N OTE : This o rder is non precedential. 

# 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 Califo rnia in No. 3:13

- cv

- 02965

- MMC, Judge Maxine M. Chesney.

______________________

ON PETITION

______________________

Before R ADER , Chief Judge, N EWMAN and H UGHES , Circuit Judges

. N EWMAN , 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 Syno psys, Inc.’s motion to disqualify ATopTech ’s law firm, O’Melveny and Myers LLP (OMM). Synopsys oppose s

. AT opT ech replies. ATopTech also moves to stay district court proceedings. Synopsys opposes. Case: 14-124 Document: 15 Page: 1 Filed: 05/29/2014IN RE ATOPTECH , INC

. 2

The petition arises ou t of a suit brought by Synop sys alleging, among other things, that AT op T ech infringes Syn opsys’ s patents related to electro nic design autom ation (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 AT o pT ech ’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 Synops y s when Magma merged with Synopsys effective February 2012. Magma’s major EDA product was known as Blast, and Synopsys conti nues to sell the product under the name Talus. OMM

repr esented Magma in the merger. OMM began to repr esent the alleged infringer, ATopTech, in the present suit in 2013

. Previously i n 2004, OMM had also represented Ma gma when it w as sued by Synopsy s in the United States District Court for the Northern Distri ct of California. Synopsy s alleged that Magma’s Blast product infringed three EDA patents issued to Magma but which Synopsys alleged it owned. T wo of th os e patents featu red 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 invol ved claims that Magma’s products infringed three of Synopsys’s patents

. Magma counterclaimed to assert five of its own EDA patents against Synop sys , but Magma did not assert the ’ 941 patent

. In the instant case, Synopsys alleges that A TopTech in fringes the ’941 patent

, U.S. Patent No. 6,237,127

, and copyright s. Based on OMM’s prior representation of Mag ma at a time when Magma owned the ’ 941 pa tent and Case: 14-124 Document: 15 Page: 2 Filed: 05/29/2014IN RE ATOPTECH , INC

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when Magma ’ s products and other related patents were in litigation , Synopsys moved to disqualify OMM as counsel for AT opT ech . Synopsys noted, inter alia, the relatedness of the previous representations of Magma in EDA i nfringement cases. T wo of the OMM attorneys who e ntered 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 mo tion to disqual ify OMM

. ATopTech petitions this court for a writ of mandamus to overturn that ruling.
“The remedy of mandamus is a drastic one, to be i nvoked only in extraordin ary 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 pet itioner must show a “‘clear and indisputable’” righ t 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 prerequ isites have been met, the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropr iate under the circumstances.” Cheney , 542 U.S. at 381.

The United States Court of Appeals for the Ninth C i rcuit, 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 d isturbed if the record reveals ‘any sound’ basis for the district court’ s action. ” In re Coordinated Pretrial Proceedings in Petr oleum Products Antitrust Litigation , 658 F.2d 1355, 1358 (9th Cir. 1981) (citing Gas -A- Tron of Arizona v. Union Oil Co. of California , 5 34 F.2d 1322, 1325 (9th Cir. 1976) )

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

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The district court stated that if a substantial relatio nship was shown between the current and former represe ntations, a conclusive presumption arises that confidential material information was transmitted to the attorneys. ATopTech does not dis agree with this statement of Ninth Circuit law, but instead disputes that Synopsys made a showing of a substantial relationship. The district court found that Synop sys met this heavy burden because it made “ a sufficient showing that the ’941 patent was di scussed or the probability of it having been dis cussed .” T he 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 relations hip that [OMM] had with Magma and the thorough ness

. . . of [OMM’s] work, in general,” disqualification of OMM was appropri ate. We determine that t he district court had a sound basis for disqualifying OMM

. T herefore, m andamus relief is not warranted

. Accordingly,

I T I S O RDERED T HAT : (1) The petition for a writ of mandamus is denied.
(2) The motion for a stay is denied.

F OR THE C OURT

/s/ Daniel E. O’Toole

Daniel E. O’Toole Clerk of Court

s26 Case: 14-124 Document: 15 Page: 4 Filed: 05/29/2014