`
`NOTE: This order is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: SEATTLE SPINCO, INC., MICRO FOCUS
`LLC, MICRO FOCUS INTERACTIVE ISRAEL LTD.,
`MICRO FOCUS GOVERNMENT SOLUTIONS LLC,
`MICRO FOCUS (US) INC.,
`Petitioners
`______________________
`
`2020-123
`______________________
`
`On Petition for Writ of Mandamus to the United States
`District Court for the Eastern District of Texas in No. 4:18-
`cv-00469-ALM, Judge Amos L. Mazzant III.
`______________________
`
`ON PETITION
`______________________
`
`Before O’MALLEY, WALLACH, and STOLL, Circuit Judges.
`STOLL, Circuit Judge.
`
`O R D E R
` Petitioners Seattle SpinCo, Inc. et al. (collectively,
`“SSI”) petition for a writ of mandamus directing the United
`States District Court for the Eastern District of Texas to
`transfer this case to the United States District Court for
`the District of Delaware. Wapp Tech Limited Partnership
`and Wapp Tech Corp. (collectively, “Wapp”) oppose. We
`deny the petition.
`
`
`
`
`
`
`
`Case: 20-123 Document: 16 Page: 2 Filed: 06/18/2020
`
`2
`
`
`
`IN RE: SEATTLE SPINCO, INC.
`
`BACKGROUND
`In July 2018, Wapp filed this suit in the Eastern Dis-
`trict of Texas against Micro Focus International plc (“MF
`plc”). The complaint alleged that MF plc, a software com-
`pany headquartered in the United Kingdom, infringed
`three of Wapp’s patents by making, using, selling, and of-
`fering for sale certain accused software products.
`On October 15, 2018, two of MF plc’s U.S. subsidiaries,
`Seattle SpinCo, Inc. and Micro Focus LLC, filed a declara-
`tory judgment action in the District of Delaware, seeking
`judgments that the same Wapp patents that were asserted
`in the Texas action were invalid and that the accused soft-
`ware did not infringe those patents.
`Back in the Texas action, MF plc moved to dismiss for
`lack of personal jurisdiction, arguing that MF plc is a for-
`eign corporation without ties to Texas. The Texas court
`ordered jurisdictional discovery. On June 10, 2019, Wapp
`filed a motion for leave to file an amended complaint to add
`five subsidiaries of MF plc as defendants.
`In August 2019, the Texas court granted MF plc’s mo-
`tion to dismiss upon finding that MF plc, the sole defendant
`in the case at the time, was not subject to personal juris-
`diction in Texas. In the same order, however, the court
`granted leave for Wapp to amend the complaint to remove
`allegations against MF plc and to add the five subsidiaries
`of MF plc (petitioners here).
`MF plc then filed a motion to transfer the Texas action
`to Delaware, invoking the first-to-file rule, and argued that
`the Delaware action and not the Texas action should be
`considered the first-filed because it was the first court to
`obtain personal jurisdiction over the parties.
`The Texas court denied the motion to transfer, finding
`that “[t]he argument’s threshold premise—that the Court
`could not possess this controversy for purposes of the first-
`to-file rule until the date of the amended complaint because
`
`
`
`Case: 20-123 Document: 16 Page: 3 Filed: 06/18/2020
`
`IN RE: SEATTLE SPINCO, INC.
`
` 3
`
`it did not have personal jurisdiction over [MF plc]—is erro-
`neous.” This petition followed.
`We note that the Texas court recently issued its claim
`construction order. See Wapp Tech Ltd. P’ship v. Micro Fo-
`cus Int’l PLC, No. 4:18-cv-00469-ALM, ECF No. 176 (Apr.
`27, 2020). Meanwhile, the Delaware court has stayed its
`action, noting its belief that “[i]t certainly looks like the
`case in Texas is the first filed case.”
`DISCUSSION
`A writ of mandamus is a “drastic and extraordinary
`remedy reserved for really extraordinary causes.” Cheney
`v. U.S. Dist. Court for Dist. of Columbia, 542 U.S. 367, 380
`(2004) (internal quotation marks and citation omitted). A
`petitioner must satisfy three requirements: (1) the peti-
`tioner must “have no other adequate means to attain the
`relief” desired; (2) the petitioner must show that the “right
`to issuance of the writ is clear and indisputable”; and (3)
`the petitioner must convince the court that the writ is “ap-
`propriate under the circumstances.” Id. at 380–81 (inter-
`nal quotation marks and citations omitted).
`SSI cites several cases dealing with the first-to-file
`rule, which “generally favors pursuing only the first-filed
`action when multiple lawsuits involving the same claims
`are filed in different jurisdictions.” Merial Ltd. v. Cipla
`Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012) (citation omit-
`ted); see also West Gulf Mar. Ass’n v. ILA Deep Sea Local
`24, 751 F.2d 721, 730 (5th Cir. 1985) (noting that the usual
`rule is for the court of first jurisdiction to resolve the issues
`when cases before two different federal district courts are
`the same or very similar).1 But SSI cites no appellate court
`
`1 We need not decide whether to apply regional or
`Federal Circuit law in evaluating the district court’s anal-
`ysis of the first-to-file rule, as the parties have not shown
`any material difference between the circuits here.
`
`
`
`Case: 20-123 Document: 16 Page: 4 Filed: 06/18/2020
`
`4
`
`
`
`IN RE: SEATTLE SPINCO, INC.
`
`case that has held that first-filed status is determined by
`which court first secures personal jurisdiction over the par-
`ties.
`Nor are we aware of any appellate case that has spoken
`of the first-filed rule in such terms. See, e.g., Save Power
`Ltd. v. Syntek Fin. Corp., 121 F.3d 947, 950 (5th Cir. 1997)
`(emphasizing priority for the court that first “seized of the
`issues” (internal quotation marks and citation omitted));
`Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403, 407 (5th Cir.
`1971) (explaining generally that “the court initially seized
`of a controversy should be the one to decide whether it will
`try the case”); see also Penn Gen. Cas. Co. v. Pennsylvania,
`294 U.S. 189, 196 (1935) (giving preference to the court
`“whose jurisdiction and process are first invoked by the fil-
`ing of the bill”); Smith v. McIver, 22 U.S. (9 Wheat.) 532
`(1824) (“In all cases of concurrent jurisdiction, the Court
`which first has possession of the subject, must decide it con-
`clusively.”); see also Cadle Co. v. Whataburger of Alice, Inc.,
`174 F.3d 599 (5th Cir. 1999) (refusing to incorporate a ju-
`risdictional analysis into the rule).
`At best, SSI has shown that different district courts
`have appeared to reach contrasting views on whether to
`adopt such an approach. Compare Mallinckrodt Med. Inc.
`v. Nycomed Imaging AS, No. 4:98CV444 ERW, 1998 WL
`962203, at *5 (E.D. Mo. Nov. 13, 1998) (transferring under
`circumstances similar to those in this case); with Advanta
`Corp. v. Visa U.S.A., Inc., No. 96-7940, 1997 WL 88906, at
`*3 (E.D. Pa. Feb. 19, 1997) (“The first-filed rule turns on
`which court first obtains possession of the subject of the
`dispute, not the parties of the dispute.”); and Schering
`Corp. v. Amgen Inc., 969 F. Supp. 258, 267 (D. Del. 1997)
`(“This Court first acquired subject matter jurisdiction over
`the dispute in December of 1996. Accordingly, the Dela-
`ware action is considered first-filed, regardless of the addi-
`tion of a new party in February.”).
`
`
`
`Case: 20-123 Document: 16 Page: 5 Filed: 06/18/2020
`
`IN RE: SEATTLE SPINCO, INC.
`
` 5
`
`At a minimum, the above-noted disagreement and lack
`of precedential support means that SSI’s right to transfer
`based on the first-to-file rule is not clear and indisputable.
`In addition, the extraordinary nature of the remedy, appar-
`ent agreement between the Delaware and Texas courts,
`and stay of the Delaware proceedings, belies any need for
`this court to give any strong consideration to weighing in
`on whether to adopt such a rule here. See Futurewei
`Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708
`(Fed. Cir. 2013) (purpose of the first-to-file rule is to “avoid
`conflicting decisions and promote judicial efficiency” (inter-
`nal quotation marks and citation omitted)). We therefore
`deny SSI’s request for mandamus.
`
`Accordingly,
`
`IT IS ORDERED THAT:
`
`The petition is denied.
`
`
`June 18, 2020
`Date
`
`FOR THE COURT
`
`/s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
`
`s35
`
`
`