N OTE : This o rder is non precedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE JOEL B. ROTHMA N AND SCHNEIDER ROTHMAN INTELLECTUAL PROPERTY LAW GROUP PPLLC

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2014

- 110

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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 Leonar d Davis.

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ON PETITION

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Before N EWMAN , M OORE , and C HEN , Circuit Judges

. M OORE , Circuit Judge

.

O R D E R

Currently pending in the United States District Court for the E astern District of Texas are two consolidated patent infringement suit s filed by VirnetX, Inc. against Apple, Inc. , Nos. 12

- cv

- 00855 (lead) and 11

- cv

- 00563. Petitioners Joel Rothman and Schneider Rothman Inte llectual Property Law Group PPLLC (collectively “Rot hCase: 14-110 Document: 18 Page: 1 Filed: 03/19/2014IN RE ROTHMAN 2

man”) are not parti es 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. Rot hman moved to quash the subpoena s . 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 situ ations

, to correct a clear abuse of discreti on 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 , t here is no rul ing by th at court for this court to review on mandamus

. Rothman objects to asking the Texas court to re transfer the motion to quash on the ground that doing so might

w aive his objections to personal jurisdiction. But Rot hman 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: 03/19/2014IN RE ROTHMAN 3

jurisdiction. See Paine W ebber 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,

I T I S O RDERED T HAT :

The petition is denied without prejudice

.

F OR THE C OURT

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

s23 Case: 14-110 Document: 18 Page: 3 Filed: 03/19/2014