Slow down on Mandamus: Federal Circuit Refuses to Short Circuit Judge Albright’s Decision Process

In re Bose Corp (Fed. Cir. 2021)

Another mandamus venue case from Judge Albright’s Waco Texas courtroom. This time, however, the Federal Circuit has denied mandamus, holding that the defendant-petitioner had failed to show the requisite extraordinary cause.

The underlying lawsuit was filed in July 2020.  Koss Corp. v. Bose Corp., 6:20-cv-00661 (W.D. Tex.).  In December 2020, Bose filed its motion to dismiss/transfer for improper venue under 28 USC 1400(b).  Briefing completed on the motion in March 2021. Then, in April 2021 Judge Albright indicated that he planned to rule on the venue motion “next week” and that all deadlines remained in place as they await the decision.  Today, May 25, 2021, Judge Albright has still not ruled on the motion.  earlier this month Bose petitioned for mandamus asking the the appellate court to order Judge Albright to set everything aside until he decides the venue question.

In its analysis, the Federal Circuit found that Judge Albright has already taken steps to place the venue question next in line, and that he is not required to unduly delay other aspects of the case.  Notably, Judge Albright has entered standing orders regarding motions to transfer/dismiss:

With these elements in place, the Federal Circuit found no serious harm associated with allowing a case to incrementally move forward while parties await outcome of the venue motion.  In particular, Bose wanted a stay of briefing of the Markman dispute, but the court found no “clear legal right to stay those deadlines” or any “irreparable harm” that may occur.

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Bose obviously sells its speakers on a global basis. The company also used-to have a set of Bose retail locations, including one within the W.D. Texas.  However, in February 29, 2020, Bose its local store (as well as its other North American retail stores).  Thus, the question appears to be whether a recently closed business still counts as a “regular and established place of business” for venue purposes under the statute.  The Federal Circuit has not squarely addressed this issue. See In re Google, 949 F.3d d 1338, n.1 (Fed. Cir. 2020) (“The regional circuits appear to be split on the exact timing for determining venue. … We need not decide the correct standard [in this case].”).

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Patents at issue: U.S. Patent Nos. 10,206,025 (“the ’025 Patent”), 10,368,155 (“the ’155 Patent”), and 10,469,934 (“the ’934 Patent”) (collectively “the Patents-in-Suit”).

12 thoughts on “Slow down on Mandamus: Federal Circuit Refuses to Short Circuit Judge Albright’s Decision Process

  1. 3

    Judge Albright’s Waco ED Texas new standing order that: “Except with regard to venue, jurisdictional, and claim construction-related discovery, all other discovery is stayed until after the Markman hearing,” is commendable. Realistic Markman claim constructions can lead to effective S.J. motions for non-infringement, for greatly reduced litigation expenses, if the judge timely rules on those also.

    1. 3.1

      But, will expensive discovery and other trial expenses also be stayed for IPRs with alleged 102 and 103 references that were not considered by the PTO in allowing subject claims? That common stay practice is reportedly not common in this court.

  2. 2

    A panel with Judge Dyk holds for the patentees. Not every day that you see that outcome…

    1. 2.1

      Same reaction I had.

  3. 1

    Whether or not there is an “established place of business,” does not Bose purposefully avail to itself a continuous benefit of profiting from its business in the State?

    Bose obviously sells its speakers on a global basis.

    1. 1.1

      If you’re alluding to personal jurisdiction, then yes, agreed on that.

      1. 1.1.1

        Sorry, I am not quite following. Why would one talk about personal jurisdiction in the discussion of a motion about venue? The test for personal jurisdiction and the test for venue are very different tests. Why confuse the matters really in discussion by discussing factors that are relevant to some other question and wholly irrelevant to the discussion at hand?

        1. 1.1.1.1

          Don’t look at me for answers, but I refer you to anon at 1.2.1.1 and 1.2.2.

          -hr

    2. 1.2

      A “continuous benefit of profiting from its business in the State” does not satisfy the specific patent venue statute requirement for a “regular and established business.”

      1. 1.2.1

        Right, I had the same initial reaction, but notice at the very beginning the “whether or not”. So I don’t take anon to be arguing anything about venue.

        -hr

        1. 1.2.1.1

          Correct – my point is a bit deeper.

      2. 1.2.2

        Yes – I have recognized that flaw explicitly in the past, Paul.

        It is nonetheless, a flaw that the courts also seem to want to “pick and choose” as to recognizing what impact the driver of “purposeful availment” will carry.

        It’s the same coin. Notwithstanding how correct Greg may be in his point of jurisdiction and venue, it remains the same coin.

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