letter to Interwoven to renew dis-
cussions, this time concerning that patent and an addi-
tional application. In response, Interwoven filed a
declaratory judgment action regarding the two patents in
the Northern District of California in October 2010. The
next month, Vertical filed a complaint against Interwoven
and other defendants in the Eastern District of Texas.
The Eastern District of Texas transferred the portion of
the action against Interwoven to the Northern District of
California. Vertical argues that this court should eschew
the first-to-file rule in favor of its complaint in Texas.

The general rule favors the first-filed action. Genen-
tech, Inc. v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir.
1993). Vertical argues that Interwoven's declaratory
judgment action is merely an anticipatory filing and
should not be given priority. While the race to the court-
house is one factor to consider, the court also considers
other factors such as the convenience and availability of

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the witnesses, possibility of consolidation with related
litigation, and considerations relating to the real party in
interest. See Genentech, 998 F.2d at 938.

Vertical has not demonstrated that it is entitled to a
writ. Vertical has not demonstrated that the district
court is clearly and indisputably incorrect. The district
court properly considered all of the relevant factors.
Indeed, Vertical does not seek mandamus to direct the
Northern District of California to dismiss the first-filed
action, but seeks only transfer. Concerning the factors
other than whether the filing was premature, although
Vertical is based in Austin, it does employ at least one
corporate director in the Northern District of California.
The Northern District of California district court also
concluded that judicial economy would not be compro-
mised because the case that will proceed in the Eastern
District of Texas against the other defendants involves
significantly different products and issues.

Accordingly,
IT IS ORDERED THAT:
The petition for writ of mandamus is denied.

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FOR THE COURT

AUG 1 7 2011

/s/ Jan Horbaly

Date

Jan Horbaly Clerk

cc: Bijal V. Vakil, Esq.
Vasilios D. Dossas, Esq.
Clerk, United States District Court for the Northern
District of California

s24

FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
AUG 1 7 2011

JAN HORBALY
CLERK