Case: 21-168 Document: 29 Page: 1 Filed: 09/27/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: INTEL CORPORATION,
Petitioner
______________________
2021-168
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00634-ADA, Judge Alan D. Albright.
---------------------------------------------------------------------------------
In re: SAMSUNG ELECTRONICS CO., LTD., a Ko-
rean Company, SAMSUNG ELECTRONICS
AMERICA, INC., SAMSUNG SEMICONDUCTOR,
INC., SAMSUNG AUSTIN SEMICONDUCTOR, LLC,
Petitioners
______________________
2021-169
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00636-ADA, Judge Alan D. Albright.
______________________
ON PETITION AND MOTION
______________________
Case: 21-168 Document: 29 Page: 2 Filed: 09/27/2021
2 IN RE: INTEL CORPORATION
Before LOURIE, BRYSON, and TARANTO, Circuit Judges.
PER CURIAM.
ORDER
Intel Corporation and Samsung Electronics Co., Ltd. et
al. (Samsung) each petition this court for a writ of manda-
mus directing the United States District Court for the
Western District of Texas to transfer these related cases to
the United States District Court for the Northern District
of California. Demaray LLC opposes and moves for leave
to file a sur-reply.
Demaray has sued both Intel and Samsung in the
Western District of Texas for infringement of two patents
directed to the configuration and use of semiconductor fab-
rication reactors. Although Intel and Samsung have been
sued separately, they are closely aligned in these cases be-
cause the reactors that form the basis of Demaray’s in-
fringement allegations are supplied to Intel and Samsung
by Applied Materials, Inc. Applied is headquartered in the
Northern District of California but has a large manufactur-
ing facility in Austin, Texas, in the Western District of
Texas. Austin is also the location of Samsung’s domestic
semiconductor fabrication facilities that are accused of in-
fringement. Although Intel has identified employees
knowledgeable about its account with Applied and relevant
financial information in the Northern District of Califor-
nia, it appears that Intel’s fabrication operations and em-
ployees knowledgeable about the research and
development of the accused reactor configurations are out-
side both the Northern District of California and the West-
ern District of Texas.
Demaray filed these actions in the Western District of
Texas on July 14, 2020. A month later, Applied filed an
action in the Northern District of California seeking a de-
claratory judgment of non-infringement of the same two
patents that Demaray had asserted against Samsung and
Case: 21-168 Document: 29 Page: 3 Filed: 09/27/2021
IN RE: INTEL CORPORATION 3
Intel. Applied moved the California court to enjoin the two
suits against its customers. The California court denied
that motion and dismissed Allied’s declaratory judgment
action. * In October 2020, Applied filed a petition with the
Patent and Trademark Office seeking inter partes review
of the patents. In that petition, Allied named Intel and
Samsung as real parties in interest. On May 11, 2021, the
Patent Office granted the petitions and instituted review.
Those proceedings are ongoing before the Patent Office.
In November 2020, Samsung and Intel moved the dis-
trict court in the Western District of Texas to transfer these
cases to the Northern District of California. On July 1,
2021, the court denied those motions. In two separate or-
ders, the court ruled that neither Samsung nor Intel had
established that the Northern District of California was a
clearly more convenient forum than the Western District of
Texas, the plaintiff’s chosen forum.
In the Samsung case, the district court recognized that
some Samsung and Applied employees and two inventors
are located in the Northern District of California. None-
theless, the court regarded the convenience-of-the-wit-
nesses factor as neutral. The court observed that Samsung
employees in Austin “are knowledgeable about the alleg-
edly infringing process and are qualified to testify about
those processes at trial.” App. 9. In addition, the court
found that “Applied’s Austin manufacturing personnel are
involved with Samsung’s accused use of the claimed reactor
configurations and Applied’s Austin office provided support
staff for the Samsung relationship.” App. 8–9. Further-
more, the court pointed out that other witnesses, including
Samsung employees and inventors, would be coming from
outside both districts.
* Applied subsequently filed another declaratory
judgment action in California, which is still pending.
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4 IN RE: INTEL CORPORATION
The district court also found that the compulsory-pro-
cess factor was neutral. The court pointed out that Applied
had indemnity obligations to the defendants and could be
counted on to appear. The court also found that neither
venue had an advantage with regard to sources of proof be-
cause the accused reactors and relevant documents of Sam-
sung and Applied were in and/or accessible from the
Western District of Texas. The court added that the West-
ern District of Texas had a slight advantage with regard to
the local interest factor, given that Samsung’s only domes-
tic fabrication facilities were in Austin. The court addition-
ally speculated that if Samsung’s case were transferred to
California, the California district court would likely stay
the litigation pending completion of the inter partes re-
views, which would delay the trial.
Having concluded that Demaray’s suit against Sam-
sung should remain in the Western District of Texas, the
district court then turned to Intel’s motion. The court
found that judicial economy considerations weighed
against transfer of the case against Intel. The court ob-
served that the two cases had been coordinated for all pre-
trial proceedings and found that having the two cases
decided by two different district courts would be inefficient,
given that they involve the same patents and the same un-
derlying technology. The court additionally found that it
could likely resolve the Intel case faster than the California
court. The district court was also not persuaded that the
private interest factors favored transfer in light of the pres-
ence of Applied’s employees and evidence in the Western
District of Texas. The court accordingly also denied Intel’s
motion.
The standard for mandamus relief is demanding. A pe-
titioner must establish, among other things, that it has a
clear and indisputable legal right to relief. Cheney v. U.S.
Dist. Ct. for D.C., 542 U.S. 367, 381 (2004) (citation omit-
ted). We have recognized that district courts enjoy “broad
discretion in transfer decisions pursuant to 28 U.S.C.
Case: 21-168 Document: 29 Page: 5 Filed: 09/27/2021
IN RE: INTEL CORPORATION 5
§ 1404(a).” In re Vistaprint Ltd., 628 F.3d 1342, 1344 (Fed.
Cir. 2010). On mandamus, we review only for “clear abuses
of discretion that produce patently erroneous results.” In
re Volkswagen of Am., Inc., 545 F.3d 304, 312 (5th Cir.
2008) (en banc). We cannot say that standard is met here.
To be sure, the district court erred in weighing against
transfer the likelihood that the California court would stay
proceedings pending the Patent Office’s review. The Fifth
Circuit has held that only “in rare and special circum-
stances” would “delay” or “prejudice” resulting from trans-
fer be “relevant in deciding” a motion. In re Horseshoe Ent.,
337 F.3d 429, 434 (5th Cir. 2003) (internal quotation marks
omitted). The possibility of a stay pending the Patent Of-
fice’s review after transfer falls far short of satisfying that
standard.
Moreover, the district court should not have regarded
the possibility that the transferee court would issue a stay
pending inter partes review as weighing against transfer.
The inter partes review process, like other post-issuance re-
view proceedings, was designed to give the agency an op-
portunity to correct its mistakes, to give courts the benefit
of the agency’s consideration of the effect of prior art on pa-
tents being asserted in litigation, and to reduce the burden
of litigation on the parties and the courts. See Murata
Mach. USA v. Daifuku Corp., 830 F.3d 1357, 1362 (Fed.
Cir. 2016); NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-
1058, 2015 WL 1069111, at *2, 4–5 (E.D. Tex. Mar. 11,
2015); see also Virtual Agility Inc. v. SalesForce.com, Inc.,
759 F.3d 1307, 1314 (Fed. Cir. 2014); In re Etter, 756 F.2d
852, 857 (Fed. Cir. 1985); Gould v. Control Laser Corp., 705
F.2d 1340, 1342 (Fed. Cir. 1983) (“One purpose of the reex-
amination procedure is to eliminate trial of that issue . . .
or facilitate trial of that issue by providing the district
court with the expert view of the PTO . . . .”). For that rea-
son, the willingness of a court in the transferee forum to
consider granting stays pending inter partes review (and
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6 IN RE: INTEL CORPORATION
the disposition of the transferor court not to grant such
stays) is not a justification for denying transfer.
Nonetheless, Intel and Samsung have not shown a
clear and indisputable right to transfer. Mindful of the
standard of review, we are not prepared to second-guess
the district court’s findings that Samsung’s and Applied’s
operations within the Western District of Texas are likely
to be important sources of evidence and witnesses in Sam-
sung’s case. The district court also reasonably found that
keeping the cases against Samsung and Intel before one
court would preserve judicial economy and minimize the
potential for inconsistent judgments. And we cannot say
that Intel has shown that the transferee venue is so clearly
more convenient as to override those benefits in its case.
The petitioners make much of Applied’s pending declara-
tion judgment suit in the Northern District of California,
but that suit was filed after these complaints, and we see
no clear error in the district court’s assessment of the pen-
dency of that case based on the information available at the
time of its decision on the transfer motions.
Accordingly,
IT IS ORDERED THAT:
(1) The petitions are denied.
(2) The motion to file a sur-reply is denied.
FOR THE COURT
September 27, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
s31