Case: 19-118 Document: 18 Page: 1 Filed: 05/23/2019
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: ASM INTERNATIONAL, N.V., ASM
AMERICA, INC.,
Petitioners
______________________
2019-118
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of Oregon in No. 3:18-cv-
00323-AC, Magistrate Judge John V. Acosta.
______________________
ON PETITION
______________________
Before REYNA, TARANTO, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
ORDER
ASM International, N.V. and ASM America, Inc. (col-
lectively, “ASM”) seek a writ of mandamus directing the
United States District Court for the District of Oregon to
transfer this case to the United States District Court for
the Northern District of California. Kokusai Semiconduc-
tor Equipment Corporation and Kabushiki-Kaisha Koku-
sai Electric (collectively, “HiKE”) oppose the petition.
ASM develops and sells multi-component furnace sys-
tems used in the deposition of thin films on semiconductor
Case: 19-118 Document: 18 Page: 2 Filed: 05/23/2019
2 IN RE: ASM INTERNATIONAL, N.V.
microchips, including lines of equipment known as the
A412 batch vertical furnace system, the Pulsar XP ALD
system, the EmerALD XP ALD system, the Eagle XP8
PEALD system, and the Dragon XP8 PECVD system. ASM
maintains regional sales and support offices for those prod-
ucts in both San Jose, California and Hillsboro, Oregon.
HiKE competes with ASM in the same market and owns a
number of patents covering different aspects of wafer sub-
strate processing and semiconductor device production.
HiKE maintains U.S. headquarters in San Jose, California,
a facility in Hillsboro, Oregon, and a large sales and sup-
port center nearby in Vancouver, Washington.
In December 2017, the parties sued each other for pa-
tent infringement in the Northern District of California.
HiKE’s suit alleged, in relevant part, that ASM’s furnace
systems infringed seven patents that HiKE characterizes
as relating to the handling, processing, and monitoring of
wafer substrates during semiconductor fabrication. In
February 2018, HiKE filed the underlying complaint in the
District of Oregon, alleging that the same products in-
fringed four different patents that, according to HiKE, re-
late to reaction chambers configurations, including nozzles
and other structures for injecting gases into those cham-
bers.
In January 2019, the magistrate judge issued a report
and recommendation to deny ASM’s motion. Among other
things, the magistrate judge emphasized that the four pa-
tents in the Oregon action were directed to different subject
matter than the seven patents in the California action. On
March 20, 2019, the Oregon district court, adopting the
magistrate judge’s recommendations, denied ASM’s motion
to dismiss or transfer the case to Northern California. In
reaching its conclusion, the district court rejected ASM’s
arguments that the “first-to-file” rule warranted dismissal
or transfer or alternatively that HiKE had engaged in im-
proper claim splitting, noting that “[e]ven though the Ac-
cused Products are the same in both actions, the Accused
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IN RE: ASM INTERNATIONAL, N.V. 3
Products are highly complex and involve multiple different
technologies and the California lawsuit and the Oregon
lawsuit involve different patents, different claim terms,
and different claim elements.”
The district court also rejected ASM’s arguments that
the magistrate had given too much deference to HiKE’s
choice to bring this suit in Oregon. The court concluded
that the magistrate had properly considered and weighed
the applicable factors in a 28 U.S.C. § 1404(a) analysis.
ASM now seeks mandamus review of that order. We have
jurisdiction to review the matter under the All Writs Act,
28 U.S.C. § 1651(a), and 28 U.S.C. § 1295(a)(1).
A party seeking a writ bears the burden of demonstrat-
ing that it has no “adequate alternative” means to obtain
the desired relief, Mallard v. U.S. Dist. Court for the S.
Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the right
to issuance of the writ is “clear and indisputable,” Will v.
Calvert Fire Ins., 437 U.S. 655, 666 (1978) (citation and in-
ternal quotation marks omitted). The court must also be
satisfied that the issuance of the writ is appropriate under
the circumstances. Cheney v. U.S. Dist. Court for the Dist.
of Columbia, 542 U.S. 367, 381 (2004). ASM has not made
that showing here. We therefore deny the petition.
ASM first challenges the district court’s “first-to-file”
rule determination. That rule “stands for the common
sense proposition that, when two cases are the same or very
similar, efficiency concerns dictate that only one court de-
cide both cases.” In re Telebrands Corp., 2016-106, 2016
WL 11588057, at *2 (Fed. Cir. Feb. 24, 2016) (non-prece-
dential). However, where the overlap between the two
cases is not “complete or nearly complete,” we generally de-
fer to a district court’s reasoned assessment of “the extent
of overlap, the likelihood of conflict, the comparative ad-
vantage and the interest of each forum in resolving the dis-
pute.” Id. (citation and internal quotation marks omitted).
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4 IN RE: ASM INTERNATIONAL, N.V.
We followed this approach in denying a petition for writ
of mandamus in Telebrands. There, the plaintiff filed one
suit alleging patent infringement and a second suit in a
separate venue alleging trademark and copyright infringe-
ment. The district court found that despite the same prod-
uct being accused in both cases, the various claims would
present different legal and factual inquiries. We rejected
the defendant’s attempts to overturn the district court’s
first-to-file determination on mandamus review because
the district court had reasonably taken into consideration
the different tasks of each case and because no precedent
had been advanced “supporting the proposition that one
court must hear all forms of intellectual property misap-
propriation of an accused product.” Id. at *3.
Although in this case both suits filed by HiKE allege
patent infringement, the court’s analysis in Telebrands is
nonetheless instructive. Here, having considered the rec-
ord before it, the district court exercised its considerable
discretion to not transfer because this case involves differ-
ent asserted patents, claim terms, and technology than are
at issue in the Northern California action. ASM does not
directly refute these factual findings and instead largely
urges transfer because both cases involve the same prod-
ucts. However, that was essentially the same argument
that was rejected in Telebrands. The same analysis leads
us to conclude that ASM has not shown a clear and indis-
putable right to have the case transferred or dismissed un-
der the “first-to-file” rule.
ASM also challenges the application of the usual trans-
fer factors. The magistrate noted that both parties had
places of business in the district, that none of the inventors
overlapped, and that ASM’s filings lacked “information as
to the number of witnesses, their location, the subject of the
testimony, and their willingness to cooperate,” making it
unclear that they had shown transfer was warranted. As
to the public factors, the magistrate noted that “this case
involves different patents with different claims and
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IN RE: ASM INTERNATIONAL, N.V. 5
different inventors,” that “discovery can be structured in a
way to avoid duplication and any inconsistent rulings,” and
that Oregon could likely more quickly resolve the dispute.
ASM contends that HiKE was simply shopping for a
forum that would be faster than the Northern District of
California. The district court, however, rejected this argu-
ment, and we cannot say that HiKE has shown a clear and
indisputable right to have the case transferred or dis-
missed on this basis. Notably, the Oregon action was filed
before the trial date was set in the Northern District of Cal-
ifornia and thus before HiKE knew that trial in the Cali-
fornia case would be delayed until 2022. And while the
district court could have given more weight to the benefits
of having both cases in the same court, we cannot say that
it was required to do so under these circumstances.
Lastly, ASM argues that the district court clearly erred
by not applying the claim-splitting doctrine to bar the Ore-
gon action. Generally, the claim-splitting doctrine is a form
of claim preclusion that bars a subsequent patent infringe-
ment action when it “arises from the same transactional
facts as a prior action.” Acumed LLC v. Stryker Corp., 525
F.3d 1319, 1326 (Fed. Cir. 2008). To the extent that ASM
contends that the district court erred by not dismissing the
action, it has adequate alternative means of raising this is-
sue on appeal after a final judgment. To the extent that it
contends that the district court erred in not transferring
the case, ASM has not shown a clear and indisputable right
to have the case transferred for the same reasons we re-
jected ASM’s other contentions.
Accordingly,
IT IS ORDERED THAT:
The petition is denied.
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6 IN RE: ASM INTERNATIONAL, N.V.
FOR THE COURT
May 23, 2019 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s31