In Re ZTE CORPORATION
22-122
| Fed. Cir. | May 5, 2022Background
- WSOU sued ZTE and subsidiaries (ZTA, ZTX) for patent infringement in W.D. Tex., June 2020.
- ZTE moved to dismiss or transfer venue (28 U.S.C. § 1406(a)) and alternatively to transfer for convenience (§ 1404(a)); parts of a later transfer motion were struck as untimely.
- On August 6, 2021 the district court dismissed ZTA and ZTX for improper venue; ZTE sought reconsideration and a transfer or dismissal for judicial economy, which was denied.
- ZTA filed a declaratory judgment action in N.D. Tex. on September 7, 2021; W.D. Tex. solicited supplemental briefing focused on § 1404(a) and judicial economy.
- W.D. Tex. denied transfer to N.D. Tex. on January 3, 2022, citing substantial litigation progress in W.D. Tex. and limited substantive activity in N.D. Tex.; ZTE petitioned for a writ of mandamus to the Federal Circuit.
- The Federal Circuit denied the mandamus petition on May 5, 2022.
Issues
| Issue | Plaintiff's (WSOU) Argument | Defendant's (ZTE) Argument | Held |
|---|---|---|---|
| Whether mandamus is warranted to compel transfer | Mandamus unnecessary; uphold district court | Mandamus should direct transfer to N.D. Tex. for consolidation and efficiency | Denied — ZTE failed to satisfy mandamus standards (no clear, indisputable right) |
| Whether ZTE preserved and raised § 1404(a) convenience factors | WSOU argued district court correctly considered preservation | ZTE argued court should weigh sources of proof, witnesses, local interest in favor of transfer | Denied — ZTE waived those arguments by not properly developing them in supplemental briefing; a one‑line footnote insufficient |
| Whether judicial economy justified departure from first‑to‑file rule | WSOU urged applying first‑to‑file and keeping the case in W.D. Tex. | ZTE argued judicial economy and parallel N.D. Tex. DJ warrant transfer | Denied — district court reasonably applied first‑to‑file; progress in W.D. Tex. made departure unwarranted |
| Whether district court should have stayed proceedings earlier | WSOU implicit that no such stay was required | ZTE argued an earlier stay would have prevented W.D. Tex. from progressing and preserved transfer prospects | Denied — no clear legal right to an earlier stay shown; mandamus inappropriate |
Key Cases Cited
- Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004) (mandamus standard and requirements)
- Merial Ltd. v. Cipla Ltd., 681 F.3d 1283 (Fed. Cir. 2012) (first‑to‑file rule generally favors the first‑filed action)
- W. Gulf Mar. Ass’n v. ILA Deep Sea Loc. 24, 751 F.2d 721 (5th Cir. 1985) (discussion of first‑to‑file / forum‑selection principles)
- Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288 (Fed. Cir. 2009) (arguments not raised below may be deemed waived)
- Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341 (Fed. Cir. 2005) (departure from first‑to‑file may be justified by judicial economy)
- In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020) (courts should not penalize parties for case progress that occurred while a transfer motion was pending; distinguishable on facts)
- SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312 (Fed. Cir. 2006) (briefing must develop arguments; footnotes insufficient)
- Graphic Controls Corp. v. Utah Med. Prods., Inc., 149 F.3d 1382 (Fed. Cir. 1998) (arguments preserved by full briefing, not by cursory footnote)