NOTE: This order is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE ATOPTECH, INC.

______________________ 

2014-124

______________________ 

On Petition for Writ of Mandamus to the United 

States District Court for the Northern District of California in No. 3:13-cv-02965-MMC, Judge Maxine M. 

Chesney.

______________________ 

ON PETITION

______________________ 

Before RADER, Chief Judge, NEWMAN and HUGHES, Circuit 

Judges. 

NEWMAN, Circuit Judge. 

O R D E R

ATopTech, Inc. seeks a writ of mandamus to direct 

the United States District Court for the Northern District 

of California to vacate its order granting plaintiff Synopsys, Inc.’s motion to disqualify ATopTech’s law firm, 

O’Melveny and Myers LLP (OMM). Synopsys opposes. 

ATopTech replies. ATopTech also moves to stay district 

court proceedings. Synopsys opposes. 

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2 IN RE ATOPTECH, INC. 

The petition arises out of a suit brought by Synopsys 

alleging, among other things, that ATopTech infringes 

Synopsys’s patents related to electronic design automation (EDA). EDA software simplifies the design process 

by mapping the layout of a chip with cells (placement), 

connecting those cells (routing), and testing the chip. 

The primary issue related to this petition is ATopTech’s alleged infringement of U.S. Patent No. 6,507,941 

(“the ’941 patent”). The ’941 patent relates to methods for 

placement and routing. The ’941 patent was originally 

issued to Magma Design Automation, Inc. (Magma) in 

2003 and was acquired by Synopsys when Magma merged 

with Synopsys effective February 2012. Magma’s major 

EDA product was known as Blast, and Synopsys continues to sell the product under the name Talus. OMM 

represented Magma in the merger. OMM began to represent the alleged infringer, ATopTech, in the present suit

in 2013. 

Previously in 2004, OMM had also represented Magma when it was sued by Synopsys in the United States

District Court for the Northern District of California. 

Synopsys alleged that Magma’s Blast product infringed 

three EDA patents issued to Magma but which Synopsys 

alleged it owned. Two of those patents featured claims 

directed to routing. 

OMM also represented Magma when Magma was 

sued by Synopsys in the United States District Court for 

the District of Delaware in 2005. The suit involved claims 

that Magma’s products infringed three of Synopsys’s 

patents. Magma counterclaimed to assert five of its own 

EDA patents against Synopsys, but Magma did not assert 

the ’941 patent. 

In the instant case, Synopsys alleges that ATopTech 

infringes the ’941 patent, U.S. Patent No. 6,237,127, and 

copyrights. Based on OMM’s prior representation of 

Magma at a time when Magma owned the ’941 patent and 

Case: 14-124 Document: 15 Page: 2 Filed: 05/29/2014
IN RE ATOPTECH, INC. 3

when Magma’s products and other related patents were in 

litigation, Synopsys moved to disqualify OMM as counsel 

for ATopTech. Synopsys noted, inter alia, the relatedness 

of the previous representations of Magma in EDA infringement cases. Two of the OMM attorneys who entered appearances in the present action had also 

previously represented Magma. At that point, OMM 

announced it created a “screen” to prevent disclosure of 

confidential information and asserted that its attorneys 

had not shared any confidential information. After a 

hearing, the district court granted the motion to disqualify OMM. ATopTech petitions this court for a writ of 

mandamus to overturn that ruling. 

“The remedy of mandamus is a drastic one, to be invoked only in extraordinary situations.” Kerr v. U.S. Dist. 

Court, 426 U.S. 394, 402 (1976). Accordingly, “three 

conditions must be satisfied before it may issue.” Cheney 

v. U.S. Dist. Court, 542 U.S. 367, 380 (2004). The petitioner must show a “‘clear and indisputable’” right to 

relief. Id. at 381 (quoting Kerr, 426 U.S. at 403). The 

petitioner must “lack adequate alternative means to 

obtain the relief” it seeks. Mallard v. U.S. Dist. Court, 

490 U.S. 296, 309 (1989); see Cheney, 542 U.S. at 380; 

Kerr, 426 U.S. at 403. And “even if the first two prerequisites have been met, the issuing court, in the exercise of 

its discretion, must be satisfied that the writ is appropriate under the circumstances.” Cheney, 542 U.S. at 381.

The United States Court of Appeals for the Ninth Circuit, whose law we apply here, has made clear that “the 

district court has the prime responsibility for controlling 

the conduct of lawyers practicing before it, and that an 

order disqualifying counsel will not be disturbed if the 

record reveals ‘any sound’ basis for the district court’s 

action.” In re Coordinated Pretrial Proceedings in Petroleum Products Antitrust Litigation, 658 F.2d 1355, 1358 

(9th Cir. 1981) (citing Gas-A-Tron of Arizona v. Union Oil 

Co. of California, 534 F.2d 1322, 1325 (9th Cir. 1976)). 

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4 IN RE ATOPTECH, INC. 

The district court stated that if a substantial relationship was shown between the current and former representations, a conclusive presumption arises that confidential 

material information was transmitted to the attorneys. 

ATopTech does not disagree with this statement of Ninth 

Circuit law, but instead disputes that Synopsys made a 

showing of a substantial relationship. The district court

found that Synopsys met this heavy burden because it 

made “a sufficient showing that the ’941 patent was 

discussed or the probability of it having been discussed.” 

The district court also found that there was “a relevant 

overlap in the products that were at issue in the former 

case and now will be at issue again,” and stated that

because of “the long relationship that [OMM] had with 

Magma and the thoroughness . . . of [OMM’s] work, in 

general,” disqualification of OMM was appropriate. We 

determine that the district court had a sound basis for 

disqualifying OMM. Therefore, mandamus relief is not 

warranted. 

Accordingly,

 IT IS ORDERED THAT: 

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

 (2) The motion for a stay is denied. 

 FOR THE COURT

 /s/ Daniel E. O’Toole 

 Daniel E. O’Toole

 Clerk of Court

s26

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