Venue Mandamus Petitions Continue to Flow to the Federal Circuit

by Dennis Crouch

We’ve been writing a lot about venue and mandamus petitions at the Federal Circuit.  The cases continue to flow to the court, and will continue so long as appellate panels continue to entertain them.

In October 2021, 10 new mandamus petitions were filed to the Federal Circuit in patent cases.

  • 22-100 In re: Overhead Door Corporation (E.D. Tex.) (proper but inconvenient forum);
  • 22-101 In re: Advanced Micro Devices, Inc. (W.D. Tex.) (proper but inconvenient forum);
  • 22-103 In re: Arista Networks, Inc. (W.D. Tex.) (proper but inconvenient forum);
  • 22-104 In re: Google LLC (W.D. Tex.)  (proper but inconvenient forum);
  • 22-105 In re: Amperex Technology Limited (D.N.J.) (proper but inconvenient forum);
  • 22-106 In re: Juniper Networks, Inc. (E.D. Tex.) (proper but inconvenient forum);
  • 22-107 In re: Medtronic, Inc. (W.D. Tex.) (arguing both improper venue and also inconvenient forum);
  • 22-108 In re: Volkswagen Group of America, Inc. (W.D. Tex.) (improper venue; are dealerships a place of business for VW);
  • 22-109 In re: Hyundai Motor America (W.D. Tex.) (improper venue; are dealerships a place of business for Hyundai); and
  • 22-110 In re: Netflix, Inc. (E.D. Tex.) (arguing both improper venue and also inconvenient forum).

I’m quite skeptical of parties use of Section 1404 in patent litigation. All of the parties listed above are major nationwide companies that have successfully litigated in courts across the country.  The motivation behind “convenient forum” litigation is all about judge shopping.  Patentees want certain judges; defendants want different judges.  But, that motivation does not provide any legal basis for transfer of venue.  So, instead parties argue that the file server location in California and the lack of non-stop flights makes it too hard to litigate in Texas.  Truthfully, it is hard for me to believe that the Federal Circuit is so engaged with rescuing these folks from burdensome file transfers.

68 thoughts on “Venue Mandamus Petitions Continue to Flow to the Federal Circuit

  1. 13

    On topic: Leahy and Tillis have apparently requested the Judicial Conference to look into “[t]he extreme concentration of patent litigation in one district and the unseemly and inappropriate conduct that has accompanied this phenomenon”.

    1. 13.1

      Did they happen to cite what sections of judicial conduct were violated with this “unseemly and inappropriate conduct,” or was this political pandering?

    2. 13.2

      Thanks JD. Anyone have a link to the letter?

      1. 13.2.1

        It’s the top result if you google:

        “extreme concentration of patent litigation”

        1. 13.2.1.1

          Thanks Ben.

  2. 12

    OT but here is the new word, happening all across the nation, to describe the office’s situation: Skimplflation

    Trying to save that corporate dollar.

    link to npr.org

    1. 12.1

      Misspelled: Skimpflation

      “It’s when, instead of simply raising prices, companies (or here the gov) skimp on the goods and services they provide.”

      1. 12.1.1

        I am reminded of your prior posts noting how the Fed has seriously mis-identified real world actual inflation.

        1. 12.1.1.1

          Yes tis similar

  3. 10

    OT: Judge Leonard Stark was nominated today for the Federal Circuit. Surprised that this hasn’t been posted yet as it has been out for a few hours now.

    Terrible choice, which I’ll expound upon when Dennis gets an article up dedicated to the topic.

    1. 10.1

      Excellent choice. Glad to hear it (your #10 is the first I have heard of it).

      1. 10.1.1

        Excellent choice for whom?

    2. 10.2

      This guy has ZERO science technology experience and exudes “abstractions” from his pores. Clearly unqualified to sit on the one court of the USA that is supposed to be technologically literate.

      Born in Detroit, Stark earned a Bachelor of Arts and a Bachelor of Science in history and political science and a Master of Arts in history from the University of Delaware, all in 1991.[1] Stark also earned a Doctor of Philosophy in politics from Magdalen College at the University of Oxford in 1993 as a Rhodes Scholar.[1] Finally, Stark earned a Juris Doctor from Yale Law School in 1996.[1] From 1996 until 1997, Stark served as a law clerk to United States Court of Appeals for the Third Circuit Judge Walter King Stapleton.[1][2]

      1. 10.2.1

        Giles Rich’s undergrad degree was a B.S. in history, government, & economics. Was he “clearly unqualified” to serve as chief judge of the C.C.P.A., and later sit on the CAFC?

        1. 10.2.1.1

          J. Rich practiced patent law for 20 years before being appointed to the CAFC.

          1. 10.2.1.1.1

            I have a post detailing his unparalleled experience prior to being appointed judge that is “awaiting moderation.”

          2. 10.2.1.1.2

            But Greg is being Greg.

            Again.

      2. 10.2.2

        What do you mean by, “and exudes “abstractions” from his pores…?

        1. 10.2.2.1

          I realize NW isn’t able to back up most of his comments with actual cases. But, here’s one: American Axle v. Neapco.

        2. 10.2.2.2

          anon, it was a joke meaning that someone like this with no science background is going to work on an abstract level when analyzing cases.

          Groot: Night Writer does a great job supporting his arguments. Bad Groot.

          1. 10.2.2.2.1

            Ah, I was too subtle…

            My response was meant to contrast a “polite” response, asking you to clarify with Greg’s pompous response.

  4. 9

    OT, but re the prior blog “Patent Law Textbooks: A Micro-Symposium” how many others besides me think Socratic discussions of old cases is the wrong way to teach basic patent law courses, when most of the basics are statutory, and many of the important old cases are already codified or were under older statutes and/or no longer even regularly cited as authority? Principles of proper statutory construction and the patent-important parts of the APA should also be taught.

    1. 9.1

      I would agree as to the “also,” but disagree (strongly) on NOT teaching through use of Socratic method.

    2. 9.2

      “many others besides me think Socratic discussions of old cases is the wrong way to teach basic patent law courses”

      I would think that would tend to be correct in today’s legal environment. I’m surprised they would even have much of that lately on those topics.

      1. 9.2.1

        I would think that would tend to be correct in today’s legal environment.

        I literally laughed out loud at your “Equity” position here, 6.

        Teaching people to think – fast, critically, and in a penetrating manner, IS a “problem” if what you are after is a complacent, non-questioning herd of sheeple.

        That’s actually the opposite of where we need to be.

        1. 9.2.1.1

          In what way does the Socratic method help you as a patent prosecutor?

          1. 9.2.1.1.1

            Thats what I’m wondering from anon’s comment. He seems to think that there are prosecutors who are somehow making (perhaps on the day to day) some supar innovative legal arguments. This isn’t happening in my day to day in the responses I receive, more or less prosecutors are practically 100% loyal to the legal party line so to speak and tread it entirely in more or less every response.

            I’m not sure that anon really understands what the overall topic being discussed here is.

            1. 9.2.1.1.1.1

              Lol – you disdain what you yourself do not understand, 6.

              It does not take “super innovative legal arguments” to appreciate the benefits of mastering the Socratic method.

          2. 9.2.1.1.2

            It teaches one to think deeply, critically, and be prepared.

            In your practice, are you saying that these qualities are not helpful, BobM?

            How about in general life, to separate the massive amounts of propaganda (from both the Left and the Right)?

            Do you prefer to be counted among the Sheeple?

  5. 8

    Two words: Texas Repukkkes.

    Most normal people think you are sociopaths and scumbags and want nothing to do with you.

    1. 8.1

      Perhaps in deep thinking states like Missouri and Iowa, the wackjob dominionist “attorneys” and “judges” that you run into in Texas don’t seem as corrupt and lizard-brained as they seem when viewed from other parts of the country.

      1. 8.1.1

        Why would either team go to such lengths to protect a family that made another child live my existence? Why wasn’t this treated as an identity theft case and then corrected? Also why would my IP that was stolen similar to infringement, be all so important to steal and then cover up the theft? Even going so far as to send me a counterfeit patent, and then post what you destroyed on the USPTO Web? I don’t get it. Why wasn’t this handled as an infringement case? Are these lawyers and Judges that are not supposed to have the power of congress get away with this conspiracy? I don’t get it. They when this is all said an done have managed to weaken every Registered Patent Atty. and Agent because they “said so”?

        1. 8.1.1.1

          Whoever is monitoring this site for Dennis or the USPTO needs to grow some, and stop erasing what you knew and let happen.

        2. 8.1.1.2

          Been awhile since sarah’s been around, glad to see she’s still kickin

    2. 8.2

      You do realize that you are doing nothing but showing your own “lizard-brain” tendencies, eh Malcolm?

      This is simply NOT a one-bucket “Republican” thing.

      1. 8.2.1

        This is simply NOT a one-bucket “Republican” thing.

        Remember, folks: this is the same guy who has insisted in the past that patent law isn’t “political” (LOL) and who also doesn’t realize (or pretends not to realize) how perfectly he embodies the very “bucket” that he complains about.

        In any event, if someone wants to make an argument that it’s just a coincidence that these toxic pro-junk patent judges keep turning up in Texas — the undisputed home of many of the worlds worst and wrongest governors, politicians, attorneys and judges — please go for it. The laughter is already rolling.

        1. 8.2.1.1

          What have you been smoking?

          Maybe – just maybe, offer some thing that I may have actually argued.

        2. 8.2.1.2

          “the undisputed home of many of the worlds worst and wrongest governors, politicians, attorneys and judges — please go for it. The laughter is already rolling.”

          Worst and wrongest? Best and bestest bruh.

  6. 7

    >and the lack of non-stop flights makes it too hard to litigate in Texas.

    OTOH, the inventor’s lawyer is probably located in Waco… and now has to take those same non-stop flights.

    1. 7.1

      Re: “the inventor’s lawyer is probably located in Waco.”
      First, in few patent suits is the inventor even the patent owner, much less selecting the attorney for the patent owner or living in Waco. Even less likely is the selection as lead trial counsel [as opposed to mere local counsel] from a law firm in Waco TX.

  7. 6

    The motivation behind “convenient forum” litigation is all about judge shopping. Patentees want certain judges; defendants want different judges.
    Bingo.

    Since the Federal Circuit has long been infringer-friendly, they have converted an extraordinary remedy of mandamus with a high review standard of abuse of discretion into a low standard of de novo review in order to ship these cases elsewhere.

    Truthfully, it is hard for me to believe that the Federal Circuit is so engaged with rescuing these folks from burdensome file transfers.
    It is only hard to believe if you are cognizant of the spate of anti-patentee/pro-infringer decisions that have emanated from the Federal Circuit over the course of at least the past decade.

    In the grand scheme of what goes on over a multi-year long litigation, a handful of flights to and from San Francisco (i.e., NDCal) and Waco (i.e., WDTex) is a very minor inconvenience — particularly to large, national companies. They’ll spend far more fighting the issue than the cost of the actual inconvenience being imposed.

  8. 5

    Bravo Dennis. Judges should be applauded for trying cases, not chastised.

    1. 5.1

      Yes, piling up 700 dockets (when the long term average was a handful per year) is how one tries cases. Wait, what?

      The CAFC does not care about these litigants. It cares about entrepreneurial district judges enterprising their way to prominence by distinguishing & specializing their forums, which really should be the province of Congress.

      Love how the separation of powers purists around here turn into Sargent Schultz on this matter.

      1. 5.1.1

        You have this absolutely wrong, Marty.

        Love how the separation of powers purists around here turn into Sargent Schultz on this matter.

        This actually has been pronounced by me several times now — the opposite of your statement.

        It cares about entrepreneurial district judges enterprising their way to prominence by distinguishing & specializing their forums, which really should be the province of Congress.

        Tell me — exactly — what the violation is and the necessary procedures (including defrocking) for the remedy to the supposed violations.

        Pull your head out, your arse is not a hat.

        1. 5.1.1.1

          Who is in Santa Clara? Juicy Brucie? Whoever is they are in my computer.

  9. 4

    As noted in the prior recent blog on this subject, “the file server location in California” is neither the only, or anywhere near the most important, basis for any of the inconvenient-forum transfer requests that are actually being granted by the Fed. Cir. As also noted, the Waco TX judge-shopping seems largely based on an assumption of faster and more favorable final judgements for plaintiffs, which as yet lacks statistical confirmation.
    The above “22-108 In re: Volkswagen Group of America, Inc. (W.D. Tex.) (improper venue; are dealerships a place of business for VW)” sounds of more general interest. Do independent car dealerships met the statutory test for car manufacturers of 1400(b) that “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business?” Is a car dealership distinguishable from other independent or franchised stores selling purchased infringing products?

  10. 3

    Since all of the cases are coming from the WDTX and EDTX the Fed Cir must use Fifth Circuit Section 1404 law. It also has “public” factors such as the venue’s interest in the case. For example if a big tech company has 10,000 employees in California and only 50 in WDTX (and none of those 50 designed the accused products) then it would be a clear abuse of discretion to keep the case in the WDTX. The Fed Cir has to faithfully apply Fifth Circuit precedent. Even assuming that the Defendants’ *real* motivation is to get a different judge, that changes nothing in the facts or the proper legal analysis.

    1. 3.1

      Agreed. Even if “[a]ll of the parties listed above are major nationwide companies that have successfully litigated in courts across the country,” that does not change the fact that most of Google’s/Netflix’s/Hulu’s/Etc.’s employees are in California, two time zones behind Texas. The Volkswagen factors rightly lead to the conclusion that these cases should be in CA, not TX—even if the defendant’s motivation for seeking transfer is something else.

    2. 3.2

      Yes, albeit the number of employees in each forum is not logically relevant. Whereas, if in EDTX none of the employees designing the infringing product, or making marketing decisions, or otherwise having any relationship to the infringement suit, or being potential witnesses, IS clearly relevant.

    3. 3.3

      It also has “public” factors such as the venue’s interest in the case. For example if a big tech company has 10,000 employees in California and only 50 in WDTX (and none of those 50 designed the accused products) then it would be a clear abuse of discretion to keep the case in the WDTX.
      The relative number of employees does not appear to be a “public” factor. My understand is that public interest factors are:
      (i) the administrative difficulties flowing from court congestion; (ii) the local interest in having localized controversies resolved at home; (iii) the interest in having a the trial of a diversity case in a forum that is familiar with the law that must govern the action; (iv) the avoidance of unnecessary problems in conflicts of law, or in application of foreign law; and (v) the unfairness of burdening citizens in an unrelated forum with jury duty.

      The Fed Cir has to faithfully apply Fifth Circuit precedent.
      Which requires substantial deference to the the decision of the district court — a deference only given lip service by the Federal Circuit.

      1. 3.3.1

        [Fifth Circuit precedent] requires substantial deference to the the decision of the district court — a deference only given lip service by the Federal Circuit.

        In In re Volkswagen of Am., 223 Fed. Appx. 305 (5th Cir. 2007) a 3 judge panel of the CA5 denied a mandamus petition—per curiam—mainly on the ground that a convenience transfer was a matter of judicial discretion, not an absolute right, and hence was inappropriate for mandamus. The CA5 en banc then overturned that 3 judge panel in In re Volkswagen of Am., 545 F.3d 304, 307 (5th Cir. 2008) and directed the ED Tex. to transfer the case. In other words, it is not immediately clear to me that the CAFC’s review is any less deferential than the CA5 precedent should incline one to be.

        1. 3.3.1.1

          I should add that the en banc Volkswagen decision remains the lead CA5 precedent on forum non conveniens.

        2. 3.3.1.2

          it is not immediately clear to me that the CAFC’s review is any less deferential than the CA5 precedent should incline one to be
          I suggest you read In re Volkswagen. The standard isn’t just abuse of discretion — it is clear abuse of discretion (“This admonition distinguishes the standard of our appellate review from that of our mandamus review. The admonition warns that we are not to issue a writ to correct a mere abuse of discretion, even though such might be reversible on a normal appeal.”)

          For example, within In re Dish Network, the district court found that access to electronically stored records was a neutral factor. I, for example, can access documents stored on my google drive (which may be anywhere in this country, I don’t know really) as easily as I can access documents stored in my local storage. This finding is hardly clear abuse of judicial discretion — it is a common sense recognition that technology brings all of us closer together, regardless of physical location, as it was intended to do.

          The Federal Circuit is (yet again) misreading longstanding case law to get a desired result (just like they did with 12b6 motions) — that result be a result friendly to patent infringers. Moreover, just like 12b6 motions (which should rarely be granted), nearly every patent case is going to get the Federal Circuit involved — delaying the process and driving up costs, which (again) is a patent infringer-friendly approach to patent litigation.

          1. 3.3.1.2.1

            How dare anyone want to actually enforce the property rights associated with innovation protection….

            /S

          2. 3.3.1.2.2

            I suggest you read In re Volkswagen.

            I have.

            The standard isn’t just abuse of discretion — it is clear abuse of discretion…

            O.k.

            “This admonition distinguishes the standard of our appellate review from that of our mandamus review. The admonition warns that we are not to issue a writ to correct a mere abuse of discretion, even though such might be reversible on a normal appeal.”

            I mean this is fine. It is important to pay attention to what the precedents say along the way to reaching the end result, but it is also important to pay attention to the fact patterns and the holding.

            The facts relating to witnesses and documents and suchlike were not especially more compelling in Volkswagen than they are in most of the recent WD Tex mandamus cases. Indeed the facts were less compelling in Volkswagen. ED Tex (Marshall) and ND Tex (Dallas) are not only in the same time zone, but are only ~2.5 hrs apart by car.

            Meanwhile, for all the talk of “clear abuse,” the CA5 issued the writ of mandamus ordering transfer. In other words, that which rises to the level of a “clear abuse” in the CA5’s estimation is evidently less than that which you consider necessary to qualify as a “clear abuse.” You can hardly fault the CAFC for hewing more closely to the CA5’s standard than to your own.

            The Federal Circuit is (yet again) misreading longstanding case law to get a desired result (just like they did with 12b6 motions)…

            For whatever little this is worth, I agree with you about the CAFC and 12(b)(6) motions.

            1. 3.3.1.2.2.1

              it is also important to pay attention to the fact patterns and the holding
              Yes. Look at the fact pattern in Volkswagen. It isn’t even remotely close to what you find in most patent cases.

              You can hardly fault the CAFC for hewing more closely to the CA5’s standard than to your own.
              Again, the fact patterns are nowhere similar.

    4. 3.4

      As I recall (and I could be off on this), the Fifth Circuit actually has not definitely have had their say on this.

      The Fifth Circuit could pick up the matter and decide very much in favor for the CHOICE that the judges of Texas see to make.

      The Fed Circ. has been inserting THEIR view of things here.

      There may well be arguments as to the veracity of that view, but NO ONE should be mistaken as to what the Fed Circ. has been doing.

      Pretending that the Fed Circ. is hewing to the regional circuit only diminishes your credibility.

  11. 2

    It’s not just about files, which would indeed be trivial.

    It’s also about transporting people. Many judges give you a trial window and schedule 2-3 cases to go at the same time, assuming most of them will settle. So you need to get all your personnel and hotels and logistics ready to go on a particular day and then maybe you’ll go, maybe you won’t. This is an especially hard sell if you can’t compel witnesses because they don’t live in the jurisdiction.

    There are real convenience factors at play here.

    1. 2.1

      “This is an especially hard sell if you can’t compel witnesses because they don’t live in the jurisdiction.”

      Real question: How often, if ever, do witnesses so refuse?

      Anyone have any actual numbers / percentages?

  12. 1

    “The motivation behind “convenient forum” litigation is all about judge shopping.”

    Yup.

    How long before the CAFC tires of being the referee?

    1. 1.1

      In many cases, it’s also about taking the threat of an injunction off the table i.e., if you can defer final judgment for 8 years, there is a good chance either 1) you’re no longer selling that product; or 2) the patent has expired.

      1. 1.1.1

        Interesting.

        A “problem” easily solved if the principles of equity were to be actually followed in view of the negative right nature of the property right that is a patent:
        1) make the transgressed as whole as possible
        2) do NOT treat injunction as a de facto “atom b0mb” or remedies

        IF instead of playing the “move out of Texas” game, the Fed Circ. made ALL OTHER circuits follow the core principles of equity, less desire to file in Texas (and less attempts to move out) would ensue.

        Here’s to Congress (finally) waking up and at least restoring the injunctive nature of patent rights.

        1. 1.1.1.1

          “the Fed Circ. made ALL OTHER circuits follow the core principles of equity”

          That.

        2. 1.1.1.2

          Judge O’Malley has raised the effective removal of the threat of injunctions as a problem for patentees. If the only thing potential infringers risk is paying the same royalty they would have paid earlier, what incentive do they have not to infringe?

          1. 1.1.1.2.1

            They actually have an incentive to infringe.

            Maybe under this “Public Franchise” mode of thinking, we switch the onus from the FranchisEE to the FranchisER to enforce the matters…

          2. 1.1.1.2.2

            If the patent owner sells products covered by the patent, and if they win the case, they are indeed going to get a permanent injunction in a substantial number of such cases. If the patent owner doesn’t sell anything, they have no right to an injunction. qed.

            1. 1.1.1.2.2.1

              If the patent owner sells products covered by the patent

              There is NO “must use” requirement in US patent law.

              Such has zero tie to the actual right infringed, and a legitimate application of the principles of equity do NOT rest on any such item that is NOT a part of the right.

              Your “qed” is bankrupt at the foundation.

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