Case: 20-113 Document: 30 Page: 1 Filed: 03/17/2020
NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
In re: SUPERCELL OY, Petitioner ______________________
2020-113 ______________________
On Petition for Writ of Mandamus to the United States District Court for the Eastern District of Texas in Nos. 2:19-cv-00070-JRG-RSP, 2:19-cv-00071-JRG-RSP, and 2:19-cv-00072-JRG-RSP, Judge J. Rodney Gilstrap. ______________________
ON PETITION ______________________
Before MOORE, CHEN, and STOLL, Circuit Judges. PER CURIAM. ORDER Supercell Oy petitions for a writ of mandamus direct- ing the United States District Court for the Eastern Dis- trict of Texas to transfer these cases to the United States District Court for the Northern District of California. GREE, Inc. opposes the petition. Supercell replies. BACKGROUND In February 2019, Supercell and GREE entered into a settlement agreement resolving various patent litigations. Case: 20-113 Document: 30 Page: 2 Filed: 03/17/2020
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That agreement included a standstill provision under which each party agreed not to commence patent litigation until February 28, 2019. The agreement also contained a governing law and forum selection clause that provided that “all matters arising out of or relating to this Agree- ment, are governed by, and construed in accordance with, the laws of the State of California,” and “[t]he sole jurisdic- tion and venue for any action for breach of or to enforce this Agreement shall be the United States District Court for the Northern District of California.” 1 Shortly after midnight on February 28, 2019 central time, GREE submitted into the filing system of the Eastern District of Texas the three underlying complaints alleging that Supercell infringed its patents. Supercell then imme- diately sued GREE in the Northern District of California, alleging that GREE breached the settlement agreement by bringing the Texas actions and sought declaratory judg- ments of noninfringement and invalidity for the same pa- tents. Supercell moved for a temporary restraining order
1 The court notes that both parties have marked as con- fidential provisions of the settlement agreement and dis- cussions of those provisions that appear verbatim in the district court’s public opinion. See GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071-JRG-RSP, 2019 WL 5596504, at *1– *5 (E.D. Tex. Oct. 30, 2019). The court notes that even words such as “agreement” and “provision” standing alone have been marked confidential for no apparent reason. The court advises the parties that the improper use of confiden- tiality designations “ignores the requirements of public ac- cess, deprives the public of necessary information, and hampers this court’s consideration and opinion writing” and could result in sanctions. See In re Violation of Rule 28(d), 635 F.3d 1352, 1360 (Fed. Cir. 2011). Case: 20-113 Document: 30 Page: 3 Filed: 03/17/2020
IN RE: SUPERCELL OY 3
in California to prevent GREE from pursuing the Texas ac- tions. The California court denied the motion and stayed that action, noting that “principles of comity among federal courts and judicial efficiency weigh heavily in favor of re- solving all of the parties’ disputes in Texas.” Supercell OY v. GREE, Inc., No. 3:19-CV-01106, ECF No. 32 (N.D. Cal. May 31, 2019). Supercell then moved the Eastern District of Texas to transfer the Texas actions to the Northern District of Cali- fornia, arguing that GREE’s alleged breach of the settle- ment agreement should be remedied by transfer, or alternatively, that transfer is warranted under 28 U.S.C. § 1404(a). The district court rejected both arguments. Supercell now seeks a writ of mandamus to direct transfer to the Northern District of California. DISCUSSION A party seeking a writ bears the burden of proving that, among other things, it has a clear and indisputable legal right to the relief it seeks. See Cheney v. U.S. Dist. Court for the Dist. of Columbia, 542 U.S. 367, 380–81 (2004). This demanding standard is not satisfied here. Supercell first challenges the district court’s analysis of the first-to-file rule. That rule “generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012) (ci- tation omitted). “Application of the first-to-file rule is gen- erally a matter for a district court’s discretion, exercised within governing legal constraints.” Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (citation omitted). Supercell does not dispute that its suit was not actually filed first. Supercell instead argues that its California ac- tion was the only properly filed suit under the standstill provision. Supercell contends that the district court clearly Case: 20-113 Document: 30 Page: 4 Filed: 03/17/2020
4 IN RE: SUPERCELL OY
erred in (1) assessing when these suits were commenced under the standstill provision at the time GREE uploaded them into the system rather than when GREE logged into the system, and (2) not applying Pacific time to determine when the suit was actually filed. Upon correction of either district court error, Supercell contends, these suits were filed on February 27th, not the 28th, in violation of the par- ties’ standstill agreement. We, however, disagree with Supercell on both points. We see no clear error in the district court’s assessment of when these suits were commenced. Looking to its local rules, which provide that a “document filed electronically is deemed filed at the ‘entered on’ date and time stated on the Notice of Electronic Filing,” GREE, 2019 WL 5596504, at *4 (emphasis added) (quoting E.D. Tex. Local Rule CV- 5(a)(3)(B)), the district court concluded that the actions commenced after the standstill period on February 28, 2019 because the Notices of Electronic Filing for the three complaints state that they were “entered” on that day. Supercell points to no authority, California or otherwise, that would require the Texas court to use a different ap- proach to determine whether GREE had commenced these suits before the end of the standstill. We also see no clear abuse in the court’s determination of when these actions were filed. Supercell argues that the district court was required to apply Pacific time. But, as the court correctly noted, the settlement agreement is si- lent as to what time zone should apply. In the absence of any such contractual provision, we cannot say that it was a clear abuse of discretion for the district court to make the first-to-file determination without regard to time zone dif- ferences. See Formaldehyde Institute, Inc. v. U.S. Con- sumer Prod. Safety Comm., 681 F.2d 255, 262 (5th Cir. 1982) (taking the same approach). We have been shown no California authority that would require the district court to depart from that approach. The California law and re- lated California case law that Supercell points to simply Case: 20-113 Document: 30 Page: 5 Filed: 03/17/2020
IN RE: SUPERCELL OY 5
suggest that “[t]he standard time within the state” is “Pa- cific standard time.” Cal. Gov’t Code § 6808(a) (emphasis added); Miracle Auto Ctr. v. Superior Court, 68 Cal. App. 4th 818, 820 (1998).
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Case: 20-113 Document: 30 Page: 1 Filed: 03/17/2020
NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit ______________________
In re: SUPERCELL OY, Petitioner ______________________
2020-113 ______________________
On Petition for Writ of Mandamus to the United States District Court for the Eastern District of Texas in Nos. 2:19-cv-00070-JRG-RSP, 2:19-cv-00071-JRG-RSP, and 2:19-cv-00072-JRG-RSP, Judge J. Rodney Gilstrap. ______________________
ON PETITION ______________________
Before MOORE, CHEN, and STOLL, Circuit Judges. PER CURIAM. ORDER Supercell Oy petitions for a writ of mandamus direct- ing the United States District Court for the Eastern Dis- trict of Texas to transfer these cases to the United States District Court for the Northern District of California. GREE, Inc. opposes the petition. Supercell replies. BACKGROUND In February 2019, Supercell and GREE entered into a settlement agreement resolving various patent litigations. Case: 20-113 Document: 30 Page: 2 Filed: 03/17/2020
2 IN RE: SUPERCELL OY
That agreement included a standstill provision under which each party agreed not to commence patent litigation until February 28, 2019. The agreement also contained a governing law and forum selection clause that provided that “all matters arising out of or relating to this Agree- ment, are governed by, and construed in accordance with, the laws of the State of California,” and “[t]he sole jurisdic- tion and venue for any action for breach of or to enforce this Agreement shall be the United States District Court for the Northern District of California.” 1 Shortly after midnight on February 28, 2019 central time, GREE submitted into the filing system of the Eastern District of Texas the three underlying complaints alleging that Supercell infringed its patents. Supercell then imme- diately sued GREE in the Northern District of California, alleging that GREE breached the settlement agreement by bringing the Texas actions and sought declaratory judg- ments of noninfringement and invalidity for the same pa- tents. Supercell moved for a temporary restraining order
1 The court notes that both parties have marked as con- fidential provisions of the settlement agreement and dis- cussions of those provisions that appear verbatim in the district court’s public opinion. See GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071-JRG-RSP, 2019 WL 5596504, at *1– *5 (E.D. Tex. Oct. 30, 2019). The court notes that even words such as “agreement” and “provision” standing alone have been marked confidential for no apparent reason. The court advises the parties that the improper use of confiden- tiality designations “ignores the requirements of public ac- cess, deprives the public of necessary information, and hampers this court’s consideration and opinion writing” and could result in sanctions. See In re Violation of Rule 28(d), 635 F.3d 1352, 1360 (Fed. Cir. 2011). Case: 20-113 Document: 30 Page: 3 Filed: 03/17/2020
IN RE: SUPERCELL OY 3
in California to prevent GREE from pursuing the Texas ac- tions. The California court denied the motion and stayed that action, noting that “principles of comity among federal courts and judicial efficiency weigh heavily in favor of re- solving all of the parties’ disputes in Texas.” Supercell OY v. GREE, Inc., No. 3:19-CV-01106, ECF No. 32 (N.D. Cal. May 31, 2019). Supercell then moved the Eastern District of Texas to transfer the Texas actions to the Northern District of Cali- fornia, arguing that GREE’s alleged breach of the settle- ment agreement should be remedied by transfer, or alternatively, that transfer is warranted under 28 U.S.C. § 1404(a). The district court rejected both arguments. Supercell now seeks a writ of mandamus to direct transfer to the Northern District of California. DISCUSSION A party seeking a writ bears the burden of proving that, among other things, it has a clear and indisputable legal right to the relief it seeks. See Cheney v. U.S. Dist. Court for the Dist. of Columbia, 542 U.S. 367, 380–81 (2004). This demanding standard is not satisfied here. Supercell first challenges the district court’s analysis of the first-to-file rule. That rule “generally favors pursuing only the first-filed action when multiple lawsuits involving the same claims are filed in different jurisdictions.” Merial Ltd. v. Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 2012) (ci- tation omitted). “Application of the first-to-file rule is gen- erally a matter for a district court’s discretion, exercised within governing legal constraints.” Futurewei Techs., Inc. v. Acacia Research Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (citation omitted). Supercell does not dispute that its suit was not actually filed first. Supercell instead argues that its California ac- tion was the only properly filed suit under the standstill provision. Supercell contends that the district court clearly Case: 20-113 Document: 30 Page: 4 Filed: 03/17/2020
4 IN RE: SUPERCELL OY
erred in (1) assessing when these suits were commenced under the standstill provision at the time GREE uploaded them into the system rather than when GREE logged into the system, and (2) not applying Pacific time to determine when the suit was actually filed. Upon correction of either district court error, Supercell contends, these suits were filed on February 27th, not the 28th, in violation of the par- ties’ standstill agreement. We, however, disagree with Supercell on both points. We see no clear error in the district court’s assessment of when these suits were commenced. Looking to its local rules, which provide that a “document filed electronically is deemed filed at the ‘entered on’ date and time stated on the Notice of Electronic Filing,” GREE, 2019 WL 5596504, at *4 (emphasis added) (quoting E.D. Tex. Local Rule CV- 5(a)(3)(B)), the district court concluded that the actions commenced after the standstill period on February 28, 2019 because the Notices of Electronic Filing for the three complaints state that they were “entered” on that day. Supercell points to no authority, California or otherwise, that would require the Texas court to use a different ap- proach to determine whether GREE had commenced these suits before the end of the standstill. We also see no clear abuse in the court’s determination of when these actions were filed. Supercell argues that the district court was required to apply Pacific time. But, as the court correctly noted, the settlement agreement is si- lent as to what time zone should apply. In the absence of any such contractual provision, we cannot say that it was a clear abuse of discretion for the district court to make the first-to-file determination without regard to time zone dif- ferences. See Formaldehyde Institute, Inc. v. U.S. Con- sumer Prod. Safety Comm., 681 F.2d 255, 262 (5th Cir. 1982) (taking the same approach). We have been shown no California authority that would require the district court to depart from that approach. The California law and re- lated California case law that Supercell points to simply Case: 20-113 Document: 30 Page: 5 Filed: 03/17/2020
IN RE: SUPERCELL OY 5
suggest that “[t]he standard time within the state” is “Pa- cific standard time.” Cal. Gov’t Code § 6808(a) (emphasis added); Miracle Auto Ctr. v. Superior Court, 68 Cal. App. 4th 818, 820 (1998). That is not a basis to conclude the district court clearly erred. Supercell next challenges whether the agreement’s fo- rum selection clause barred GREE’s patent infringement actions in Texas. The district court rejected this argument because the clause “applies only to actions for breach or en- forcement of the Settlement Agreement, not all disputes between the parties or even all disputes relating to the Set- tlement Agreement.” GREE, 2019 WL 5596504, at *6. We see no clear error in the district court’s assessment of the scope of the forum selection clause. Supercell argues that the district court “erred by failing to consider Supercell’s defenses when applying the Agreement’s forum selection clause.” But the only defense that Supercell points to merely says “GREE is barred or limited from recovering damages from Supercell, in whole or in part, under princi- ples of equity, including laches, waiver, estoppel and/or un- clean hands.” 2 That defense, expressly considered by the district court, does not mention, let alone directly impli- cate, the agreement. Separate from the settlement agreement, Supercell ar- gues that the usual transfer factors under section 1404(a) warrant transfer. Under applicable Fifth Circuit law, we review those determinations only to see if there was such a clear abuse of discretion that refusing transfer amounted
2 The court notes that Supercell added a breach of con- tract defense only after the district court denied its motion to transfer. See Answer to First Am. Compl. at 8, GREE, No. 2:19-cv-00071-JRG-RSP (Dec. 24, 2019), ECF No. 98. Even considering the amended answer, we cannot say that this case would fall within the limited scope of the parties’ forum selection clause. Case: 20-113 Document: 30 Page: 6 Filed: 03/17/2020
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to a patently erroneous result. See In re TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008). Supercell has not made such a showing. The district court reviewed all the factors on the record before it. The district court here reasonably concluded that trial in California would impose a similar degree of inconvenience given both parties were foreign corporations. The district court also considered and rejected the relevance of Supercell’s subsidiary employee and expert witness in California, and we are not prepared to say its conclusions were clearly incorrect. Finally, while Supercell reiterates its argument that transfer would allow one court to resolve all of these related actions, as the dis- trict court correctly explained here, “this argument has al- ready been repudiated by the California Court itself.” Accordingly, IT IS ORDERED THAT: (1) The petition is denied. (2) The motions to exceed the confidential word limit are denied as moot. FOR THE COURT
March 17, 2020 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court s35