Case: 13-141    Document: 51   Page: 1    Filed: 04/23/2013




          NOTE: This order is nonprecedential.

   United States Court of Appeals
       for the Federal Circuit
               __________________________

 IN RE BROADCOM CORPORATION, QUALCOMM
  INCORPORATED, AND QUALCOMM ATHEROS,
                   INC.,
                Petitioners.
               __________________________

               Miscellaneous Docket No. 141
               __________________________
    On Petition for Writ of Mandamus to the United
States District Court for the Eastern District of Texas in
No. 11-CV-0139, Chief Judge Leonard Davis.
               __________________________

                     ON PETITION
               __________________________

   Before PROST, MOORE, and O’MALLEY, Circuit Judges.
MOORE, Circuit Judge.
                        ORDER
    Broadcom Corporation, Qualcomm Incorporated, and
Qualcomm Atheros, Inc. (petitioners) seek a writ of man-
damus ordering the U.S. District Court for the Eastern
District of Texas to dismiss this case or, in the alterna-
tive, to transfer the case. See Mem. Op. and Order, Azure
Networks, LLC v. CSR PLC, 6:11-CV-00139 (E.D. Tex.
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2                                  IN RE BROADCOM CORP
Jun. 25, 2012), ECF No. 197 (Transfer Order). Because
the petitioners fail to show that the district court commit-
ted a clear abuse of discretion, we deny the petition.
                     BACKGROUND
    The central dispute in this case relates to the effect of
a choice of forum clause in an agreement. The parent
company of a prior owner of the patent-in-suit, U.S.
Patent No. 7,756,129, was a member of the Bluetooth®
Special Interest Group. The Bluetooth® Special Interest
group is an industry group that promulgated the Blue-
tooth® specification standard, and every defendant in this
action, including the petitioners, are members of the
group. As members of the group, the petitioners and the
parent of the prior owner of the ’129 patent executed a
License Agreement relating to patent claims necessary to
practice the Bluetooth® specification.        The License
Agreement contains a forum-selection clause, which
states that “all disputes arising in any way out of this
License shall be heard exclusively in . . . the state and
federal courts of New York.”
    The ’129 patent was ultimately assigned to the Tri-
County Excelsior Foundation (TCEF), which exclusively
licensed the patent to Azure Networks, LLC (Azure).
TCEF and Azure filed suit in the Eastern District of
Texas against the petitioners and a number of other
defendants, alleging infringement of the ’129 patent. The
petitioners moved to dismiss the case for improper venue
under 28 U.S.C. § 1406(a) or, alternatively, to transfer the
case to the Southern District of New York. The petition-
ers moved, in the alternative, to transfer the case to the
Northern District of California pursuant to 28 U.S.C.
§ 1404(a) because a number of defendants reside there.
    The court denied the petitioners’ motion to dismiss or
transfer the case to the Southern District of New York.
Transfer Order, at 4–8. As an initial matter, TCEF and
Azure argued before the district court that the License
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IN RE BROADCOM CORP                                      3
Agreement did not apply to them and, even if it did, that
the asserted claims of the ’129 patent fell outside the
scope of the Agreement. Id. at 6–7. The court did not
resolve those disputes, but denied the petitioners’ motions
“assuming, arguendo, that the clause is enforceable and
should be given full effect.” Id. at 6.
     The parties also disputed whether the forum-selection
clause required the court to proceed under § 1406(a),
which applies when venue is improper, or § 1404(a),
which applies when venue is proper but inconvenient.
The district court held that § 1404(a) governed the trans-
fer analysis because “the majority of the district courts in
the Fifth Circuit have found that forum selection clauses
are properly enforced under § 1404(a), rather than Feder-
al Rule of Civil Procedure 12(b)(3) or § 1406(a).” Transfer
Order, at 4 (collecting cases). The court determined that,
despite the forum-selection clause, the petitioners failed
to show that the Southern District of New York was a
clearly more convenient forum for the parties and wit-
nesses. Id. at 6–8. The court found that the case “had
little connection to New York” and that the petitioners
“made little, if any, attempt to show that New York is
more convenient, despite their burden to do so.” Id. at 7–
8.
    The district court also denied the petitioners’ alterna-
tive motion to transfer the case to the Northern District of
California under § 1404(a). After considering the Fifth
Circuit’s transfer factors, the court concluded that only
the location of the proof possessed by each party weighed
in favor of transfer because “the majority of witnesses and
documents are located in the Northern District of Califor-
nia.” Transfer Order, at 12. The court held, however,
that this factor only slightly supported transfer because
“significant sources of proof” were located in or closer to
the Eastern District of Texas. Id. The court found that
the other factors either weighed against transfer or were
neutral because of the number of parties and witnesses
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4                                  IN RE BROADCOM CORP
located in or near the Eastern District Texas and the
“widespread and de-centralized distribution” of a number
of non-party witnesses. Id. at 12–16.
    The petitioners challenge the district court’s order
and seek a writ of mandamus ordering the court to trans-
fer the case to the Southern District of New York or the
Northern District of California. We have the power to
issue such a writ under the All Writs Acts, 28 U.S.C. §
1651(a). 1
                      DISCUSSION
    The writ of mandamus is available in extraordinary
situations to correct a clear abuse of discretion or usurpa-
tion of judicial power. In re Calmar, Inc., 854 F.2d 461,
464 (Fed. Cir. 1998). A party seeking a writ bears the
burden of proving that it has no other means of obtaining
the relief desired, Mallard v. U.S. Dist. Court for S. Dist.
of Iowa, 490 U.S. 296, 309 (1989), and that the right to
issuance of the writ is “clear and indisputable,” Allied
Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 35 (1980).
Because this petition does not involve substantive issues
of patent law, we apply the law of the regional circuit in
which the district court sits, here the Fifth Circuit. In re
TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).
                             I.
    The petitioners argue that the district court clearly
abused its discretion by considering the forum-selection
clause as part of a § 1404(a) analysis rather than ordering
transfer or dismissal under § 1406(a). They argue that
the Fifth Circuit held in International Software Systems,
Inc. v. Amplicon, Inc. that a forum-selection clause is
enforceable under §1406(a) and governs unless the resist-


    1  After the petition was briefed, the district court
dismissed TCEF for lack of standing to sue for infringe-
ment of the ’129 patent.
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IN RE BROADCOM CORP                                     5
ing party shows that enforcement of the clause would be
unreasonable under the circumstances. See 77 F.3d 112,
114–15 (5th Cir. 1996). Thus, the petitioners argue that
the district court erred in analyzing the forum-selection
clause under § 1404(a) and placing the burden on them to
demonstrate that transfer was warranted.
    Based on the legal landscape at the time of the peti-
tion, we would have been inclined to agree with the
petitioners. However, shortly after the petition was filed,
the Fifth Circuit expressly held that “when a forum-
selection clause designates a specific federal forum,” a
motion to transfer under § 1404(a) “is the proper proce-
dural mechanism for enforcing the clause.” In re Atl.
Marine Constr. Co., 701 F.3d 736, 739 (5th Cir. 2012),
cert. granted, --- S. Ct. ---, 2013 WL 1285318 (Apr. 1,
2013). In addition, the Fifth Circuit held that a district
court may place the burden on the moving party—not the
resisting party—to demonstrate that transfer to the
contracted forum is warranted. Id. at 741–42.
    The petitioners argue that Atlantic Marine and Am-
plicon conflict and that Amplicon thus governs under the
prior-panel rule. We disagree. Atlantic Marine distin-
guished Amplicon on the basis that Amplicon involved a
forum-selection clause that exclusively designated a state
court forum, while the forum-selection clause at issue in
Atlantic Marine designated a federal forum. 701 F.3d at
741. Atlantic Marine explained that, when a forum-
selection clause exclusively designates a state court
forum, § 1406(a) is the mechanism to enforce the clause
because a federal district court is “without power to
transfer.” 701 F.3d at 741. By contrast, the court held
that § 1404(a) applies when a forum-selection clause
designates an alternate federal forum. Id. at 739–41. We
are bound to apply Fifth Circuit precedent to this case.
Therefore, we conclude, consistent with Atlantic Marine,
that the district court did not abuse its discretion by
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6                                  IN RE BROADCOM CORP
analyzing the forum-selection clause under § 1404(a)
rather than § 1406(a).
     Atlantic Marine recognizes, however, that its holding
comports with only “a minority of the federal appellate
courts.” 701 F.3d at 739. The majority of the courts of
appeals “give effect to a forum-selection clause through a
motion to dismiss filed pursuant to Rule 12(b)(3) and
§ 1406.” Id. at 746–47 (Haynes, J., specially concurring)
(collecting cases). The Fifth Circuit, however, does not.
We note that the Supreme Court recently granted certio-
rari in Atlantic Marine. 2013 WL 1285318, at *1. While
the Supreme Court may overrule Atlantic Marine and
endorse the majority rule, we are bound by Fifth Circuit
law as it presently exists.
                            II.
     The petitioners argue that, under a § 1404(a) analy-
sis, the district court committed a clear abuse of discre-
tion when it declined to transfer the case to the Southern
District of New York. They assert that the district court
erred by giving any weight to TCEF and its witnesses
because TCEF was allegedly created to secure venue in
the Eastern District of Texas. They further contend that
the district court should have found that the forum-
selection clause was controlling and that it mandated
transfer to the Southern District of New York.
    Azure and TCEF argue that the district court proper-
ly weighed the § 1404(a) factors to conclude that the
Southern District of New York is not clearly more conven-
ient than the Eastern District of Texas. They contend
that the court correctly determined that none of the
parties has any connection to New York. They point out
that the petitioners argue that the case’s “center of gravi-
ty” is in California. Lastly, Azure and TCEF argue that
they have meaningful connections to the Eastern District
of Texas because TCEF’s benefits from the ’129 patent
flow to a well-established Eastern District-based charity.
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IN RE BROADCOM CORP                                       7
    We conclude that the petitioners are not entitled to a
writ of mandamus ordering transfer to the Southern
District of New York. A forum-selection clause “should
receive neither dispositive consideration . . . nor no con-
sideration . . . but rather the consideration for which
Congress provided in § 1404(a).” Stewart Org., Inc. v.
Ricoh Corp., 487 U.S. 22, 31 (1988). The Fifth Circuit has
held that, in the context of a § 1404(a) motion, the district
court may place the burden on the movant to demonstrate
that the contractually-chosen forum is clearly more con-
venient than the plaintiff’s chosen forum. Atl. Marine,
701 F.3d at 741–42.
    The district court was within its discretion to conclude
that the petitioners failed to meet their burden to show
that the Southern District of New York is a clearly more
convenient forum. The court found that “none of the
parties” was located in New York and that the parties had
not identified “any relevant documents or witnesses
located in New York.” Transfer Order, at 7–8. Indeed,
three of the nine defendants—who are also parties to the
License Agreement—did not join in the motion to transfer
to the Southern District of New York. Id. at 8. Given the
complete lack of connection to New York, the district court
did not commit a clear abuse of discretion when it denied
the petitioners’ motion to transfer—a contrary holding
would have given the forum-selection clause dispositive
weight.
                            III.
    Lastly, the petitioners argue that the district court
committed a clear abuse of its discretion when it declined
to transfer this case to the Northern District of California
under § 1404(a). They contend that this case’s “center of
gravity” is in California because five defendants are
located there, three of whom are located in the Northern
District. They contend that, because of the forum-
selection clause, the district court should have disregard-
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8                                 IN RE BROADCOM CORP
ed Azure’s and TCEF’s location in the Eastern District of
Texas. They assert that the Northern District of Califor-
nia also has a strong public interest in the case because
the action calls into question the work and reputation of
employees that work in that district.
     Azure and TCEF respond that the Northern District
of California is not clearly more convenient than the
Eastern District of Texas. They again argue that TCEF
has a legitimate connection to the Eastern District be-
cause the purpose of TCEF is to support a local charity.
They contend that the case’s “center of gravity” is not in
the Northern District of California because: (1) the ’129
patent was prosecuted from the Eastern District of Texas;
(2) defendant Texas Instruments is located in Texas, near
the Eastern District; and (3) a number of third party
witnesses reside in the Eastern District of Texas or closer
to it than the Northern District of California.
    The issuance of a writ of mandamus is appropriate to
correct a decision “so patently erroneous as to amount to a
clear abuse of discretion.” In re Vistaprint Ltd., 628 F.3d
1342, 1344 (Fed. Cir. 2010) (citing In re Volkswagen of
Am., Inc., 545 F.3d 304, 310 (5th Cir. 2008) (en banc)).
We cannot say that the district court so erred here, even
assuming that the forum-selection clause applies. 2 The
district court found that, although a number of defend-
ants reside in or near the Northern District of California,
a number of party and non-party witnesses reside in the
Eastern District of Texas or closer to it than the Northern

    2   We note that Azure and TCEF argued below that
the forum selection clause was not relevant to this dispute
because the License Agreement does not apply to them or
this patent infringement case. It is unnecessary for us to
reach this issue because even with the benefit of the
forum-selection clause the petitioners have failed to meet
their burden.
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IN RE BROADCOM CORP                                      9
District of California. Transfer Order, at 12–16. In
addition, the court found that a number of defendants do
not reside in California and defendant Texas Instruments
is located in Texas and stores its documents in the East-
ern District. Id. at 10. The petitioners do not contest
these factual findings. Moreover, the petitioners have
asserted an unclean hands defense associated with the
transfer of interests in the ’129 patent from Azure to
TCEF and back to Azure. That defense is based upon acts
allegedly committed by Eastern District of Texas resi-
dents in that district, implicating witnesses and evidence
located in that district. In light of these facts, we cannot
say that the district court committed a clear abuse of
discretion when it declined to transfer the case to the
Northern District of California.
                       CONCLUSION
     For the reasons stated above, the petitioners have
failed to demonstrate that a writ of mandamus should
issue.
      Accordingly,
      IT IS ORDERED THAT:
      The petition for a writ of mandamus is denied.




                                    FOR THE COURT


                                    /s/ Jan Horbaly
                                    Jan Horbaly
                                    Clerk

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