NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE JOEL B. ROTHMAN AND SCHNEIDER 

ROTHMAN INTELLECTUAL PROPERTY LAW 

GROUP PPLLC

______________________ 

2014-110

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Eastern District of Texas in 

No. 13-mc-00037, Chief Judge Leonard Davis.

______________________ 

ON PETITION

______________________ 

Before NEWMAN, MOORE, and CHEN, Circuit Judges. 

MOORE, Circuit Judge. 

O R D E R

Currently pending in the United States District Court 

for the Eastern District of Texas are two consolidated 

patent infringement suits filed by VirnetX, Inc. against 

Apple, Inc., Nos. 12-cv-00855 (lead) and 11-cv-00563. 

Petitioners Joel Rothman and Schneider Rothman Intellectual Property Law Group PPLLC (collectively “RothCase: 14-110 Document: 18 Page: 1 Filed: 03/19/2014
2 IN RE ROTHMAN

man”) are not parties to those suits. Rather, VirnetX 

obtained subpoenas for Florida-based Rothman in the 

United States District Court for the Southern District of 

Florida. VirnetX’s subpoenas sought discovery regarding 

inter partes review petitions asserting invalidity of some 

of VirnetX’s patents-in-suit, which were filed by New Bay 

Capital, LLC, an entity associated with Rothman. Rothman moved to quash the subpoenas. In response, VirnetX 

moved to transfer the motion to quash to the United 

States District Court for the Eastern District of Texas, 

which Rothman opposed. The Florida court granted 

VirnetX’s motion, ordering the matter transferred to Chief 

Judge Davis, before whom the underlying cases between 

VirnetX and Apple are pending in Texas. Rothman now 

seeks mandamus relief from this court in the form of an 

order directing the Texas court to transfer the motion to 

quash back to the Florida court.

 Mandamus is available only in extraordinary situations, to correct a clear abuse of discretion or usurpation 

of judicial power. In re Calmar, Inc., 854 F.2d 461, 464 

(Fed. Cir. 1988). A party seeking a writ bears the burden 

of proving that it has no other means of attaining the 

relief desired, Mallard v. U.S. District Court, 490 U.S. 

296, 309, (1989), and that the right to issuance of the writ 

is “clear and indisputable,” Allied Chemical Corp. v. 

Daiflon, Inc., 449 U.S. 33, 35 (1980). 

The Eastern District of Texas has taken no action on 

the transferred motion to quash. As such, there is no 

ruling by that court for this court to review on mandamus. 

Rothman objects to asking the Texas court to retransfer 

the motion to quash on the ground that doing so might 

waive his objections to personal jurisdiction. But Rothman may make a limited appearance in the Eastern 

District of Texas to request retransfer without risking 

waiver on this basis, so long as his conduct “reflect[s] a 

continuing objection” to the Eastern District of Texas’s 

Case: 14-110 Document: 18 Page: 2 Filed: 03/19/2014
 IN RE ROTHMAN 3

jurisdiction. See PaineWebber Inc. v. Chase Manhattan 

Private Bank (Switz.), 260 F.3d 453, 460 (5th Cir. 2001) 

(quoting Alger v. Hayes, 452 F.2d 841, 844 (8th Cir. 

1972)). 

Accordingly,

 IT IS ORDERED THAT: 

The petition is denied without prejudice. 

 FOR THE COURT

 /s/ Daniel E. O’Toole 

 Daniel E. O’Toole

 Clerk of Court

s23

Case: 14-110 Document: 18 Page: 3 Filed: 03/19/2014