Autodesk, Inc. v. Alter et al

Filing 77

ORDER TO SHOW CAUSE RE: TRANSFER - Each party shall file a response(5 pages or fewer) to this Order by 4/24/2017. Order to Show Cause Hearing set for 4/26/2017 02:00 PM. Signed by Judge William H. Orrick on 04/19/2017. (jmdS, COURT STAFF) (Filed on 4/19/2017)

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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 AUTODESK, INC., Plaintiff, 8 9 10 United States District Court Northern District of California 11 Case No.16-cv-04722-WHO ORDER TO SHOW CAUSE RE: TRANSFER v. JOSEPH ALTER, et al., Re: Dkt. No. 60 Defendants. 12 13 This action involves a dispute over the parties’ respective rights under a Settlement and 14 License Agreement (“License Agreement”) between defendants Joseph Alter and Joseph Alter, 15 Inc. (collectively, “Alter”) and counter-defendant The Walt Disney Company (“Disney”). The 16 License Agreement contains a valid form selection clause which mandates that all litigation 17 between Alter and Disney regarding the agreement occur in Los Angeles, California. 18 On August 17, 2016, plaintiff Autodesk, Inc., who is not a signatory to the License 19 Agreement, filed this action against Alter for declaratory judgment of license and non- 20 infringement. Dkt. No. 1. In turn, Alter asserted mandatory counterclaims for: (1) declaratory 21 judgment of no license to, or exhaustion of, U.S. Patent Number 6,720,962 (“the ’962 Patent”) 22 against Disney and Autodesk; (2) infringement of the ’962 Patent against Autodesk; (3) indirect 23 infringement of the ’962 Patent against Disney; (4) breach of contract against Disney; (5) breach 24 of the implied covenant of good faith and fair dealing against Disney; (6) intentional interference 25 with prospective economic advantage against Autodesk and Disney; and (7) negligent interference 26 with prospective economic advantage against Autodesk and Disney. Dkt. No. 34. 27 Disney now moves to sever Alter’s counterclaims against it and to transfer those claims to 28 the Central District of California pursuant to the mandatory forum selection clause included in the 1 License Agreement. Dkt. No. 60. Alter opposes Disney’s motion; Autodesk has not taken a 2 position. 3 District courts generally have broad discretion to transfer a case to any district where the 4 case might have been brought, “[f]or the convenience of parties and witnesses, in the interest of 5 justice.” 28 U.S.C. § 1404(a). The Court may transfer a case sua sponte under 28 U.S.C. § 6 1404(a) provided that “the parties are first given the opportunity to present their views on the 7 issue.” Costlow v. Weeks, 790 F.2d 1486, 1488 (9th Cir. 1986). 8 9 It appears that this entire action, not only what Disney seeks to sever, may belong in the Central District of California, not here. All of the claims in this case are premised on the License Agreement—essentially the parties are asking the Court to interpret the License Agreement and 11 United States District Court Northern District of California 10 declare what rights it confers upon them—that was negotiated, drafted, executed, and performed in 12 the Central District of California by parties who are located in the Central District. Furthermore, 13 the License Agreement is the result of litigation between Alter and Disney that was commenced 14 and terminated in the Central District, and Alter’s counterclaims in this action arise out of a prior 15 action brought in the Central District. The only apparent connection to this District is that non- 16 signatory Autodesk maintains its principal place of business in San Rafael, California. Yet 17 Autodesk seeks to enforce the terms of, and asserts claims that must be determined by reference 18 to, the License Agreement, which has no connection to this District and which contains a 19 mandatory forum selection clause designating Los Angeles, California as the proper forum. These 20 facts appear to indicate that transfer to the Central District of California is “in the interest of 21 justice.” 22 The parties have not briefed whether this entire action should be transferred. They are 23 ORDERED TO SHOW CAUSE why the Court should not transfer this entire case to the United 24 States District Court for the Central District of California, pursuant to 28 U.S.C. § 1404(a). Each 25 party shall each file a response to this Order by April 24, 2017, in a memorandum of no more than 26 five pages. The Court will hear this issue on April 26, 2017 at 2:00 p.m. in Courtroom 2, 17th 27 28 2 1 2 3 Floor. IT IS SO ORDERED. Dated: April 19, 2017 4 5 WILLIAM H. ORRICK United States District Judge 6 7 8 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 3

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