In Re Echostar Corp. , 388 F. App'x 994 ( 2010 )

NOTE: This order is nonprecedential
United States Court of AppeaIs
for the FederaI Circuit
IN RE ECHOSTAR CORP. and
. DISH NETWORK CORP.
(formerly known as Ech0star C0mmunications
C0rp-),
Petiti0ners.
MiScel1aneouS D0cket No. 933
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of TexaS in case no.
2208-CV-0O070, Magistrate Judge Char1es Everingham.
ON PETITION FOR WRIT OF MANDAMUS
Before RADER, Chief Ju,dge, BRYsoN, and MooRE, Circuiz:
Judges.
RADER, Chief Judge.
0 R D E R
Echostar Corp. et a1. (Echostar) seek a writ of man-
damus to direct the United States District C0urt for the
Eastern DiStrict of Texas to vacate its order denying
IN RE ECHOSTAR 2
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_a1leging 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-iile” 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 l\/fay of 2003, pending the completion of
reexamination proceedings involving two of the patents
before the Patent & Trademark Of[:lce.
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-
3 IN RE ECHOSTAR
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 C0., 589 F.3d
1194 (Fed. Cir. 2009); In, re Hoffmcmn.-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
1nandamus.
Accordingly,
IN RE ECHOSTAR
lT lS ORDERED THAT2
The petition is denied.
FoR THE CoURT
/s/ Jan Horbaly
1..__,_._1_.__1__.1__..
Date J an Horbaly
Clerk
4
"ss2rléi.i_Paer°*
we 02 2016
cc: Rachel Krevans, Esq. nw H0RBm
CLERl(
Arun S. Subramanian, Esq.'
Clerk, United States District Court for the Eastern
District Of Texas
S
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