Digest of In re Google Inc., No. 2014-147 (Fed. Cir. Oct. 9, 2014) (non-precedential). On petition for Writ of Mandamus from E.D. Tex. Before Hughes, Wallach, and O’Malley.

Procedural Posture: Google, the software supplier to five electronics companies that were each accused of patent infringement in the Eastern District of Texas by Plaintiff Rockstar, filed a declaratory judgment action in the Northern District of California against Rockstar seeking a judgment that its software did not infringe the patents asserted by Rockstar in the Texas action. Rockstar counterclaimed seeking a judgment that Google’s software infringed those patents, to which Google answered by alleging that the asserted patents were invalid. Shortly thereafter, Rockstar amended its Texas complaint to include Google as a defendant and sought to transfer the California action to Texas. The California court denied the motion to transfer, and the Texas defendants and Google subsequently moved to stay or transfer the Texas action to California. The Texas court denied both motions, and the Texas defendants and Google filed a petition for a Writ of Mandamus directing the district court to stay the Texas action or transfer it to California. The CAFC granted the petition with respect to the stay and ordered the Eastern District of Texas to stay the proceedings pending the outcome of the California declaratory judgment action.

  • Stay: It is in the interest of comity to avoid duplicative litigations, particularly where the issues presented in five cases in one district may be resolved by a single case in a second district. Plaintiff’s argument that the single case would not resolve the other five cases because each manufacturer defendant was able to modify the supplier’s software code was undercut by significant overlap in the infringement contentions that the plaintiff provided to each defendant. In addition, the decision to proceed with the California case while staying the Texas case was influenced by the fact that California was a more convenient venue than Texas because the underlying software was designed and created there. In addition, plaintiff’s operations were based in Canada and the only potential witnesses in Texas were counsel for plaintiff. The mere fact that the Texas case was filed first, even though it did not initially name the California declaratory judgment plaintiff as a defendant, was not dispositive.