Federal Circuit disposition — 25-147

NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In Re MILLER MENDEL, INC., TYLER MILLER,
Petitioners
______________________
2025-147
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of California in No.
2:22-cv-01390-WBS-AC, Senior Judge William B. Shubb.
______________________
ON PETITION
______________________
Before DYK, LINN, and CUNNINGHAM, Circuit Judges.
LINN, Circuit Judge.
O R D E R
Miller Mendel, Inc. and Tyler Miller (collectively,
“MMI”) petition this court for a writ of mandamus directing
the United States District Court for the Eastern District of
California to transfer this case to the United States District
Court for the Western District of Oklahoma. Alternatively,
MMI asks this court to direct the Eastern District to dis-
miss certain of the asserted counts. Guardian Alliance
Technologies, Inc. opposes. MMI replies. For the following
reasons, we deny MMI’s petition.
Case: 25-147 Document: 17 Page: 1 Filed: 10/28/2025

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IN RE MILLER MENDEL, INC. 2
I.
MMI, which is based in Seattle, Washington, and
Guardian, which at the time of filing of the present action
was based in California1, have opposed each other over
MMI’s patents in several forums, including actions in four
different federal district courts. Two of those actions are
now closed after one of MMI’s patents was found invalid.
Two actions remain pending; one brought by MMI in the
Western District of Oklahoma and the present action
brought by Guardian in the Eastern District of California.
Years before the present action, MMI sued the City of
Oklahoma City in the Western District of Oklahoma alleg-
ing infringement based on use of Guardian’s software. Mil-
ler Mendel, Inc. v. The City of Oklahoma City, No. 5:18-cv-
00990-JD (W.D. Okla.). In October 2020, MMI amended
its complaint in that action to add Guardian as a defend-
ant, asserting claims for defamation and seeking a declar-
atory judgment that MMI did not commit fraud or
inequitable conduct in securing the asserted patents. In
May 2025, MMI sought leave to amend its complaint to
drop its claims against the City. Guardian’s motion to
transfer the Oklahoma action to the Eastern District of
California is also pending.2
In the present action, filed in the Eastern District of
California in August 2022, Guardian seeks a declaratory
judgment of unenforceability and invalidity of claims of the
same patents at issue in the Oklahoma action. Guardian
All. Techs., Inc. v. Miller Mendel, Inc., No. 2:22-cv-01390
1 Guardian states in its response that “[s]ince the fil-
ing of this case, [Guardian] has relocated its operations to
Nevada.” Resp. at 3.
2 The Oklahoma court has since stayed proceedings
pending the outcome of this petition.
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IN RE MILLER MENDEL, INC. 3
WBS AC (E.D. Cal.). Guardian further asserts claims un-
der Section 2 of the Sherman Act, California’s unfair com-
petition and false advertising laws, as well as claims for
tortious interference. In March 2025, MMI moved to dis-
miss under the first-to-file rule, for lack of standing to pur-
sue relief under the Declaratory Judgment Act, for failure
to state claims for Sherman Act violations or state law vio-
lations, and for failing to plead fraud and inequitable con-
duct with the requisite level of particularity.
In April 2025, the Eastern District of California issued
its decision on MMI’s motion. The court began by address-
ing the first-to-file rule. The court found dismissal unwar-
ranted because Guardian had raised other claims that
were not at issue in the Oklahoma action. The court fur-
ther noted no party had requested a stay or transfer. The
court then turned to standing and concluded that Guardian
has established a real and reasonable apprehension of pa-
tent infringement suits being brought against it. On the
pleading challenges, the court concluded that dismissal
was warranted only as to Guardian’s false advertising and
libel claims.
MMI then for the first time filed a motion to transfer
the California action to Western Oklahoma. On July 22,
2025, the district court denied MMI’s motion. The court
reiterated that Guardian was seeking relief beyond that at
issue in the Oklahoma action. The court also emphasized
that “little has occurred” in the Oklahoma action. Appx48.
In addition, the court weighed against transfer the fact
that MMI only sought transfer after receiving an unfavor-
able ruling on its motion to dismiss and its finding that Ok-
lahoma would not be convenient to resolve this action given
there was no connection between that forum and any of the
parties or witnesses. This petition then followed.
II.
“The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
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IN RE MILLER MENDEL, INC. 4
Ct. for N. Dist. of Cal., 426 U.S. 394, 402 (1976). Accord-
ingly, “three conditions must be satisfied before it may is-
sue.” Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367, 380
(2004). The petitioner must show a “clear and indisputa-
ble” right to relief. Id. at 381 (quoting Kerr, 426 U.S. at
403). The petitioner must “lack adequate alternative
means to obtain the relief” it seeks. Mallard v. U.S. Dist.
Ct. for S. Dist. of Iowa, 490 U.S. 296, 309 (1989); Cheney,
542 U.S. at 380. And “even if the first two prerequisites
have been met, the issuing court, in the exercise of its dis-
cretion, must be satisfied that the writ is appropriate un-
der the circumstances.” Cheney, 542 U.S. at 381.
We generally apply regional circuit law to transfer rul-
ings. See In re TS Tech USA Corp., 551 F.3d 1315, 1319
(Fed. Cir. 2008). A decision denying transfer based on ap-
plication of the first-to-file rule is generally only reviewed
for an “abuse of discretion.” Pacesetter Sys., Inc. v. Med-
tronic, Inc., 678 F.2d 93, 97 (9th Cir. 1982). On mandamus,
we review the district court’s denial of transfer only for a
clear abuse of discretion. See TS Tech, 551 F.3d at 1319;
In re Bozic, 888 F.3d 1048, 1052 (9th Cir. 2018). We cannot
say that MMI has shown such abuse here.
“Under [the first-to-file] rule, when cases involving the
same parties and issues have been filed in two different
districts, the second district court has discretion to trans-
fer, stay, or dismiss the second case in the interest of effi-
ciency and judicial economy.” Cedars-Sinai Med. Ctr. v.
Shalala, 125 F.3d 765, 769 (9th Cir. 1997). The rule is not
to be applied inflexibly, and exceptions may be made if jus-
tified by “bad faith,” “forum shopping,” or considerations of
judicial and litigant economy. Alltrade, Inc. v. Uniweld
Prods., Inc., 946 F.2d 622, 625, 628 (9th Cir. 1991) (noting
the rule is intended to “promot[e] efficiency”).
We see no clear abuse of discretion in the district
court’s resting its no-transfer decision here on MMI’s per-
ceived gamesmanship in seeking transfer only after the
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IN RE MILLER MENDEL, INC. 5
court had denied its motion to dismiss the action. Cf. Kohn
Law Grp. v. Auto Parts Mfg. Miss., Inc., 787 F.3d 1237,
1240 (9th Cir. 2015). Nor do we see any abuse of discretion
in the court’s findings that the litigation would be more
convenient in California and transfer would not be efficient
given the status of the Oklahoma case and the California
court’s familiarity with the issues in the case. At least for
these reasons, MMI has not demonstrated entitlement to
mandamus relief under the circumstances of this case.
MMI contends that denial of transfer here could result
in duplicative litigation. But the district court disagreed,
and that possibility, standing alone, is insufficient to estab-
lish entitlement to mandamus relief. See Int’l Fidelity Ins.
Co. v. Sweet Little Mex. Corp., 665 F.3d 671, 679 (5th Cir.
2011); see also Alltrade, 946 F.2d at 628 (“The most basic
aspect of the first-to-file rule is that it is discretionary; an
ample degree of discretion . . . must be left to the lower
courts.” (citations and internal quotation marks omitted)).
It is also far from clear and indisputable that the two dis-
trict courts here are without means, including staying pro-
ceedings or transferring the Oklahoma action, to avoid
inconsistent results or inefficient use of party and judicial
resources.
MMI has likewise not established entitlement to man-
damus relief to compel dismissal of the declaratory judg-
ment counts in Guardian’s complaint. In particular, MMI
has not shown that an appeal from the entry of final judg-
ment would be an inadequate avenue to raise its challenge.
See generally Roche v. Evaporated Milk Ass’n, 319 U.S. 21,
32 (1943) (reversing issuance of writ when “court of appeals
below has done no more than substitute mandamus for an
appeal contrary to the statutes and the policy of Con-
gress”).
Accordingly,
IT IS ORDERED THAT:
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IN RE MILLER MENDEL, INC. 6
The petition is denied.
October 28, 2025
Date
FOR THE COURT
Case: 25-147 Document: 17 Page: 6 Filed: 10/28/2025

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