In re: XCONNECT, LLC v. Bartile Roofs, Inc., 618 F.3d 1153, 1167 10th Cir. 2010

N OTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: XCONNECT, LLC,
Petitioner
______________________
2021-192
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of Colorado in No. 1:20-cv-
03665-RM-MEH, Judge Raymond P. Moore.
______________________
ON PETITION
______________________
Before D YK, P ROST , and HUGHES , Circuit Judges.
P ER CURIAM .
O R D E R
XConnect, LLC petitions for a writ of mandamus to va-
cate the order of the United States District Court for the
District of Colorado transferring this case to the United
States District Court for the Western District of Texas and
to re-transfer the case back to the District of Colorado.
DynaEnergetics US, Inc., DynaEnergetics Europe GmbH,
and DMC Global Inc. (collectively, DynaEnergetics) op-
pose. We deny the petition.
DynaEnergetics Europe GmbH owns U.S. Patent No.
10,844,697, which relates to components for a perforation
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IN RE: XCONNECT , LLC 2
gun system used in well bore perforating in the oil and nat-
ural gas industries. DynaEnergetics manufactures and as-
sembles its own perforating systems within the Western
District of Texas. Although XConnect is headquartered in
Colorado, it also maintains significant operations in the
Western District of Texas, where its competing XConnect
system is sold and used.
Soon after the ’697 patent issued, DynaEnergetics no-
tified XConnect1 that it believed XConnect’s perforating
gun system infringed DynaEnergetics’ patent. DynaEner-
getics also informed XConnect that DynaEnergetics had
filed a patent infringement suit asserting the same patent
in the Western District of Texas against a competitor of
XConnect. Shortly after receiving DynaEnergetics’s notifi-
cation letter, XConnect filed this suit in the District of Col-
orado seeking declaratory judgment of noninfringement.
DynaEnergetics moved to transfer the declaratory
judgment action pursuant to 28 U.S.C. § 1404(a), arguing
that the Western District of Texas was the more convenient
forum to resolve the case. DynaEnergetics emphasized that
there was a strong connection between the events giving
rise to the suit and the extensive oil drilling operations in
the Permian Basin, which is located largely in the Western
District of Texas, as compared to the low oil rig count in the
District of Colorado. DynaEnergetics also identified several
relevant party and third-party witnesses in the Western
District of Texas. DynaEnergetics additionally argued that
judicial economy considerations weighed in favor of trans-
fer because of its four pending actions involving the same
patent in the Western District of Texas.
1 At that time, XConnect was known as PerfX Wireline
Services, LLC (“PerfX”). After this case was filed, PerfX
was renamed XConnect, LLC and continues to manufac-
ture and sell the accused XConnect perforating system.
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IN RE: XCONNECT , LLC 3
Following Tenth Circuit law, the district court evalu-
ated the relevant transfer factors enumerated in Employ-
ers Mutual Casualty Co. v. Bartile Roofs, Inc., 618 F.3d
1153, 1167 (10th Cir. 2010) and concluded that “considera-
tions of judicial economy and convenience, and the interest
of justice weigh in favor of transferring this case.” Appx3.
Specifically, the district court found that in declaratory
judgment actions brought in anticipation of litigation in
another district, “less deference may be given” to a plain-
tiff’s choice of forum. Appx2. Furthermore, the pending ac-
tions in the Western District of Texas involving the same
patent weighed in favor of transfer. XConnect then filed
this petition seeking to vacate the district court’s order
transferring the case to the Western District of Texas and
return the case to Colorado.
We have exclusive jurisdiction to consider XConnect’s
petition for a writ of mandamus under 28 U.S.C. §§ 1651
and 1295. In reviewing transfer determinations in cases
arising on mandamus, we look to the applicable regional
circuit law. In re TS Tech USA Corp., 551 F.3d 1315, 1319
(Fed. Cir. 2008). In the Tenth Circuit, such decisions are
reviewed for a clear abuse of discretion. Hustler Mag., Inc.
v. U.S. Dist. Ct. for Dist. of Wyo., 790 F.2d 69, 70 (10th Cir.
1986); In re Cooper Tire & Rubber Co., 568 F.3d 1180, 1186
(10th Cir. 2009). The district court did not clearly abuse its
discretion in granting transfer in this instance.
The district court concluded that XConnect’s choice of
forum was not entitled to significant deference in this case.
The court based that finding on its determination that
XConnect had filed this declaratory judgment suit to avoid
an anticipated suit in the Western District of Texas. XCon-
nect has not shown that the district court clearly abused
its discretion in making those determinations. Cf. Buzas
Baseball, Inc. v. Bd. of Regents of Univ. Sys. of Ga., 189
F.3d 477 (Table), at *3 (10th Cir. 1999) (citation omitted)
(determining that a district court does not abuse its discre-
tion in declining to proceed with “a declaratory judgment
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IN RE: XCONNECT , LLC 4
action if that action was filed for the purpose of anticipat-
ing a trial of the same issues in a court of coordinate juris-
diction”).
The district court also concluded that the Western Dis-
trict of Texas had significant connections to the events giv-
ing rise to this case because both parties have material
operations in the transferee venue and a considerable por-
tion of the alleged infringing activity occurred within the
Western District of Texas. The court also found that the
transferee venue would be more convenient because of the
location of key witnesses and employees of both parties in
that forum. Finally, given the pending actions in the West-
ern District of Texas, the court noted that “transferring
this action would avoid having a second court engage in
claim construction of the ’697 patent.” Appx3. XConnect
has not made a persuasive case that the district court
clearly abused its discretion in making those findings.
Accordingly,
I T I S O RDERED T HAT :
The petition is denied.
November 10, 2021
Date
F OR THE COURT
/s/ Peter R. Marksteiner
Peter R. Marksteiner
Clerk of Court
s35
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