Case: 22-105 Document: 26 Page: 1 Filed: 01/14/2022
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: AMPEREX TECHNOLOGY LIMITED,
Petitioner
______________________
2022-105
______________________
On Petition for Writ of Mandamus to the United States
District Court for the District of New Jersey in No. 2:21-cv-
08461-KM-ESK, Judge Kevin McNulty.
______________________
ON PETITION
______________________
Before LOURIE, PROST, and TARANTO, Circuit Judges.
PER CURIAM.
ORDER
Amperex Technology Limited (“ATL”) seeks manda-
mus relief from the September 27, 2021 order of the United
States District Court for the District of New Jersey trans-
ferring its complaint to the United States District Court for
the Western District of Texas. We deny ATL’s petition.
Case: 22-105 Document: 26 Page: 2 Filed: 01/14/2022
2 IN RE: AMPEREX TECHNOLOGY LIMITED
BACKGROUND
Maxell, Ltd. and Maxell Holdings, Ltd. (collectively,
“Maxell”)1 own the patents-at-issue in this case. Effective
March 26, 2020, Maxell entered into a non-disclosure
agreement with ATL for purposes of discussing a license to
Maxell’s lithium-ion battery patent portfolio. Relevant
here, that agreement included a “litigation standstill”
clause, in which the parties agreed not to initiate any legal
actions against each other for one year.
Just as the one-year period was ending with no agree-
ment having been reached, Maxell sent a letter to ATL,
stating that it remained “willing to resolve this matter am-
icably and to grant ATL a license” but if “Maxell and ATL
are not able to enter into a licensing agreement by Friday,
April 9, 2021, Maxell will be left with no choice but to pur-
sue litigation.” Appx0002. After discussions between Max-
ell’s and ATL’s counsel, Maxell wrote to ATL on April 5,
2021 by email that it was open to having another meeting
and requested that ATL “provide the materials ATL
planned to present.” Appx0003.
The evening of the next day, April 6, 2021, ATL sent an
email to Maxell, stating that it would “be in touch as soon
as [it] can get the materials.” Id. A few hours later on the
same day, ATL brought the present action in the District
of New Jersey seeking a declaratory judgment of nonin-
fringement of Maxell’s patents. Two days later, on April 8,
2021, Maxell sued ATL in the Western District of Texas,
accusing the same products identified in the declaratory
judgment complaint of infringing the same patents.
Maxell moved the New Jersey court either to decline
jurisdiction over ATL’s declaratory judgment action or to
transfer ATL’s action to the Western District of Texas
1 The Maxell entities have since merged, and the sole
respondent is now Maxell, Ltd.
Case: 22-105 Document: 26 Page: 3 Filed: 01/14/2022
IN RE: AMPEREX TECHNOLOGY LIMITED 3
pursuant to 28 U.S.C. § 1404(a). Maxell’s motion princi-
pally argued that ATL had brought its action in New Jer-
sey in bad faith and in anticipation of Maxell’s action.
Maxell invoked considerations relevant to departing from
the first-to-file rule as well as the usual § 1404(a) factors.
On September 27, 2021, the New Jersey district court
granted Maxell’s transfer request. The court recognized
that proceeding with a mirror image first-filed declaratory
action is generally preferred over a second-filed patent in-
fringement action, but the court concluded that “consider-
ations of judicial and litigant economy, and the just and
effective disposition of disputes require that I depart from
the first-to-file rule.” Appx0014 (internal quotation marks
and citation omitted). The court rested that determination
in part on its finding that Maxell’s action was filed upon
“receipt of specific, concrete indications” that a patent in-
fringement suit by Maxell was “imminent.” Appx0010 (in-
ternal quotation marks and citation omitted).
Based on its first-to-file analysis, the district court de-
termined that there would be a sufficient basis to decline
declaratory judgment jurisdiction. Nonetheless, the court
chose not to dismiss the complaint, concluding that “it is in
the best interests of justice to transfer this case to the
Western District of Texas[.]” Appx0016. The court rea-
soned that ATL’s choice of forum was not entitled to signif-
icant weight, not only because it was anticipatory, but also
because both parties were foreign corporations and New
Jersey had no particular connection to the infringement
claims. The court added that “the Texas case has already
advanced farther than this case and thus will likely be re-
solved more expeditiously.” Id. This petition followed.
DISCUSSION
The legal standard for mandamus is demanding. ATL
must show, among other things, that it has a clear and in-
disputable legal right to the relief it seeks. See Cheney v.
U.S. Dist. Ct. for D.C.,
542 U.S. 367, 380–81 (2004). We
Case: 22-105 Document: 26 Page: 4 Filed: 01/14/2022
4 IN RE: AMPEREX TECHNOLOGY LIMITED
review transfer determinations under applicable regional
circuit law, here the law of the Third Circuit. In re TS Tech
USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008). In the
Third Circuit, transfer involving the first-to-file rule, if re-
viewed on appeal after a final judgment, is a matter of dis-
cretion. See Chavez v. Dole Food Co., Inc.,
836 F.3d 205,
210 (3d Cir. 2016). On mandamus, we ask whether the
transfer ruling was a clear abuse of discretion. See In re
Link_A_Media Devices Corp.,
662 F.3d 1221, 1222 (Fed.
Cir. 2011); see also Sunbelt Corp. v. Noble, Denton & As-
socs., Inc.,
5 F.3d 28, 30 (3d Cir. 1993); Swindell–Dressler
Corp. v. Dumbauld,
308 F.2d 267, 272 (3d Cir. 1962). ATL
has not made such a showing in this case.
ATL has not shown a right under the first-to-file rule
to prevent transfer of this case. In cases cited by ATL itself,
we have recognized that the first-to-file rule is not absolute,
that a declaratory judgment action in particular may even
be dismissed though filed first, and that a “court may con-
sider whether a party intended to preempt another’s in-
fringement suit when ruling on the dismissal of a
declaratory action.” Elecs. for Imaging, Inc. v. Coyle,
394
F.3d 1341, 1347–48 (Fed. Cir. 2005) (citing Serco Servs.
Co., L.P. v. Kelley Co., Inc.,
51 F.3d 1037, 1040 (Fed. Cir.
1995)). That approach accords with conclusions reached by
us in transfer cases, see In re XConnect, LLC, No. 2021-192,
2021 WL 5230758, at *2 (Fed. Cir. Nov. 10, 2021), and by
the Third Circuit in discussing the first-to-file rule and pos-
sible courses of action (including transfer or enjoining con-
current litigation) upon determining whether the rule
should be applied, see EEOC v. Univ. of Pa.,
850 F.2d 969,
971–72 (3d Cir. 1988) (holding that the court did not abuse
its discretion by declining to dismiss the second-filed suit
when the timing of the first suit indicated an attempt to
preempt the imminent second suit); Chavez, 836 F.3d at
210, 216–21. See also Katz v. Lear Siegler, Inc.,
909 F.2d
1459, 1463 (Fed. Cir. 1990).
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IN RE: AMPEREX TECHNOLOGY LIMITED 5
Here, the district court made a reasonable finding that
ATL’s suit was anticipatory, given the sequence of commu-
nications briefly summarized above. And that finding does
not stand alone. See Coyle,
394 F.3d at 1347–48. The court
also found that other considerations added to the reasons
to depart from the first-to-file rule here. In particular, the
court found that ATL feigned cooperation and interfered
with the ongoing negotiations, that no evidence, party, or
witness is in New Jersey, that ATL had not effectively
served Maxell in the New Jersey action while Maxell had
effectively served ATL in the mirror-image Texas action,
that the two actions could be consolidated, and that the
Texas action was further along in resolving the dispute be-
tween the parties. ATL has not shown a clear right to relief
from those determinations, which suffice to establish a
plausible basis for the district court’s decision here to de-
part from the first-to-rule rule.
We also see no basis to disturb the district court’s
transfer ruling under section 1404(a). That conclusion has
not been shown to be an abuse of discretion. ATL’s petition
limits its challenge to the district court’s analysis of the
convenience considerations under the first-to-file rule.
ATL raised no issue about the district court’s separate eval-
uation of the applicable transfer factors until its reply brief.
“An issue that falls within the scope of the judgment ap-
pealed from but is not raised by the appellant in its opening
brief on appeal” may properly be held forfeited. Engel In-
dus., Inc. v. Lockformer Co.,
166 F.3d 1379, 1383 (Fed. Cir.
1999); see also In re Apple Inc.,
979 F.3d 1332, 1337 (Fed.
Cir. 2020) (applying rule to mandamus petitions). We so
hold here.
Accordingly,
IT IS ORDERED THAT:
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6 IN RE: AMPEREX TECHNOLOGY LIMITED
ATL’s mandamus petition is denied.
FOR THE COURT
January 14, 2022 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
