Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1

By Jonas Anderson, Paul Gugliuzza, and Jason Rantanen

This is the first post in a series about our new research project on mandamus practice in the federal courts of appeals generally and the Federal Circuit’s peculiar use of mandamus in patent cases specifically.

There has been a lot of talk recently about the Federal Circuit and mandamus. Our current research project aims to answer whether the Federal Circuit is an outlier among the circuit courts in its use of mandamus, and if so, what explains the court’s apparent infatuation with mandamus?

Mandamus Generally

Mandamus—literally, “we command”—is an extraordinary event. Federal appeals courts have authority to review “final decisions” of district courts (or of the PTAB, in the Federal Circuit’s case). Mandamus provides a way for litigants to take their appeal before an appeals court while their case continues at the district court below. This can be a great thing for litigants who feel that an issue has been wrongly decided and who don’t want to wait for a final decision to take their case before the appellate court. However, if mandamus is granted too frequently, it risks compromising judicial efficiency by placing the appellate court in the awkward position of arbiter of disputes rather than reviewer of final decisions.

The Supreme Court has said three requirements must be satisfied in order for an appellate court to grant mandamus. First, the party seeking mandamus must have “no other adequate means” to obtain relief. Second, the party must show that its right to mandamus is “clear and indisputable.” Third, the court must be satisfied that mandamus is “appropriate” under the circumstances.

Typically, the federal courts of appeals will reserve their use of mandamus for important issues that are likely to arise again in future cases. For instance, attorney-client privilege is a relatively frequently reviewed issue on mandamus, because it is an issue that district courts frequently encounter. In addition to importance, the issue under mandamus review ought to be one that is not reviewable after a final verdict, or at least one in which such post-verdict review would be inefficient. For instance, the choice of venue in litigation is one such issue that is reviewable post-verdict, but oftentimes would be inefficient for the appealette court to wait for a final verdict before deciding that the wrong court heard the case. Oftentimes the use of mandamus centers on new, undecided issues.

Ideally, mandamus gives lower courts appellate guidance so that mandamus review is not needed on the issue addressed in the future. Sparing use of mandamus allows appellate courts to preserve the extraordinary character of the practice. Ideally, appellate courts avoid excessive supervision of lower court proceedings while at the same time sending a forceful message when granting mandamus. Thus, granting a writ of mandamus is an “extraordinary remedy,” reserved for clear errors in which the moving party has no other adequate means to obtain relief.

Federal Circuit Mandamus

But, this extraordinary remedy is becoming quite common, at least in the Federal Circuit. In beginning our study of the Federal Circuit’s mandamus practices, we wanted to get a sense of how the court compares to other circuit courts in granting mandamus. Using Westlaw, we collected all the decisions on writ of mandamus and hand coded them for whether mandamus was granted and what the issue the grant concerned. We found that the Federal Circuit has granted mandamus over twice as often as any other circuit.

The Federal Circuit has clearly been more activist than any other court when it comes to granting mandamus. Over the past three years, the Federal Circuit has been granting mandamus, the extraordinary remedy, at a rate more than double that of the next most frequently granting circuit (the 5th circuit and the 9th circuit).

And the numbers are even more stark when we consider just one issue on which mandamus may be granted: venue. Patent cases often meet the jurisdictional requirements of personal jurisdiction, subject matter jurisdiction, and venue in a number of different district courts. While the plaintiff typically selects her preferred venue to litigate the case, defendants may bring a motion to transfer the case to another district court that also has venue. Alternatively, the defendant may argue that the court selected by the plaintiff lacks venue. Decisions on these motions are often challenged, if at all, on mandamus.

Looking at the grants of mandamus concerning motions to transfer presents a stark look at the difference between the Federal Circuit and every other circuit court. Below is a graph of grants of mandamus by circuit court that direct a district court to transfer venue in a case.

Clearly, venue is a confounding issue for the Federal Circuit, and no other circuit court. It is odd that the Federal Circuit has issued mandamus on one issue so frequently over the past three years while only one other circuit court has granted mandamus on this issue. And that circuit did so only once.

In the next post we will give come further context and detail about the petitions for writs of mandamus at the Federal Circuit. And specifically look at the issue of venue mandamus in greater detail.

26 thoughts on “Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit – Part 1

  1. 9

    I was going to post this elsewhere but didn’t want it buried.

    While plaintiffs are being accused of forum shopping that same exists for defendants. The latest Federal Circuit decision (from today) granting mandamus relief (i.e., In re Dish Network) pretty much lays out how it is going to work in the future. All a large company has to do is allege that they have witnesses that could only be compelled to testify in their preferred venue, and the Federal Circuit is more than likely going to transfer the case. My guess is that these large tech companies have hundreds of employees that could testify but will offer up those that are in a preferred venue.

    The Federal Circuit has transformed something that should only be available as an extraordinary remedy into a tool for patent infringers to get cases tried in their preferred venue. The Federal Circuit has long stacked the deck in favor of accused patent infringers. The Federal Circuit’s approach to transfers under 28 USC 1404 is just another ace that the Federal Circuit has slipped, under the table, to accused patent infringers.

    In reading the news these days, it is quite common to run across commentaries decrying all of the power had by the large tech companies in the US. I typed search into Google of “do tech companies have too” and it automatically autocompleted with “… much power”. They have too much power because they have little competition. Why is there little competition? Because competitors who bring distinguishing products to the market have their distinguishing products copied — and copied nearly always without repercussion.

    If, for example, you wanted to provide an alternative to Facebook and came out with a new technology, what do you think would happen? I can all but guarantee that Facebook would copy it. The Washington Post had an article, dated August 10, 2017, the headline of which was “Facebook’s willingness to copy rivals’ apps seen as hurting innovation.” Here is another headline from an article dated this year: “Facebook is copying Twitter’s unique feature.” Here is another headline from an article dated from 2020: “10 times Facebook copied a competitor.”

    Looking at the Federal Circuit website, I count 14 cases coming out of District Court in which Facebook was a party. By my count, Facebook was 13-1, with 7 of those wins being under Rule 36. Also, the only loss was a reversal of a grant of motion of a summary judgment for non-infringement — this case still appears to be still pending so it wasn’t really a true “loss” for Facebook.

    While I picked on Facebook because it was an easy name to search and I already recalled the Washington Post article, they are hardly alone in engaging in this behavior. Again, the copying going on by the big tech companies has been rife. However, over at least the past decade, the Federal Circuit has bent over backwards to protect these companies.

  2. 8

    My big question is how often the regional circuits even get mandamus petitions relating to venue or transfer motions under 1404? My sense is that transfer motions are already significantly more likely in patent cases than non-patent cases, and often parties aren’t interested in the cost to seek mandamus when there’s a 1404 motion.

  3. 7

    OT, but IPWatchdog today has a very interesting article that cites a George Mason U. article. Arguing that patent applications taken to the EDVA or DC DC for civil actions decisions against the PTO under 35 USC 145 [rather than directly to the Fed. Cir. from the PTAB] are immune from all further PTO actions including IPRs!:
    “Exceptional, After All and After Oil States: Judicial Review and the Patent System” by Michael S. Greve CSAS Working Paper 17-005

    1. 7.1

      At a quick glance Paul, Greve errs (and errs badly) with the supposition of inoculation.

  4. 6

    This long-standing procedure is available to protect parties, in these instances to protect defendants from the now time-honored Texas mentality. In other news Jason, grass is stll green and sky is still blue.

    1. 6.1

      aka – long live Efficient Infringement, eh?

  5. 5

    How many of the 14 cases were directed at judge Albright?

    1. 5.1

      All of them. And it’s up to 16 as of last week.

      1. 5.1.1

        Then I don’t understand the framing of this as the CAFC as being the outlier.

        Say there’s a set of teachers, and one teacher gives out more disciplinary notes than any other teacher. But all the notes are for one kid.

        To approach that situation with the question “what is wrong with this teacher?” is willfully dense. Now, there could be something wrong with the teacher upon further inspection. But it is not reasonable initial question.

        1. 5.1.1.1

          I agree, Ben, this is a pretty empty-headed article. The authors disingenuously try to feign puzzlement and bewilderment at the cause of all of this Federal Circuit mandamus activity on the issue of venue.

        2. 5.1.1.2

          Agree with Ben. I get that this post is “part 1,” and later parts will look more closely at the actual petitions, but “what explains the court’s apparent infatuation with mandamus” is a silly question even at this level of generality. There are hundreds of district judges in the country, yet all the writs and most of the petitions are directed at one or two judges. It’s not an “infatuation with mandamus”; it’s a sharp disagreement between the FedCir and one or two judges on an issue that’s especially suited to mandamus.

          Many of the FedCir mandamus orders could be called “writs of Albright” or “writs of Gilstrap,” in the way some of the Supreme Court’s orders were sometimes called “writs of Reinhardt.”

          Reinhardt had a fundamentally different view of habeas corpus law than the Supreme Court and supposedly observed that the Supreme Court “can’t catch ’em all” (“’em” being his decisions flouting Supreme Court precedent that he disagreed with).

          Gilstrap’s and Albright’s “disagreement” with the FedCir over venue seems less legal and more personal.

        3. 5.1.1.3

          Say there’s a set of teachers, and one teacher gives out more disciplinary notes than any other teacher. But all the notes are for one kid.
          Except that the “one kid” knows more about patent law than just about everyone else in the class, and the teachers are criticizing the “one kid” for lack of knowledge about patent law.

          As I wrote earlier, “[t]he infringer-friendly Federal Circuit wants to see cases transferred to infringer-friendly District Courts.”

          YOU want to believe that the Federal Circuit is acting normally when, in fact, it isn’t. That Federal Circuit is most probably as anti-patent today as it has ever been in its nearly 40 years of existence. Moreover, the Federal Circuit continues to butcher non-patent law issues in order to achieve its anti-patent goals. Aside from this issue here, no other appeals court in the land permits 12b6 motions to be handled in the manner that the Federal Circuit allows — it isn’t even close.

          Judge Albright handled patent cases as a magistrate judge early in his career and has been a patent litigator (for both plaintiffs and defendants) for over 30 years. How many district court judges have that kind of experience with patent law? A great many cases are coming his way because plaintiffs believe they’ll get a fair shake in his courtroom — unlike other district courts whose judges want nothing to do with patent cases, i.e., those with arcane legal issues and highly-technical fact patents.

          But it is not reasonable initial question.
          Only for those with but a surface-level understanding as to the law. Your anti-patent bent is well known, and consequently, anything (or anyone) that is contrary to that bent is questionable to you. We get it — you have preconceived biases. However, don’t confuse your preconceived biases with an actual understanding of the law, as it should be applied versus how it is being applied by the Federal Circuit.

          1. 5.1.1.3.1

            If the authors are starting from a presumption that Albright is in the right (i.e., the one kid knows best) they could say so. They didn’t. Perhaps Rantanen will comment to cosign your characterization of the context.

            ~~~

            What’d you learn from this “good faith” rant, Greg?

  6. 4

    “It is odd that the Federal Circuit has issued mandamus on one issue so frequently over the past three years … ” Really?

    As Paul Morgan commented: ” a large percentage of new patent suits are being attracted and retained in Waco TX by a unique judge repeatedly receiving inconvenient-forum mandamus transfer decisions on the same or similar issues. Remove those two factors and the Fed. Cir. mandamus total would be far more average. “

  7. 3

    Nice look at the data, and thanks for the article.

    My question: Can we get some numbers that look at mandamus grants per total number of mandamus requests? I just wonder if all of the circuit courts of appeal are getting the same number of requests. It would be even better to see what percentage of each appeals court’s requests concern venue as apart from other issues (e.g., privilege, personal jurisdiction).

    1. 3.1

      Good point. Almost all those mandamus orders concern just one judge interpreting just one disputed statute. Not sure how much this tells us about the CAFC as opposed to how much it tells us about the patent-specific venue statute.

    2. 3.2

      It’s about half of those decided, which is extraordinary.

  8. 2

    How much of a study is really needed to find out that “patent-owner-friendly” courts are desired to be quashed?

    It’s like a study to find out if water is wet.

    1. 2.1

      Agree. Not much to see here. The infringer-friendly Federal Circuit wants to see cases transferred to infringer-friendly District Courts.

      Want to do an interesting study? Take a look at all of the decisions rendered by the Federal Circuit over the last 3 years. Split then up by:
      1) Ex parte cases from the Board
      2) Inter-parte reexams from the Board
      3) District Court cases

      Make sure you include all Rule 36 decisions. Code the decisions as follows:
      1) Patent Owner/Applicant loses
      2) Patent Owner/Applicant wins
      3) Patent Owner/Applicant both wins and loses

      This should be easy to with cases from the Board. As for cases from the District Court, for the Patent Owner to win, they need to have claims survive a pre-trial motion or, if after a trial, they need to have some claims deemed valid and infringed.

      My guess is that Patent Owners/Applicants get a complete win in less than 10% of cases.

      1. 2.1.1

        My guess is that Patent Owners/Applicants get a complete win in less than 10% of cases.

        I would also like to see the actual numbers, but your guess sounds intuitively plausible.

        1. 2.1.1.1

          “Patent owner win” turns out to be surprisingly hard to do for appeals from the district courts. There’s a lot of decisions in the mix that are hard to classify one way or another. We’ve tried, and gotten only moderate agreement between independent coders. We’re continuing to work on this, but it’s more difficult than coding for outcome when there’s a single clear issue that disposes of the whole case.

          1. 2.1.1.1.1

            Makes sense. Thanks for sharing that preliminary finding.

          2. 2.1.1.1.2

            Code it as did the patent owner get and injunction and at least 80% of market value for their patented invention.

            Pretty close to zero.

            1. 2.1.1.1.2.1

              Ouch (repeat refrain of “long live Efficient Infringement”…)

          3. 2.1.1.1.3

            There’s a lot of decisions in the mix that are hard to classify one way or another.
            Then you should ask some litigators whether ‘such and such’ decision is good for plaintiff or defendant. Although I know quite a bit about patent litigation, I wouldn’t classify myself as an expert. Still, I have little problems looking at a decision and quickly determining whether it is a win/loss or something in the middle for applicants/patent owners.

            You don’t need a perfect classification of everything. However, if you can classify 80%-90% with the rest being (‘not sure’) then at least that will give you a good idea as to how patent-friendly (or not) the Federal Circuit has been.

  9. 1

    It is hardly surprising that the Fed. Cir. has more venue mandamus action than other circuits. First because patent suits having a unique special venue statute with specific requirements. Secondly because a large percentage of new patent suits are being attracted and retained in Waco TX by a unique judge repeatedly receiving inconvenient-forum mandamus transfer decisions on the same or similar issues. Remove those two factors and the Fed. Cir. mandamus total would be far more average. I am surprised that is not candidly addressed above.

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