Case: 14-124   Document: 15     Page: 1    Filed: 05/29/2014




          NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

               IN RE ATOPTECH, INC.

                 ______________________

                        2014-124
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the Northern District of Califor-
nia in No. 3:13-cv-02965-MMC, Judge Maxine M.
Chesney.
                 ______________________

                     ON PETITION
                 ______________________

 Before RADER, Chief Judge, NEWMAN and HUGHES, Circuit
                        Judges.
NEWMAN, Circuit Judge.
                       ORDER
    ATopTech, Inc. seeks a writ of mandamus to direct
the United States District Court for the Northern District
of California to vacate its order granting plaintiff Synop-
sys, Inc.’s motion to disqualify ATopTech’s law firm,
O’Melveny and Myers LLP (OMM). Synopsys opposes.
ATopTech replies. ATopTech also moves to stay district
court proceedings. Synopsys opposes.
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2                                      IN RE ATOPTECH, INC.




    The petition arises out of a suit brought by Synopsys
alleging, among other things, that ATopTech infringes
Synopsys’s patents related to electronic design automa-
tion (EDA). EDA software simplifies the design process
by mapping the layout of a chip with cells (placement),
connecting those cells (routing), and testing the chip.
    The primary issue related to this petition is ATop-
Tech’s alleged infringement of U.S. Patent No. 6,507,941
(“the ’941 patent”). The ’941 patent relates to methods for
placement and routing. The ’941 patent was originally
issued to Magma Design Automation, Inc. (Magma) in
2003 and was acquired by Synopsys when Magma merged
with Synopsys effective February 2012. Magma’s major
EDA product was known as Blast, and Synopsys contin-
ues to sell the product under the name Talus. OMM
represented Magma in the merger. OMM began to repre-
sent the alleged infringer, ATopTech, in the present suit
in 2013.
    Previously in 2004, OMM had also represented Mag-
ma when it was sued by Synopsys in the United States
District Court for the Northern District of California.
Synopsys alleged that Magma’s Blast product infringed
three EDA patents issued to Magma but which Synopsys
alleged it owned. Two of those patents featured claims
directed to routing.
    OMM also represented Magma when Magma was
sued by Synopsys in the United States District Court for
the District of Delaware in 2005. The suit involved claims
that Magma’s products infringed three of Synopsys’s
patents. Magma counterclaimed to assert five of its own
EDA patents against Synopsys, but Magma did not assert
the ’941 patent.
    In the instant case, Synopsys alleges that ATopTech
infringes the ’941 patent, U.S. Patent No. 6,237,127, and
copyrights. Based on OMM’s prior representation of
Magma at a time when Magma owned the ’941 patent and
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IN RE ATOPTECH, INC.                                     3



when Magma’s products and other related patents were in
litigation, Synopsys moved to disqualify OMM as counsel
for ATopTech. Synopsys noted, inter alia, the relatedness
of the previous representations of Magma in EDA in-
fringement cases. Two of the OMM attorneys who en-
tered appearances in the present action had also
previously represented Magma. At that point, OMM
announced it created a “screen” to prevent disclosure of
confidential information and asserted that its attorneys
had not shared any confidential information. After a
hearing, the district court granted the motion to disquali-
fy OMM. ATopTech petitions this court for a writ of
mandamus to overturn that ruling.
    “The remedy of mandamus is a drastic one, to be in-
voked only in extraordinary situations.” Kerr v. U.S. Dist.
Court, 426 U.S. 394, 402 (1976). Accordingly, “three
conditions must be satisfied before it may issue.” Cheney
v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The peti-
tioner must show a “‘clear and indisputable’” right to
relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The
petitioner must “lack adequate alternative means to
obtain the relief” it seeks. Mallard v. U.S. Dist. Court,
490 U.S. 296, 309 (1989); see Cheney, 542 U.S. at 380;
Kerr, 426 U.S. at 403. And “even if the first two prerequi-
sites have been met, the issuing court, in the exercise of
its discretion, must be satisfied that the writ is appropri-
ate under the circumstances.” Cheney, 542 U.S. at 381.
    The United States Court of Appeals for the Ninth Cir-
cuit, whose law we apply here, has made clear that “the
district court has the prime responsibility for controlling
the conduct of lawyers practicing before it, and that an
order disqualifying counsel will not be disturbed if the
record reveals ‘any sound’ basis for the district court’s
action.” In re Coordinated Pretrial Proceedings in Petro-
leum Products Antitrust Litigation, 658 F.2d 1355, 1358
(9th Cir. 1981) (citing Gas-A-Tron of Arizona v. Union Oil
Co. of California, 534 F.2d 1322, 1325 (9th Cir. 1976)).
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4                                        IN RE ATOPTECH, INC.




    The district court stated that if a substantial relation-
ship was shown between the current and former represen-
tations, a conclusive presumption arises that confidential
material information was transmitted to the attorneys.
ATopTech does not disagree with this statement of Ninth
Circuit law, but instead disputes that Synopsys made a
showing of a substantial relationship. The district court
found that Synopsys met this heavy burden because it
made “a sufficient showing that the ’941 patent was
discussed or the probability of it having been discussed.”
The district court also found that there was “a relevant
overlap in the products that were at issue in the former
case and now will be at issue again,” and stated that
because of “the long relationship that [OMM] had with
Magma and the thoroughness . . . of [OMM’s] work, in
general,” disqualification of OMM was appropriate. We
determine that the district court had a sound basis for
disqualifying OMM. Therefore, mandamus relief is not
warranted.
      Accordingly,
      IT IS ORDERED THAT:
      (1) The petition for a writ of mandamus is denied.
      (2) The motion for a stay is denied.
                                     FOR THE COURT

                                      /s/ Daniel E. O’Toole
                                        Daniel E. O’Toole
                                       Clerk of Court


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