Mandamus Reasonably Denied

In re General Motors Co. (Fed. Cir. 2022)

Without much pretense, the Federal Circuit has rejected GM’s petition to the Federal Circuit seeking transfer of its case out of the Western District of Texas.  In 2021, Intellectual Ventures (IV) sued GM for infringement of twelve different patents — all focusing on features of GM’s OnStar service.  GM wanted the case to moved up to Michigan on convenience grounds, but Judge Albright Refused.  In particular, Judge Albright noted that GM has a major IT Innovation Center in WD Tex (Austin) that includes potential witnesses.  On mandamus, the Federal Circuit refused to disturb this holding.

In the short opinion, Judge Stark found Judge Albright’s findings reasonable and relevant. In particular, the court noted the following:

GM employees in the Western District of Texas with relevant and material information;

Electronic evidence in Michigan can be accessed by GM from its offices in the Western District;

The Western District (and not Michigan) has the power to compel one of the inventors to testify; and

The Western District has a strong local interest  because of GM’s significant presence, including many who devlop/sell the accused products.

Slip. Op.  Before transferring a case on convenience grounds, the district court must determine that the proposed district is “clearly more convenient.” This is already quite a high standard that provides substantial discretion to the district court.  But, the mandamus standard is even higher and requires an extraordinary situation involving clear error and substantial resulting harm that cannot be resolved later on appeal.  Here, the appellate court found that lacking because Judge Albright’s decision provides a plausible basis to conclude that E.D. Michigan was not clearly better.

The Federal Circuit decided this one on the briefs. Steve Baskin (King & Spalding) filed the petition on behalf of GM. Jon Waldrop (Kasowitz Benson) was lead attorney for IV.

 

 

17 thoughts on “Mandamus Reasonably Denied

  1. 3

    From the other blog:

    “A new company with a patent increases its sales by a cumulative 80 percent more than companies that do not have a patent.” – USPTO

    1. 3.1

      Not because of the patent. It’s more likely because many companies (indeed, most) do not have anything that would remotely qualify for patent protection. (And I say this even though you can get claims on almost anything; perhaps narrow claims, but still claims).

  2. 2

    Well, now that all the big corps have paid their protection money to the WD TX by building a presence there, maybe now they will all see that under the “new” rules, it is best to totally evacuate any business interest from the WD TX.

    1. 2.1

      One is always free to choose to NOT do business in any State (a benefit) where one does not want to incur a risk of suit (a responsibility).

      It is only when one wants the benefit without the responsibility that common decency should be offended.

      1. 2.1.1

        It’s not about “doing” business there, as much as having an office or employees in the district.

        1. 2.1.1.1

          I am (definitely) putting a different emphasis — and one directly tied to the Equity in that an entity is perfectly willing to take money even as it attempts to evade ANY responsibility on regards to where they are taking that money from.

          1. 2.1.1.1.1

            Well, I agree that evading ANY responsibility is bad, but I don’t think that’s at issue in a venue change request. It’s about avoiding a venue that has proven itself to be protection racket operating within the justice system. SCOTUS finally ended a good portion of that a few years back, but WD TX is not going down without a fight. And it appears that if companies don’t want to be ensnared in that racket’s death throes, the prudent action (under the ‘new’ rules) could be to exit WD TX. Then they can conduct the case in a “neutral” venue.

            1. 2.1.1.1.1.1

              Your statement of, “avoiding a venue that has proven itself to be protection racket operating within the justice system.” is beyond false.

              You show yourself to be a lackey of the Efficient Infringers, as the opposite of your assertion is true.

              Having a forum treat the patent right properly IS a neutral forum.

              Further, you sidestepped my point as those seeking to dodge the venue are most definitely STILL obtaining the benefit of doing business IN that venue.

            2. 2.1.1.1.1.2

              It’s about avoiding a venue that has proven itself to be protection racket operating within the justice system.
              That’s a serious allegation with no facts to buoy it.

              You want a protection racket, look at the USPTO. They give out patents and then happily take companies money to invalidate supposedly ‘wrongly-granted’ patents.

              Then they can conduct the case in a “neutral” venue.
              Neutral? I’m glad you put that one in quotes. I suspect that a very large percentage of changes in venue requests are headed to NDCal, which is hardly a neutral venue. Judges there rarely encounter a patent that they don’t automatically think is invalid to begin with. But would anyone expect otherwise? NDCal is the home court of big tech.

              1. 2.1.1.1.1.2.1

                Yeah. I don’t think I disagree with what you are saying.

            3. 2.1.1.1.1.3

              David you are correct. In products that are available nationwide, the fact that some products make their way to the WDTX is irrelevant as a matter of law to a motion to transfer venue. Rather, the focus is on, among other things, the location of the witnesses. If the venue is clearly inconvenient (e.g., no witnesses reside in the forum, but most or all of them reside in another forum), then the case should be transferred. Anon appears to be conflating issues of personal jurisdiction with issues of convenient venue. Anon’s logic taken to its extreme would mean that, for example, Nike could get sued for patent infringement in Alaska just because one can purchase Nike shoes there.

              1. 2.1.1.1.1.3.1

                I am not conflating – as I make clear below.

                And yes, if Nike is going to take advantage of the benefit of obtaining money by doing business in Alaska, then they should be willing to accept the risk of suit there.

                Why in the world would you think it equitable to have it any other way?

                Don’t want that risk? Don’t take that benefit.

                1. Perhaps that seems fair to you, but that’s not the way the legal system works, and it’s not what is at issue in this case, nor why this case was decided this way.

        2. 2.1.1.2

          > as much as having an office or employees in the district.

          In all of these cases, there was an office or employee in the district i.e., venue was proper. These cases are about a transfer despite that local presence.

          1. 2.1.1.2.1

            Let me leave no confusion that I am pushing for a change — when the notion of ‘convenience’ obliterates the notion of equity, something ought to change.**

            ** as well as the societal changes in light of COVID and remote technology.

  3. 1


    This is already quite a high standard that provides substantial discretion to the district court. But, the mandamus standard is even higher and requires an extraordinary situation involving clear error and substantial resulting harm that cannot be resolved later on appeal.

    So is THIS the Circuit precedent that the CAFC must adhere to (rather than its own desired Ends)…?

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