NOTE: This order is nonprecedential
United States Court of AppeaIs
for the FederaI Circuit
IN RE THE BOARD OF REGENTS OF THE
UNIVERSITY OF TEXAS SYSTEM,
Petitioner.
Miscel1aneous Docket No. 974
On Petition for Writ of Mandan1uS to the United
States District Court for the Northern District of Ca1ifor-
nia in case no. 10-CV-3595, Judge Saundra BroWn Arm-
strong.
ON PETITION
Before BRYs0N, L1NN, and PROs'1‘, Circuit Judges.
PROST, Circuit Judge.
0 R D E R
The Board of Regents of the University of Texas Sys-
tem (Board) petitions for a writ of mandamus to direct the
United States District Court for the Northern District of
Ca1if0rnia to vacate its order transferring the case to the
United States District Court for the Eastern District of
Texas. Western Digital Technolog'ies, Inc. and Hitachi
G1oba1 Storage Technologies, Inc. (co11ecti\/ely "the re-
spondents") oppose. The Board replies The Board also
IN RE BOARD OF REGENTS 2
moves to stay proceedings in the Eastern District of
Texas.
ln 2009, Dr. Carl B. Collins and Dr. Farzin Davanloo
filed a patent infringement suit in the Eastern District of
Texas against numerous defendants including Western
Digital and Hitachi, That complaint alleges, inter alia,
that Collins and Davanloo conceived of and reduced to
practice the subject matter of the patents-in-suit at The
University of Texas at Dallas. According to the com-
plaint, Collins and Davanloo reside in Texas. The com-
plaint alleges that Co1lins and Davanloo are the named
inventors and own all rights, title and interest because of
an assignment from the Board. Some of the defendants
including Western Dig1`tal and Hitachi, filed a motion to
dismiss, asserting that the patent assignment was invalid
and that Collins and Davanloo lacked standing to sue.
That motion is pending before the Eastern District of
Texas. '
On the same day that they moved to dismiss the
Eastern District of Texas action, Western Digital and
Hitachi Eled a complaint in the Northern District of
Ca1ifornia seeking a declaratory judgment of nonin-
fringement, invalidity, unenforceability, and a determina-
tion concerning ownership of the patents involved in the
Texas suit. The named defendants include Collins, Da-
vanloo, and the Board. Collins and Davanloo moved to
dismiss the complaint or transfer the case to the Eastern
District of Texas pursuant to 28 U.S.C. § 1404(a). The
Board moved to dismiss the action for lack of subject
matter jurisdiction, lack of personal jurisdiction, lack of
proper venue pursuant to 28 U.S.C. § 1406(a), and due to
its asserted sovereign immunity
The Northern District of California Aanted Collins'
and Davanloo's motion to transfer the action to the East-
ern District of Texas and denied their motion to dismiss
as moot. The Northern District of California also held
3 IN RE BOARD OF REGENTS
that venue as to the Board was improper in the Northern
District of California, and instead of dismissing the por-
tion of the case against the Board, the district court
ordered that it be transferred with the claims against
Collins and Davanloo The Northern District of California
denied the remainder of the Board's motion as moot and
stated that it was not reaching the issues of subject
matter jurisdiction, personal jurisdiction, and sovereign
immunity. Regarding the first two issues raised by the
Board, the Northern District of California held that it was
not required to reach those issues, citing,’ inter _alia,
Sin,ochem Intern. C'o. Ltd. v. Malaysia Intern. Shipping
C0rp., 549 U.S. 422, 423 (2007) ("Although a federal court
generally may not rule on the merits of a case without
first determining that it has jurisdiction over the cause
(subject matter jurisdiction) and the parties (personal
jurisdiction) . . . there is no mandatory sequencing of
nonmerits issues . . . . A court has leeway_, to 'choose
among threshold grounds for denying audience to a case
on the merits . . . .") (internal citations omitted).
The Board petitions for a writ of mandamus to chal-
lenge the transfer order. The remedy of mandamus is
available in extraordinary situations to correct a clear
abuse of discretion or usurpation of judicial power. fn re
Calmor, In,c., 854 F.2d 461, 464 (Fed. Cir. 1988) A party
seeking a writ bears the burden of proving that it has no
other means of obtaining the relief desired, Mallard v.
U.S. Dist. Court, 490 U.S. 296, 309 (l989), and that the
right to issuance of the writ is "clear and indisputable,"
Allied C'hem,. C'0rp. o. Dai]‘10n,, In,c., 449 U.S. 33, 35 (1980).
The Board has not met this standard. The Board ar-
gues (1) that the Northern District of California could not
transfer the case without first adjudicating its asserted
sovereign immunity, and (2) that the case should not have
been transferred because both the Northern District of
California and the Eastern District of Texas lack subject
IN RE BOARD OF REGENTS 4
matter jurisdiction over the declaratory judgment action
due to a lack of an actual controversy.
The Board's first argument is without merit. The
Board cites to cases that hold that a district court cannot
transfer to another district court without first determin-
ing if the transferee court is one in which the action could
have been brought. We agree with those cases, of course,
as the requirement is in the statute. A district court may
transfer under 28 U.S.C. § 1404(a) or 28 U.S.C. § 1406(a)
to "any district or division in which it could have been
brought." The cases cited by the Board hold that the
transferee district must be one which would have per-
sonal jurisdiction over the defendants. Here there is no
dispute that the Eastern District of Texas has personal
jurisdiction over the Board. The Northern District of
California stated that the Board "admits that this action
could have been brought in the Eastern District of Texas
in its motion to dismiss for improper venue."‘The Board
seems to argue that the Northern District of California
could not transfer to the Eastern District of Texas because
the Board has a defense to the suit in any district court,
an argument that is not supported by the cases it cites.
In any event, the Board has not shown that a trial
court is required to decide a defense before determining
whether to transfer an action. Admitted1y, there is not
complete clarity from the Supreme Court whether Elev-
enth Amendment immunity is a defense or a jurisdic-
tional restriction. However, the Supreme Court's
statements indicate it is considered a defense that has a
result much like jurisdictional considerations. See, e.g.,
Edelman v. Jordan, 415 U.S. 651, 678 (1974) ("The Court
of Appeals apparently felt the defense was properly
presented, and dealt with it on the merits. We approve of
this resolution, since it has been well settled since the
decision in Ford Motor Co. v. Department of T‘reasury,
[323 U.S- 459 (1945)], that the Eleventh Amendment
5 IN RE BOARD OF REGENTS
defense sufficiently partakes of the nature of a jurisdic-
tional bar so that it need not be raised in the trial court");
C'alder0n v. Ashmus, 523 U.S. 740, 745 n.2 (1998) (Elev-
enth Amendment immunity "i.s jurisdictional in the sense
that it is a limitation on the federal court‘s judicial power,
and therefore can be raised at any stage of the proceed-
ings, [although] we have recognized that it is not coexten-
sive with the limitations on judicial power in Article III.")
(citations omitted); Idah0 u. C'oeur d’Alene Tribe of Idaho,
521 U.S. 261, 267 (1997) ("The Amendment, in other
words, enacts a sovereign immunity from `suit, rather
than a nonwaivable limit on the Federal Judiciary's
subject-matter jurisdicti0n."). In any event, the Board
asserts harm in having to raise the sovereign immunity
defense before the Eastern District of TeXas and requests
that we decide the sovereign immunity issue without that
trial court first having done so. The Eastern District of
Texas is in a far better position than this court to decide
this issue in the first instance. If the district court denies
the Board's immunity, the Board can of course immedi-
ately appeal and seek review of that issue before entry of
final judgment, thus eliminating any harm asserted by
the Board that it might face an unnecessary trial. Puert0
Rico Aqu,educt & Sewer Auth. v. Metcalf & Eddy, Inc., 506
U.S. 139, 147 (1993) ("We hold that States and state
entities that claim to be 'arms of the State' may take
advantage of the collateral order doctrine to appeal a
district court order denying a claim of Eleventh Amend-
ment immunity."). Thus, the Board has not established a
lack of alternative means to obtain the relief desired and
has also failed to establish that prerequisite for manda-
mus relief.
Regarding the Board's second issue, that the transfer
was improper because the district court had to first de-
termine whether it had subject matter jurisdiction, we
note that it appears the district court transferred the
lN RE BOARD OF REGENTS 6
portion of the case concerning the Board pursuant to 28
U.S.C. § 1406(a). The Board argues that the Ninth Cir-
cuit has held that a district court should not transfer a
case pursuant to 28 U.S.C. § 1406(a) without first deter-
mining whether it has subject matter jurisdiction over the
case. Hern,andez u. Campbell, 204 F.3d 861, 865 n.6 (9th
Cir. 2009). We note that the Ninth Circuit in the Her-
nandez opinion was reviewing the transfer determination
after a final judgment in that case. That is an important
distinction, because the Supreme Court has held that
courts of appeals should not review, by mandamus trans-
fer orders issued under Section 1406(a) because the
parties can obtain effective review of the transfer order by
appealing from the final judgment Ban,kers Life & Cos.
Co. v. Hollan,d, 346 U.S. 379, 384 (1953) ("whatever
'judicial inconvenience and hardship' may exist here will
remain, after transfer, within the realm of the same court
of appeals which has denied the writ, since both of the
districts are within that circuit; and it is not clear that
adequate remedy cannot be afforded petitioner in due
course by that court to present some of the conflicts and
procedural problems anticipated."). fn other words,
arguments concerning lack of subject matter jurisdiction
can be effectively made on appeal from a final judgment,
and thus mandamus is not appropriate absent extraordi-
nary circumstances not presented by the petitioner here.
Thus, following the admonition of the Supreme
Court's statement in Bonkers Life, we decline to consider
at this interlocutory stage the petitioners' arguments
concerning subject matter jurisdiction.
Accordingly,
IT ls ORDERED THA'r:
(1) The petition is denied.
(2) The motion is moot.
7 iN nn BOARD or stearns
FOR THE CoURT
l 7 2011 /s/ Jan Horbaly
Date 5 an Horbaly
Clerk
cc: lVlichael W. Shore, Esq.
Scott D. Baskin, Esq.
U.S. District Court, E.D. Texas, Clerk
U.S. District Court, N.D. California, Clerk
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