NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________

In re: CINEMARK HOLDINGS, INC., AMC 

ENTERTAINMENT HOLDINGS, INC., REGAL 

ENTERTAINMENT GROUP,

Petitioners

______________________

2021-103

______________________

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in Nos. 

2:19-cv-00265-JRG, 2:19-cv-00266-JRG, and 2:19-cv00267-JRG, Chief Judge J. Rodney Gilstrap.

______________________

ON PETITION AND MOTION

______________________

Before PROST, Chief Judge, LOURIE and CHEN, Circuit 

Judges.

LOURIE, Circuit Judge.

O R D E R

Cinemark Holdings, Inc., AMC Entertainment Holdings, Inc., and Regal Entertainment Group petition for a 

writ of mandamus directing the United States District 

Court for the Eastern District of Texas to transfer the underlying consolidated cases to the United States District 

Court for the Northern District of California. Intertrust 

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2 IN RE: CINEMARK HOLDINGS, INC.

Technologies Corporation opposes and moves for leave to 

file a sur-reply brief, which petitioners oppose. Petitioners

and Intertrust move unopposed to exceed the confidential 

word limits of Federal Circuit Rule 25.1(d)(1).1

I.

These cases concern technology used in the movie industry to securely distribute digital content. Like the parties, the court will refer to this technology as “DCIcompliant” technology, named after the company, Digital 

Cinema Initiatives, LLC, formed by the major motion picture studios to develop such industry-wide standards. 

Dolby Laboratories, Inc. is one producer of DCI-compliant 

components, including, as most relevant here, components 

referred to as image media blocks (“IMBs”). 

Petitioners here, Cinemark, AMC, and Regal, operate 

movie theatres and incorporate IMBs from Dolby as well as 

other producers into DCI-compliant equipment suites. 

They are headquartered in Plano, Texas; Leawood, Kansas; and Knoxville, Tennessee; respectively. Intertrust 

brought these suits (which have been consolidated for pretrial proceedings) in the Eastern District of Texas, alleging 

that petitioners directly infringed method and apparatus 

claims of eleven of Intertrust’s patents through petitioners’

use of these equipment suites.

Intertrust filed these suits against petitioners in August 2019. A few months earlier, Intertrust was sued in 

the Northern District of California by Dolby, seeking a 

 

1 The court notes that the parties’ motions to waive 

the confidentiality requirements were premised on the fact 

that the district court’s order denying transfer and the underlying transcript were filed under seal. Those documents 

have since been unsealed. See Intertrust Techs. Corp. v. 

Cinemark Holdings, Inc., No. 2:19-cv-00266-JRG, ECF 

Nos. 157, 167 (E.D. Tex. 2020).

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IN RE: CINEMARK HOLDINGS, INC. 3

declaratory judgment that its sale of IMBs to petitioners 

and other customers did not directly or indirectly infringe 

the same patents asserted in the underlying actions 

against petitioners. Intertrust counterclaimed for direct 

and contributory infringement. Although petitioners are 

not parties to the California lawsuit, they jointly moved the 

Texas court to transfer these actions to the Northern District of California, arguing primarily that transfer was 

warranted under the first-to-file rule. 

The district court denied the motion on September 30, 

2020. The court recognized that the first-filed action is generally given preference when identical or highly related 

suits are filed in separate courts but held that such preference did not warrant transfer because “there is not an identity of parties or infringement allegations” and that 

petitioners’ “alleged infringement does not completely coincide with that of Dolby and the resolution of the Dolby 

Action will not moot the issues presented here.” Intertrust 

Techs. Corp. v. Cinemark Holdings, Inc., No. 2:19-cv00266-JRG, slip op. at 17 (E.D. Tex. Sept. 30, 2020). The 

court further found that petitioners had not shown that the 

Northern District of California was a clearly more convenient forum based on the traditional factors bearing on a 28 

U.S.C. § 1404(a) analysis. Petitioners now seek mandamus 

review of that ruling. 

II.

The basics for obtaining transfer under either the firstto-file rule or § 1404(a) are generally straightforward. Under the first-to-file rule, where there is complete or nearly 

complete overlap between two cases, the usual rule is for 

the court of first jurisdiction to resolve the issues. See

Merial Ltd. v Cipla Ltd., 681 F.3d 1283, 1299 (Fed. Cir. 

2012); West Gulf Mar. Ass’n v. ILA Deep Sea Local 24, 751 

F.2d 721, 730 (5th Cir. 1985). Under § 1404(a), the movant 

must “clearly demonstrate that a transfer is ‘[f]or the convenience of parties and witnesses, [and] in the interest of 

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4 IN RE: CINEMARK HOLDINGS, INC.

justice.’” In re Volkswagen of Am., Inc., 545 F.3d 304 (5th 

Cir. 2008) (en banc) (quoting § 1404(a)). A district court 

generally has considerable discretion in deciding whether 

to transfer under either rule, and we review its decision on 

mandamus only for a clear abuse of discretion. See In re 

TS Tech USA Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008).

We cannot say petitioners have shown that the district 

court’s first-to-file rule determination amounted to a clear 

abuse of discretion. Whereas the California action focuses 

on Dolby’s IMBs, these suits focus on petitioners’ use of 

equipment suites, some of which use IMBs made by producers other than Dolby. Intertrust contends, moreover, 

that other components used in petitioners’ equipment 

suites aside from IMBs can independently meet most of the

same limitations for the claims asserted here. For these 

reasons, the issues of infringement are not clearly common 

between the cases and resolution of the California action

would not necessarily resolve the Texas cases.2 Thus, the 

district court here had at least a plausible basis to conclude 

that transfer of these cases would not likely reduce piecemeal resolution and minimize the possibility of embarrassing inconsistent results that the first-to-file rule was 

designed to prevent.

Apart from the first-to-file rule, petitioners also challenge the district court’s analysis of the § 1404(a) convenience factors. Under applicable Fifth Circuit law, we 

review those determinations only to see if the district 

 

2 For these reasons alone, among others, we must

also reject any suggestion that the district court erred in 

applying the principles underlying the so-called customersuit exception. See Kahn v. Gen. Motors Corp., 889 F.2d 

1078, 1081 (Fed. Cir. 1989) (declining to apply the exception where there was no evidence that the later filed action 

“would resolve all charges against the customers in the

stayed suit, including liability for damages”). 

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IN RE: CINEMARK HOLDINGS, INC. 5

court’s refusal to transfer amounted to a patently erroneous result. See TS Tech, 551 F.3d at 1319. We cannot say 

that such result occurred here. The district court considered all the relevant factors based on the record before it. 

It noted that Intertrust’s chosen forum, located in the district in which Cinemark is headquartered and much closer 

to the headquarters of the other petitioners, would be convenient for certain relevant documents and physical evidence as well as witnesses of petitioners and at least one 

third-party witness from Dolby who has personal 

knowledge of the development of the DCI standard. Under 

similar circumstances, where no defendant is headquartered in the proposed transferee venue, this court has not 

previously granted mandamus, and we see no reason to 

grant such extraordinary relief here.

Accordingly,

IT IS ORDERED THAT:

(1) Intertrust’s motion to file a sur-reply brief is 

granted. ECF No. 15-2 is accepted for filing.

(2) The petition for a writ of mandamus is denied. 

(3) The motions to exceed the confidential word limits

(ECF Nos. 4 and 10) are denied as moot. 

December 17, 2020

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

s29

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