Filed: Dec. 17, 2020
Latest Update: Dec. 18, 2020
Case: 21-103 Document: 20 Page: 1 Filed: 12/17/2020
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: CINEMARK HOLDINGS, INC., AMC
ENTERTAINMENT HOLDINGS, INC., REGAL
ENTERTAINMENT GROUP,
Petitioners
______________________
2021-103
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in Nos.
2:19-cv-00265-JRG, 2:19-cv-00266-JRG, and 2:19-cv-
00267-JRG, Chief Judge J. Rodney Gilstrap.
______________________
ON PETITION AND MOTION
______________________
Before PROST, Chief Judge, LOURIE and CHEN, Circuit
Judges.
LOURIE, Circuit Judge.
ORDER
Cinemark Holdings, Inc., AMC Entertainment Hold-
ings, Inc., and Regal Entertainment Group petition for a
writ of mandamus directing the United States District
Court for the Eastern District of Texas to transfer the un-
derlying consolidated cases to the United States District
Court for the Northern District of California. Intertrust
Case: 21-103 Document: 20 Page: 2 Filed: 12/17/2020
2 IN RE: CINEMARK HOLDINGS, INC.
Technologies Corporation opposes and moves for leave to
file a sur-reply brief, which petitioners oppose. Petitioners
and Intertrust move unopposed to exceed the confidential
word limits of Federal Circuit Rule 25.1(d)(1). 1
I.
These cases concern technology used in the movie in-
dustry to securely distribute digital content. Like the par-
ties, the court will refer to this technology as “DCI-
compliant” technology, named after the company, Digital
Cinema Initiatives, LLC, formed by the major motion pic-
ture studios to develop such industry-wide standards.
Dolby Laboratories, Inc. is one producer of DCI-compliant
components, including, as most relevant here, components
referred to as image media blocks (“IMBs”).
Petitioners here, Cinemark, AMC, and Regal, operate
movie theatres and incorporate IMBs from Dolby as well as
other producers into DCI-compliant equipment suites.
They are headquartered in Plano, Texas; Leawood, Kan-
sas; and Knoxville, Tennessee; respectively. Intertrust
brought these suits (which have been consolidated for pre-
trial proceedings) in the Eastern District of Texas, alleging
that petitioners directly infringed method and apparatus
claims of eleven of Intertrust’s patents through petitioners’
use of these equipment suites.
Intertrust filed these suits against petitioners in Au-
gust 2019. A few months earlier, Intertrust was sued in
the Northern District of California by Dolby, seeking a
1 The court notes that the parties’ motions to waive
the confidentiality requirements were premised on the fact
that the district court’s order denying transfer and the un-
derlying transcript were filed under seal. Those documents
have since been unsealed. See Intertrust Techs. Corp. v.
Cinemark Holdings, Inc., No. 2:19-cv-00266-JRG, ECF
Nos. 157, 167 (E.D. Tex. 2020).
Case: 21-103 Document: 20 Page: 3 Filed: 12/17/2020
IN RE: CINEMARK HOLDINGS, INC. 3
declaratory judgment that its sale of IMBs to petitioners
and other customers did not directly or indirectly infringe
the same patents asserted in the underlying actions
against petitioners. Intertrust counterclaimed for direct
and contributory infringement. Although petitioners are
not parties to the California lawsuit, they jointly moved the
Texas court to transfer these actions to the Northern Dis-
trict of California, arguing primarily that transfer was
warranted under the first-to-file rule.
The district court denied the motion on September 30,
2020. The court recognized that the first-filed action is gen-
erally given preference when identical or highly related
suits are filed in separate courts but held that such prefer-
ence did not warrant transfer because “there is not an iden-
tity of parties or infringement allegations” and that
petitioners’ “alleged infringement does not completely co-
incide with that of Dolby and the resolution of the Dolby
Action will not moot the issues presented here.” Intertrust
Techs. Corp. v. Cinemark Holdings, Inc., No. 2:19-cv-
00266-JRG, slip op. at 17 (E.D. Tex. Sept. 30, 2020). The
court further found that petitioners had not shown that the
Northern District of California was a clearly more conven-
ient forum based on the traditional factors bearing on a 28
U.S.C. § 1404(a) analysis. Petitioners now seek mandamus
review of that ruling.
II.
The basics for obtaining transfer under either the first-
to-file rule or § 1404(a) are generally straightforward. Un-
der the first-to-file rule, where there is complete or nearly
complete overlap between two cases, the usual rule is for
the court of first jurisdiction to resolve the issues. See
Merial Ltd. v Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir.
2012); West Gulf Mar. Ass’n v. ILA Deep Sea Local 24,
751
F.2d 721, 730 (5th Cir. 1985). Under § 1404(a), the movant
must “clearly demonstrate that a transfer is ‘[f]or the con-
venience of parties and witnesses, [and] in the interest of
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4 IN RE: CINEMARK HOLDINGS, INC.
justice.’” In re Volkswagen of Am., Inc.,
545 F.3d 304 (5th
Cir. 2008) (en banc) (quoting § 1404(a)). A district court
generally has considerable discretion in deciding whether
to transfer under either rule, and we review its decision on
mandamus only for a clear abuse of discretion. See In re
TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008).
We cannot say petitioners have shown that the district
court’s first-to-file rule determination amounted to a clear
abuse of discretion. Whereas the California action focuses
on Dolby’s IMBs, these suits focus on petitioners’ use of
equipment suites, some of which use IMBs made by pro-
ducers other than Dolby. Intertrust contends, moreover,
that other components used in petitioners’ equipment
suites aside from IMBs can independently meet most of the
same limitations for the claims asserted here. For these
reasons, the issues of infringement are not clearly common
between the cases and resolution of the California action
would not necessarily resolve the Texas cases. 2 Thus, the
district court here had at least a plausible basis to conclude
that transfer of these cases would not likely reduce piece-
meal resolution and minimize the possibility of embarrass-
ing inconsistent results that the first-to-file rule was
designed to prevent.
Apart from the first-to-file rule, petitioners also chal-
lenge the district court’s analysis of the § 1404(a) conven-
ience factors. Under applicable Fifth Circuit law, we
review those determinations only to see if the district
2 For these reasons alone, among others, we must
also reject any suggestion that the district court erred in
applying the principles underlying the so-called customer-
suit exception. See Kahn v. Gen. Motors Corp., 889 F.2d
1078, 1081 (Fed. Cir. 1989) (declining to apply the excep-
tion where there was no evidence that the later filed action
“would resolve all charges against the customers in the
stayed suit, including liability for damages”).
Case: 21-103 Document: 20 Page: 5 Filed: 12/17/2020
IN RE: CINEMARK HOLDINGS, INC. 5
court’s refusal to transfer amounted to a patently errone-
ous result. See TS
Tech, 551 F.3d at 1319. We cannot say
that such result occurred here. The district court consid-
ered all the relevant factors based on the record before it.
It noted that Intertrust’s chosen forum, located in the dis-
trict in which Cinemark is headquartered and much closer
to the headquarters of the other petitioners, would be con-
venient for certain relevant documents and physical evi-
dence as well as witnesses of petitioners and at least one
third-party witness from Dolby who has personal
knowledge of the development of the DCI standard. Under
similar circumstances, where no defendant is headquar-
tered in the proposed transferee venue, this court has not
previously granted mandamus, and we see no reason to
grant such extraordinary relief here.
Accordingly,
IT IS ORDERED THAT:
(1) Intertrust’s motion to file a sur-reply brief is
granted. ECF No. 15-2 is accepted for filing.
(2) The petition for a writ of mandamus is denied.
(3) The motions to exceed the confidential word limits
(ECF Nos. 4 and 10) are denied as moot.
FOR THE COURT
December 17, 2020 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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