Inre: Rothman

Case: 14-110 Document: 18 Page: 1 Filed: 03/19/2014
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE JOEL B. ROTHMAN AND SCHNEIDER
ROTHMAN INTELLECTUAL PROPERTY LAW
GROUP PPLLC
______________________
2014-110
______________________
On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 13-mc-00037, Chief Judge Leonard Davis.
______________________
ON PETITION
______________________
Before NEWMAN, MOORE, and CHEN, Circuit Judges.
MOORE, Circuit Judge.
ORDER
Currently pending in the United States District Court
for the Eastern District of Texas are two consolidated
patent infringement suits filed by VirnetX, Inc. against
Apple, Inc., Nos. 12-cv-00855 (lead) and 11-cv-00563.
Petitioners Joel Rothman and Schneider Rothman Intel-
lectual Property Law Group PPLLC (collectively “Roth-
Case: 14-110 Document: 18 Page: 2 Filed: 03/19/2014
2 IN RE ROTHMAN
man”) are not parties to those suits. Rather, VirnetX
obtained subpoenas for Florida-based Rothman in the
United States District Court for the Southern District of
Florida. VirnetX’s subpoenas sought discovery regarding
inter partes review petitions asserting invalidity of some
of VirnetX’s patents-in-suit, which were filed by New Bay
Capital, LLC, an entity associated with Rothman. Roth-
man moved to quash the subpoenas. In response, VirnetX
moved to transfer the motion to quash to the United
States District Court for the Eastern District of Texas,
which Rothman opposed. The Florida court granted
VirnetX’s motion, ordering the matter transferred to Chief
Judge Davis, before whom the underlying cases between
VirnetX and Apple are pending in Texas. Rothman now
seeks mandamus relief from this court in the form of an
order directing the Texas court to transfer the motion to
quash back to the Florida court.
Mandamus is available only in extraordinary situa-
tions, to correct a clear abuse of discretion or usurpation
of judicial power. In re Calmar, Inc., 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 attaining the
relief desired, Mallard v. U.S. District Court, 490 U.S.
296, 309, (1989), and that the right to issuance of the writ
is “clear and indisputable,” Allied Chemical Corp. v.
Daiflon, Inc., 449 U.S. 33, 35 (1980).
The Eastern District of Texas has taken no action on
the transferred motion to quash. As such, there is no
ruling by that court for this court to review on mandamus.
Rothman objects to asking the Texas court to retransfer
the motion to quash on the ground that doing so might
waive his objections to personal jurisdiction. But Roth-
man may make a limited appearance in the Eastern
District of Texas to request retransfer without risking
waiver on this basis, so long as his conduct “reflect[s] a
continuing objection” to the Eastern District of Texas’s
Case: 14-110 Document: 18 Page: 3 Filed: 03/19/2014
IN RE ROTHMAN 3
jurisdiction. See PaineWebber Inc. v. Chase Manhattan
Private Bank (Switz.), 260 F.3d 453, 460 (5th Cir. 2001)
(quoting Alger v. Hayes, 452 F.2d 841, 844 (8th Cir.
1972)).
Accordingly,
IT IS ORDERED THAT:
The petition is denied without prejudice.
FOR THE COURT
/s/ Daniel E. O’Toole
Daniel E. O’Toole
Clerk of Court
s23