Case: 21-103 Document: 2 Page: 1 Filed: 10/21/2020
`
`No. 20-_____
`
`IN THE
`United States Court of Appeals for the Federal Circuit
`________________
`IN RE CINEMARK HOLDINGS, INC., AMC ENTERTAINMENT HOLDINGS, INC.,
`AND REGAL ENTERTAINMENT GROUP,
`Petitioners.
`________________
`On Petition For a Writ of Mandamus to the
`United States District Court for the Eastern District of Texas in
`Case Nos. 2:19-CV-00266-JRG, 2:19-CV-00265-JRG, and 2:19-CV-00267-JRG
`Judge Rodney Gilstrap
`________________
`NON-CONFIDENTIAL PETITION FOR A WRIT OF MANDAMUS
`________________
`
`RICHARD S. ZEMBEK
`NORTON ROSE FULBRIGHT US LLP
`1301 McKinney, Suite 5100
`Houston, TX 77010
`(713) 651-5151
`
`JONATHAN S. FRANKLIN
`NORTON ROSE FULBRIGHT US LLP
`799 9th Street, N.W.
`Washington, D.C. 20001
`(202) 662-0466
`jonathan.franklin@nortonrosefulbright.com
`
`October 21, 2020
`
`Counsel for Petitioners
`
`Dolby Exhibit 1070
`Dolby Labs., Inc. v. InterTrust Techns. Corp.
`IPR2020-00665
`Page 00001
`
`

`

`Case: 21-103 Document: 2 Page: 2 Filed: 10/21/2020
`
`CERTIFICATE OF INTEREST
`
`Case No. _______.
`
`In re Cinemark Holdings, Inc., AMC Entertainment Holdings, Inc., and
`Regal Entertainment Group
`
`Filing Parties/Entities: Cinemark Holdings, Inc., AMC Entertainment
`Holdings, Inc., and Regal Entertainment Group
`
`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
`
`Date: October 21, 2020 Signature:
`
`/s/ Jonathan S. Franklin
`
`Name:
`
`Jonathan S. Franklin
`
`1. Represented Entities (Fed. Cir. R. 47.4(a)(1)) – Provide the full names
`of all entities represented by undersigned counsel in this case.
`
`Cinemark Holdings, Inc.
`
`AMC Entertainment Holdings, Inc.
`
`Regal Entertainment Group
`
`2. Real Party in Interest (Fed. Cir. R. 47.4(a)(2)) – Provide the full names
`of all real parties in interest for the entities. Do not list the real parties if they are
`the same as the entities.
`
`None.
`
`3. Parent Corporations and Stockholders (Fed. Cir. R. 47.4(a)(3)) –
`Provide the full names of all parent corporations for the entities and all publicly
`held companies that own 10% or more stock in the entities.
`
`Cinemark Holdings, Inc.: None.
`
`i
`
`IPR2020-00665 Page 00002
`
`

`

`Case: 21-103 Document: 2 Page: 3 Filed: 10/21/2020
`
`AMC Entertainment Holdings, Inc.: Wanda America Entertainment, Inc.;
`Dalian Wanda Group Co., Ltd.
`Regal Entertainment Group: Cineworld Group plc
`
`4. Legal Representatives (Fed. Cir. R. 47.4(a)(4)) – List all law firms,
`partners, and associates that (a) appeared for the entities in the originating court or
`agency or (b) are expected to appear in this court for the entities. Do not include
`those who have already entered an appearance in this court.
`
`Norton Rose Fulbright US LLP: Brandy S. Nolan, Catherine J. Garza, Eric
`C. Green, Eric B. Hall, Erik O. Janitens, James S. Renard, Michael A.
`Swartzendruber, Stephanie N. DeBrow, and Darren Smith
`
`Gillian & Smith, LLP: Melissa R. Smith
`
`5. Related Cases (Fed. Cir. R. 47.4(a)(5); see also Fed. Cir. R. 47.5(b)) –
`Provide the case titles and numbers of any case known to be pending in this court
`or any other court or agency that will directly affect or be directly affected by this
`court’s decision in the pending appeal. Do not include the originating case
`number(s) for this case.
`
`Dolby Labs., Inc. v. Intertrust Techs. Corp., No. 3:19-CV-03371-EMC
`(N.D. Cal.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No. IPR2020-
`00660 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-00661 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-00662 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-00663 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-00664 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-00665 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-01123 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-01209 (P.T.A.B.); Dolby Labs., Inc. v. Intertrust Techs. Corp., No.
`IPR2020-01273 (P.T.A.B.)
`
`6. Organizational Victims and Bankruptcy (Fed. Cir. R. 47.4(a)(6)) –
`Provide any information required under Fed. R. App. P. 26.1(b) (organizational
`victims in criminal cases) and 26.1(c) (bankruptcy case debtors and trustees).
`
`None.
`
`ii
`
`IPR2020-00665 Page 00003
`
`

`

`Case: 21-103 Document: 2 Page: 4 Filed: 10/21/2020
`
`TABLE OF CONTENTS
`This document redacts highly confidential industry information, subject to a
`protective order, regarding the supply of equipment to Petitioners. See pp. 7,
`15. This document additionally redacts all quotations from the district court’s
`Order, which remains fully sealed at the time this petition is being filed. See
`pp. 2, 3, 9, 10, 12, 13, 21-23, 26, 28-32.
`
` Page(s)
`CERTIFICATE OF INTEREST ............................................................................... i
`TABLE OF AUTHORITIES ....................................................................................v
`INTRODUCTION ....................................................................................................1
`JURISDICTION ........................................................................................................4
`RELIEF SOUGHT ....................................................................................................4
`ISSUE PRESENTED ................................................................................................4
`FACTS ......................................................................................................................4
`A.
`The First-Filed Action .....................................................................4
`B.
`The Present Actions ........................................................................6
`C.
`The Motion to Transfer ...................................................................8
`LEGAL STANDARD .............................................................................................10
`REASONS WHY THE WRIT SHOULD ISSUE ..................................................11
`I.
`THE DISTRICT COURT CLEARLY AND INDISPUTABLY
`RELIED ON AN INCORRECT LEGAL STANDARD TO
`DISREGARD THE PUBLIC INTEREST IN AVOIDING
`DUPLICATIVE LITIGATION IN FAVOR OF A FIRST-FILED
`ACTION ..................................................................................................11
`II. UNDER A CORRECT LEGAL STANDARD, TRANSFER IS
`REQUIRED BECAUSE PRIVATE INTEREST FACTORS ALSO
`OVERWHELMINGLY SUPPORT TRANSFERRING THIS
`CASE TO THE NORTHERN DISTRICT OF CALIFORNIA ..............21
`A. Key Evidence Is In California .......................................................23
`B. Key Witnesses Are Subject To Compulsory Process In
`California .......................................................................................26
`
`
`
`iii
`
`IPR2020-00665 Page 00004
`
`

`

`Case: 21-103 Document: 2 Page: 5 Filed: 10/21/2020
`
`C. Witness Convenience Favors California .......................................28
`D.
`Practical Problems Favor California .............................................31
`III. THIS COURT’S IMMEDIATE INTERVENTION IS
`WARRANTED ........................................................................................33
`CONCLUSION .......................................................................................................34
`CERTIFICATE OF COMPLIANCE WITH TYPE-VOLUME
`LIMITATIONS, TYPEFACE REQUIREMENTS, AND TYPE
`STYLE REQUIREMENTS
`CERTIFICATE OF SERVICE
`CERTIFICATE OF CONFIDENTIAL MATERIAL
`
`
`
`
`
`iv
`
`IPR2020-00665 Page 00005
`
`

`

`Case: 21-103 Document: 2 Page: 6 Filed: 10/21/2020
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases:
`Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004) ..................................... 10
`
`Commc’ns Test Design, Inc. v. Contec, LLC, 952 F.3d 1356 (Fed.
`Cir. 2020) ................................................................................................... 3, 21
`
`Cont’l Grain Co. v. The Barge FBL-585, 364 U.S. 19 (1960) ........................... 11
`
`Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022
`(Fed. Cir. 2002) ................................................................................................ 6
`
`Frederick v. Advanced Fin. Sols., Inc., 558 F. Supp. 2d 699 (E.D.
`Tex. 2007) ...................................................................................................... 29
`
`Fujitsu Ltd. v. Tellabs, Inc., 639 F. Supp. 2d 761 (E.D. Tex. 2009) .................. 23
`
`Futurewei Techs., Inc. v. Acacia Rsch. Corp., 737 F.3d 704 (Fed.
`Cir. 2013) ........................................................................................... 11, 12, 13
`
`Genentech, Inc. v. Eli Lilly & Co., 998 F.2d 931 (Fed. Cir. 1993),
`overruled in part by Wilton v. Seven Falls Co., 515 U.S. 277
`(1995) ......................................................................................................... 2, 12
`
`In re Acer Am. Corp., 626 F.3d 1252 (Fed. Cir. 2010) ...................................... 11
`
`In re Apple, Inc., 581 F. App’x 886 (Fed. Cir. 2014) ................................... 11, 26
`
`In re EMC Corp., 677 F.3d 1351 (Fed. Cir. 2012) ............................................. 11
`
`In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) .......................... 23, 24, 28
`
`In re Hoffmann-Lar Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009) .......... 10, 11, 28
`
`In re HP Inc., --- Fed. App’x ----, 2020 WL 5523561 (Fed. Cir.
`Sept. 15, 2020) ............................................................................. 10, 11, 26, 33
`
`In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011) ...................................... 22
`
`
`
`v
`
`IPR2020-00665 Page 00006
`
`

`

`Case: 21-103 Document: 2 Page: 7 Filed: 10/21/2020
`
`In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009) .......................................... 28
`
`In re Nintendo of Am., Inc., 756 F.3d 1363 (Fed. Cir. 2014) ................... 4, 24, 25
`
`In re Toa Techs., Inc., 543 F. App’x 1006 (Fed. Cir. 2013) ............................... 23
`
`In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) ................................ 23
`
`In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) ................ 26, 31, 33
`
`In re Volkswagen of Am., Inc., 566 F.3d 1349 (Fed. Cir. 2009) ..... 2, 3, 11, 12, 31
`
`In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010) ........................... 23
`
`Kahn v. Gen. Motors Corp., 889 F.2d 1078 (Fed. Cir. 1989) ............................ 14
`
`Katz v. Lear Siegler, Inc., 909 F.2d 1459 (Fed. Cir.
`1990) ............................................................................... 13, 14, 15, 16, 18, 25
`
`Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947 (5th Cir. 1997) ................. 13
`
`Spread Spectrum Screening LLC v. Eastman Kodak Co., 657 F.3d
`1349 (Fed. Cir. 2011)..................................................................................... 15
`
`Van Dusen v. Barrack, 376 U.S. 612 (1964) ...................................................... 22
`
`Statutes:
`
`28 U.S.C. § 1404(a) ................................................... 1, 3, 4, 8, 11, 23, 30, 31, 32
`
`28 U.S.C. § 1651 ................................................................................................... 4
`
`
`
`
`
`
`
`vi
`
`IPR2020-00665 Page 00007
`
`

`

`Case: 21-103 Document: 2 Page: 8 Filed: 10/21/2020
`
`INTRODUCTION
`
`Defendants/Petitioners (“Petitioners”) Cinemark Holdings, Inc.,
`
`(“Cinemark”), AMC Entertainment Holdings, Inc. (“AMC”), and Regal
`
`Entertainment Group (“Regal”) respectfully petition this Court for a writ of
`
`mandamus directing the district court (the Hon. Rodney Gilstrap of the Eastern
`
`District of Texas (“EDTex”)) to transfer these consolidated cases to the Northern
`
`District of California (“NDCal”) pursuant to 28 U.S.C. § 1404(a). The district
`
`court’s order denying transfer contravenes this Court’s clear precedents in order to
`
`retain venue over a patent infringement action that does not belong in Texas.
`
`Plaintiff/Respondent Intertrust Technologies Corp. (“Intertrust”) filed this
`
`case nearly two months after a supplier of equipment to Petitioners filed a
`
`declaratory judgement action involving the same patents in NDCal, where both
`
`Intertrust and the vast majority of potential witnesses are located. In that earlier-
`
`filed case, Intertrust has asserted exactly the same allegations of infringement
`
`regarding use of the same equipment that Intertrust asserts here. It is axiomatic
`
`that “the existence of multiple lawsuits involving the same issues is a paramount
`
`consideration when determining whether a transfer is in the interest of justice”
`
`because “to permit a situation in which two cases involving precisely the same
`
`issues are simultaneously pending in different District Courts leads to the
`
`wastefulness of time, energy and money that § 1404(a) was designed to prevent.”
`
`
`
`1
`
`IPR2020-00665 Page 00008
`
`

`

`Case: 21-103 Document: 2 Page: 9 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
`In re Volkswagen of Am., Inc., 566 F.3d 1349, 1351 (Fed. Cir. 2009)
`
`(“Volkswagen I”) (citation and alteration omitted). Thus, “the forum of the first-
`
`filed case is favored, unless considerations of judicial and litigant economy, and
`
`the just and effective disposition of disputes, require otherwise.” Genentech, Inc.
`
`v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), overruled in part on other
`
`grounds, Wilton v. Seven Falls Co., 515 U.S. 277 (1995).
`
`Mandamus is warranted because the district court disregarded this well-
`
`established law. The first-filed action involves Intertrust’s infringement
`
`allegations against the supplier of the vast majority of products allegedly used by
`
`Petitioners to directly infringe, while this case involves alleged direct infringement
`
`by Petitioners and purportedly additional issues as to other suppliers. Yet the
`
`district court denied transfer because “
`
`” between the two cases and Petitioners’ “
`
`
`
`
`
`-
`
`” with the allegations in the first-filed
`
`suit. Memorandum Opinion and Order (“Order”) at 17, Appendix A hereto (Dkt.
`
`143) (emphasis added).1 But that holding conflicts with this Court’s clear
`
`precedent that the first-to-file rule does not require that the two cases “involve
`
`precisely the same issues;” rather, “significant overlap and a familiarity with the
`
`
`1
`“Dkt.” refers to the district court docket number in this case. Page numbers
`refer to the numbers in the docket header unless otherwise indicated.
`
`
`
`2
`
`SEALED ORDER
`
`SEALED
`ORDER
`
`IPR2020-00665 Page 00009
`
`

`

`Case: 21-103 Document: 2 Page: 10 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
`patents” at issue favors trying cases involving the same patents in the single court
`
`where the first-filed action is pending. Volkswagen I, 566 F.3d at 1351.
`
`That standard is unquestionably satisfied here, where in both cases Intertrust
`
`accuses use of the same products and the same customers of infringing the same
`
`patents in the same way. Given the district court’s error of law on this point, it is
`
`clear and indisputable that transfer is warranted. As the district court itself
`
`recognized, “
`
`
`
`
`
`.” Order at 15 (quoting Commc’ns Test
`
`Design, Inc. v. Contec, LLC, 952 F.3d 1356, 1362 (Fed. Cir. 2020)). There is no
`
`doubt that the transfer factors in this case—which should have required transfer
`
`under any circumstances—cannot overcome the first-to-file rule.
`
`The district court’s clear error of law requires this Court’s intervention. If,
`
`as the court held, the first-to-file rule can be overcome here, any patentee could do
`
`what Intertrust has done—assert counterclaims in a first-filed action in its own
`
`home district alleging that a supplier has induced or contributed to its customers’
`
`direct infringement, and then make the identical contentions against those
`
`customers in a later action in a forum of the patentee’s choosing having little
`
`connection with the dispute. That approach would effectively transform Section
`
`1404(a)’s convenience inquiry into a mere venue analysis. The Court should grant
`
`
`
`3
`
`SEALED ORDER
`
`IPR2020-00665 Page 00010
`
`

`

`Case: 21-103 Document: 2 Page: 11 Filed: 10/21/2020
`
`the writ, direct transfer to NDCal, and make clear that such duplicative and
`
`wasteful forum shopping is impermissible as a matter of law.
`
`JURISDICTION
`
`Jurisdiction exists under the All Writs Act, 28 U.S.C. § 1651. In re
`
`Nintendo of Am., Inc., 756 F.3d 1363 (Fed. Cir. 2014).
`
`RELIEF SOUGHT
`
`Petitioners seek a writ of mandamus directing the district court to transfer
`
`this case to NDCal under 28 U.S.C. § 1404(a).
`
`ISSUE PRESENTED
`
`Where a first-filed action in a patentee’s home district involves claims of
`
`infringement against a supplier and its customers, may a district court refuse to
`
`transfer to that forum the patentee’s later-filed infringement action against those
`
`same customers, where the action involves the same patents, products, conduct,
`
`infringement allegations, and damages claims, and where the later-filed action is
`
`brought in a forum having few connections to the dispute?
`
`FACTS
`A. The First-Filed Action.
`
`This case involves digital cinema technology, which has largely replaced the
`
`older reel-to-reel analog format. In 2002, major motion picture studios created
`
`Digital Cinema Initiatives, LLC (“DCI”) to establish specifications for digital
`
`
`
`4
`
`IPR2020-00665 Page 00011
`
`

`

`Case: 21-103 Document: 2 Page: 12 Filed: 10/21/2020
`
`cinema. Dkt. 28-8. Dolby Laboratories, Inc. (“Dolby”) makes “DCI-compliant”
`
`products under the Dolby and Doremi brands and sells them to Petitioners, who
`
`operate theaters. On June 13, 2019, Dolby sued Intertrust in NDCal (the “Dolby
`
`Action”), requesting a declaratory judgment of non-infringement and injunctive
`
`relief with respect to eleven Intertrust patents (the “Asserted Patents”). See
`
`generally Dkt. 28-2. In its complaint, as amended, Dolby asserts that Intertrust had
`
`accused Dolby’s customers—specifically Petitioners AMC, Cinemark, and
`
`Regal—of infringing the Asserted Patents. Dkt. 46-2, ¶ 26. Dolby sought, inter
`
`alia, an injunction enjoining Intertrust from asserting infringement charges against
`
`either Dolby or its customers. Id. at 15 (Prayer at B).
`
`Intertrust then filed counterclaims, alleging that Dolby infringes the Asserted
`
`Patents by, inter alia, selling and using DCI-compliant “Image Media Blocks
`
`(‘IMBs’),” which theaters use to provide content protection and digital rights
`
`management for digital cinema. Dkt. 46-3, at 15 (Counterclaim ¶ 15). Intertrust
`
`also alleged that Dolby induced and contributed to infringement by its theater
`
`customers such as Petitioners because its DCI-compliant components, including
`
`IMBs, “are not staple articles or commodities of commerce suitable for substantial
`
`non-infringing use,” “are especially made or especially adapted for use in the
`
`infringement,” “are a material part of the invention,” and have “no substantial non-
`
`
`
`5
`
`IPR2020-00665 Page 00012
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`

`

`Case: 21-103 Document: 2 Page: 13 Filed: 10/21/2020
`
`infringing use.” Id. at 22, 25, 28-29, 32-33, 39-40, 42-43 (Counterclaims, ¶¶ 52,
`
`65, 78, 91, 122, 135).
`
`Thus, to prevail in the Dolby Action on its indirect infringement claims,
`
`Intertrust must prove that the use of Dolby and Doremi DCI-compliant products by
`
`Dolby’s movie theater customers—i.e., Petitioners—infringes the Asserted Patents.
`
`See, e.g., Epcon Gas Sys., Inc. v. Bauer Compressors, Inc., 279 F.3d 1022, 1033
`
`(Fed. Cir. 2002) (“there can be no inducement of infringement without direct
`
`infringement” and “[a] finding of contributory infringement likewise requires
`
`underlying proof of direct infringement”).
`
`B.
`
`The Present Actions.
`
`Even though its infringement allegations against both Dolby and its
`
`customers were already being litigated in the Dolby Action, Intertrust went
`
`shopping for what it perceived as a more favorable forum. On August 7, 2019—
`
`nearly two months after Dolby Action was filed—Intertrust filed the present
`
`actions against Petitioners in EDTex. See Dkt. 1. The three cases were assigned to
`
`Chief Judge Gilstrap, who consolidated them for pretrial issues. Dkt. 8.
`
`The complaints are essentially carbon copies of Intertrust’s allegations in the
`
`prior-filed Dolby Action. Intertrust alleged that each Petitioner infringes the same
`
`
`
`6
`
`IPR2020-00665 Page 00013
`
`

`

`Case: 21-103 Document: 2 Page: 14 Filed: 10/21/2020
`CONFIDENTIAL COMMERCIAL
`INFORMATION HAS BEEN
`REMOVED FROM THIS PAGE
`eleven patents that are at issue in the Dolby Action2 “through its use of DCI-
`
`compliant equipment suites to show movies and other DCI-compliant content in
`
`the movie theaters that it owns and operates.” See, e.g., Dkt. 1, at 4 (¶ 15). As in
`
`the Dolby Action, Intertrust alleges that Petitioners’ use of DCI-compliant IMBs—
`
`which Intertrust asserted in the prior action had no non-infringing uses—
`
`necessarily infringe. See, e.g., Dkt. 28-11 (Intertrust relying on “media blocks”
`
`comprising IMBs and other optional components to meet every element of the
`
`Asserted Patents). As Intertrust has stated, in its view “Dolby and Doremi-branded
`
`IMBs used by Defendants perform the limitations of Intertrust’s asserted patent
`
`claims.” Dkt. 135, at 3.
`
`Dolby, moreover, supplies the overwhelming majority of the IMBs allegedly
`
`used by Petitioners to infringe the Asserted Patents. The parties have stipulated
`
`that when IMBs purchased by Sony—which is licensed by Intertrust—are
`
`•••
`•
`
`appropriately excluded, Dolby is the supplier for “
`
`,
`
`, and
`
` of the
`
`IMBs that Cinemark, AMC, and Regal, respectively, use (as of February 2020) to
`
`allegedly infringe Intertrust’s asserted patents.” Dkt. 133 at 5-63; see id. at 21-22.
`
`And as of the filing of this case, Dolby IMBs accounted for
`
` of the non-Sony
`
`
`2
`Intertrust has since removed one patent from this case.
`3
`
`Page number citations to this document refer to the PDF file’s pagination.
`
`
`
`7
`
`%
`
`%
`
`%
`
`%
`
`IPR2020-00665 Page 00014
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`

`

`Case: 21-103 Document: 2 Page: 15 Filed: 10/21/2020
`
`IMBs used by Regal. Id. at 6.4 So important are the Dolby IMBs to Intertrust’s
`
`infringement allegations in this case that Intertrust sought scheduling relief so that
`
`it could obtain and review “massive amounts” of discovery relating to the Dolby
`
`IMBs used by Defendants. Id. at 5. Notably, however, Dolby had already
`
`produced the same information to Intertrust in the Dolby Action. Id. at 6.
`
`C. The Motion to Transfer.
`
`In November 2019, Petitioners filed a joint motion under 28 U.S.C. §
`
`1404(a) to transfer these consolidated cases to NDCal given the first-filed Dolby
`
`Action and the lack of any material connection between this dispute and EDTex.
`
`That motion demonstrated, inter alia, that identical patents are in the two actions;
`
`that the infringement claims substantially overlap and apply to identical conduct;
`
`that Intertrust is headquartered in NDCal, where it filed previous patent cases; that
`
`Dolby (which overwhelmingly supplies the products allegedly used to infringe) is
`
`also headquartered there; that no relevant third-party witnesses are located solely in
`
`Texas5 whereas numerous Dolby and other witnesses, including most of
`
`Intertrust’s non-employee inventors, are located in California; that DCI (which is
`
`
`4
`The remaining IMBs used by Regal come from companies based in Belgium
`and Hong Kong. Id. at 22, 70, 71.
`5
`One potentially relevant witness resides in Texas but has his principal place
`of business in NDCal. Dkt. 46-10.
`
`
`
`8
`
`IPR2020-00665 Page 00015
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`

`

`Case: 21-103 Document: 2 Page: 16 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
`mentioned over 75 times in each complaint) and its member-studios are all in
`
`California; and that Petitioners, which operate theaters nationwide, are subject to
`
`suit in NDCal. See generally Dkt. 28.
`
`Approximately ten months later, on September 30, 2020, the district court
`
`issued the Order denying that motion. The court held that the first-to-file rule was
`
`immaterial because “
`
`and that “
`
`”
`
`
`
`
`
`
`
`-
`
`the same order, “
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`” Order at 17 (emphasis added). Yet as the district court noted earlier in
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`” Id. at 15 (internal quotations and citation
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`omitted; emphasis added).
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`Having incorrectly discarded the first-to-file rule, the district court rejected
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`Defendants’ argument that NDCal was the more convenient forum, despite noting
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`the “
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`-
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`” that “
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`” and that “
`
`
`
`
`
`
`
`” who would come to Texas to testify. Id. at 10,
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`12. It held that on a transfer motion it “
`
`
`
`” id. at 3—here,
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`
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`9
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
`
`IPR2020-00665 Page 00016
`
`

`

`Case: 21-103 Document: 2 Page: 17 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
`Intertrust. Applying that standard, the court held that the fact that “
`
`
`” because some “
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`” available at Petitioners’
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`” did not “
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`corporate headquarters is located in EDTex (for Cinemark) or is “
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`-
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`
`
`
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`” (for the other two defendants). Id. at 5, 7. Noting
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`that patent cases, on average, are tried faster in EDTex than NDCal and
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`“
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`” the court found that factor
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`weighed against transfer. Id. at 14. But the court found that all other “
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`
`
`-
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`-
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`” factors (such as availability of witnesses, the interest in deciding localized
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`disputes at home, and familiarity with and avoiding conflicts of law) were either
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`neutral or weighed only slightly against transfer. Id. at 10, 12, 14.
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`LEGAL STANDARD
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`
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`Mandamus must issue if (1) the petitioner has a clear and indisputable right
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`to relief, (2) there are no other adequate means to attain that relief, and (3) the
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`Court is satisfied that issuing the writ is appropriate. Cheney v. U.S. Dist. Court
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`for D.C., 542 U.S. 367, 380-81 (2004); see also In re Hoffmann-La Roche Inc., 587
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`F.3d 1333, 1336 (Fed. Cir. 2009) (Mandamus may issue when the “facts and
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`circumstances underlying the district court’s application of the [controlling] factors
`
`do not rationally support its decision.”). “In the transfer context, these
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`requirements coalesce into one.” In re HP Inc., --- Fed. App’x ----, 2020 WL
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`
`
`10
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
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`SEALED ORDER
`
`SEALE
`D
`ORDER
`
`IPR2020-00665 Page 00017
`
`

`

`Case: 21-103 Document: 2 Page: 18 Filed: 10/21/2020
`
`5523561, at *2 (Fed. Cir. Sept. 15, 2020). Accordingly, mandamus should be
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`granted “to correct a patently erroneous denial of transfer.” In re Acer Am. Corp.,
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`626 F.3d 1252, 1254 (Fed. Cir. 2010). A refusal to transfer a case is patently
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`erroneous when a district court erroneously interprets the law or makes clearly
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`erroneous factual findings. In re EMC Corp., 677 F.3d 1351, 1355 (Fed. Cir.
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`2012); In re Hoffman-La Roche, 587 F.3d at 1336. This Court applies its own law
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`to transfers involving questions of simultaneous patent litigation, and relevant
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`circuit law to other transfer doctrines. Futurewei Techs., Inc. v. Acacia Rsch.
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`Corp., 737 F.3d 704, 708 (Fed. Cir. 2013); In re Apple, Inc., 581 F. App’x 886,
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`888 (Fed. Cir. 2014).
`
`REASONS WHY THE WRIT SHOULD ISSUE
`
`I.
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`THE DISTRICT COURT CLEARLY AND INDISPUTABLY RELIED
`ON AN INCORRECT LEGAL STANDARD TO DISREGARD THE
`PUBLIC INTEREST IN AVOIDING DUPLICATIVE LITIGATION
`IN FAVOR OF A FIRST-FILED ACTION.
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`Avoiding multiple, conflicting lawsuits is a “paramount consideration” in
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`assessing transfers under Section 1404(a). Volkswagen I, 566 F.3d at 1351.
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`Allowing simultaneous patent cases in “different District Courts leads to the
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`wastefulness of time, energy and money that § 1404(a) was designed to prevent.”
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`Id. (quoting Cont’l Grain Co. v. The Barge FBL-585, 364 U.S. 19, 26 (1960)).
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`A first-filed declaratory judgment action thus should take precedence over a
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`later-filed infringement suit: “The general rule favors the forum of the first-filed
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`
`
`11
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`IPR2020-00665 Page 00018
`
`

`

`Case: 21-103 Document: 2 Page: 19 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
`action, whether or not it is a declaratory action.” Genentech, 998 F.2d at 937. The
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`rule exists to “avoid conflicting decisions and promote judicial efficiency.”
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`Futurewei Techs., Inc., 737 F.3d at 708 (quotation omitted). The first-to-file rule
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`comports with other legal doctrines, such as those requiring a defendant to plead
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`available counterclaims in the first action and prohibiting them from being raised
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`in separate actions. Genentech, 998 F.2d at 938. Accordingly, when a first-filed
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`declaratory action “can resolve the various legal relations in dispute and afford
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`relief from the controversy that gave rise to the proceeding, and absent sound
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`reason for a change of forum, a first-filed declaratory action is entitled to
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`precedence as against a later-filed patent infringement action.” Id.
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`Critically here, the rule does not require that successive cases raise identical
`
`issues or involve identical parties. Even when cases “may not involve precisely
`
`the same issues,” “significant overlap and a familiarity with the patents” at issue
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`favors trying separate cases involving the same patents in a single court.
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`Volkswagen I, 566 F.3d at 1351; see also Futurewei Techs., 737 F.3d at 708 (first-
`
`to-file rule applies when “two actions … sufficiently overlap”). Under this law,
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`the district court plainly erred in finding the first-to-file rule inapplicable and thus
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`refusing to transfer this case to NDCal. The court held that the Dolby Action
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`should not take precedence over this case because “
`
`
`
`” since the “
`
`12
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`SEALED ORDER
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`SEALED ORDER
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`IPR2020-00665 Page 00019
`
`

`

`Case: 21-103 Document: 2 Page: 20 Filed: 10/21/2020
`QUOTATIONS FROM THE DISTRICT
`COURT’S SEALED ORDER HAVE
`BEEN REMOVED FROM THIS PAGE
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`
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`does not require either an “
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`” Order at 17 (emphasis added). But this Court
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` of parties or “
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`” of
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`-
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`allegations for a first-filed manufacturer action to take precedence; all that is
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`required is that the manufacturer claim will likely resolve major issues that will
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`help resolve a separate claim against the manufacturer’s customers. Katz v. Lear
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`Siegler, Inc., 909 F.2d 1459, 1464 (Fed. Cir. 1990); Futurewei Techs., 737 F.3d at
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`708; see also Save Power Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir.
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`1997) (first-to-file rule requires only “substantial overlap” on “substantive issues”).
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`Under the correct legal standard, the first-filed rule unquestionably applies
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`here. This case is a virtual carbon copy of the first-filed Dolby Action as to
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`Petitioners’ use of the Dolby products at issue. Intertrust sued Petitioners in Texas
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`fifty-five days after Dolby sued Intertrust in California. See Dkt. 28 at 5; Dkt. 28-
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`2. Dolby’s first-filed case will resolve major issues raised in this case: that case
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`involves all patents asserted here against Petitioners; Dolby sought injunctive relief
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`preventing Intertrust from suing Dolby’s customers—and specifically identified
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`Petitioners—for infringing those patents; and Intertrust counterclaimed alleging
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`that Dolby’s DCI-compliant systems infringe its patents and have no substantial
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`non-infringing use. Dkt. 28-2, at 7 (¶¶ 24-25); Dkt. 46-2, at 8 (¶ 26); Dkt. 46-3, at
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`22, 25, 28-29, 32-33, 39-40, 42-43 (Counterclaims, ¶¶ 52, 65, 78, 91, 122, 135).
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`
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`13
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`SEALED ORDER
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`SEALED ORDER
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`SEALED
`ORDER
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`IPR2020-00665 Page 00020
`
`

`

`Case: 21-103 Document: 2 Page: 21 Filed: 10/21/2020
`
`Intertrust’s claims here all involve Petitioners’ use of Dolby cinema systems that
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`allegedly infringe the very patents—and even nine of the same exemplary claims—
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`at issue in the first-filed Dolby Action. Compare Dkt. 1, at 8, 10, 12-13, 15, 17-19,
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`21, 23, 27-28, 30-31 (¶¶ 38, 47, 58, 69, 80, 91, 100, 120, 131) with Dkt. 46-3, at
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`19, 21, 24, 27-28, 30-31, 34-35, 3