by Dennis Crouch
The U.S. Court of Appeals for the Federal Circuit recently declined to issue a writ of mandamus directing the U.S. District Court for the Eastern District of Texas (Judge Gilstrap) to dismiss a patent infringement lawsuit against Charter Communications based upon improper venue. In re Charter Commc’ns, Inc., No. 2023-136 (Fed. Cir. Sept. 5, 2023). Although non-precedential, the decision highlights a key difference between motions to dismiss for improper venue under 28 U.S.C. § 1406 and motions to transfer venue for convenience under 28 U.S.C. § 1404. It also shows the high bar for obtaining the “extraordinary remedy” of mandamus relief from denial of an improper venue motion.
The usual rule for appeals is that parties must wait until final judgment. Assuming that it loses on the merits, Charter will have another opportunity to appeal venue once the case is concluded.
Background: Entropic sued Charter for infringing several of its patents, including US10135682. The patents cover various aspects of cable network management, focusing on Cable Modem Termination Systems (CMTS) that serve multiple cable modems. The CMTS determines various Signal-to-Noise Ratio (SNR) related metrics for these modems and assigns them to different service groups based on these metrics.
Although Charter derives substantial revenue from customers located in the Eastern District of Texas, it still moved to dismiss the case for improper venue under § 1400(b), arguing it lacked a regular and established place of business in that district. This statute limits the locations where patent infringement lawsuits can be filed.
1400(b) 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.
Id. The Supreme Court has interpreted this statute to limit actions against corporations to either (1) their state of incorporation or (2) a district where the defendant “has a regular and established place of business” and also infringes the patent by making, using or selling the invention. Charter is a Delaware company and does not operate its own retail stores in the Eastern District. Still, the district court denied the motion to dismiss, finding venue was proper because Charter ratified retail stores operated by its subsidiaries in the district and those subsidiaries were Charter’s agents.
Improper vs. Inconvenient Venue
There is an important distinction between improper venue under § 1400(b) and inconvenient venue under § 1404(a). Section 1400 applies when venue is “wrong” or “improper” in the chosen district. If venue is improper, the district court must dismiss the case or transfer it to a proper district. And, if a case goes to conclusion in an improper venue, a losing defendant would have an opportunity to appeal and at least get a new trial in a proper venue.
In contrast, § 1404 allows transfer “[f]or the convenience of parties and witnesses” even when venue is proper. Courts have greater discretion in deciding § 1404 transfer motions based on case-specific factors like convenience and judicial economy. And, by the end of a trial, it is almost never “convenient” to retry the case in another venue. Thus, post-trial section 1404 appeals are basically automatic losers.
Thus, even though “wrong venue” sounds like a bigger deal than “inconvenient venue” the Federal Circuit has historically only granted immediate mandamus actions for the latter. The difference here is that, absent mandamus, the inconvenient venue issue cannot practically be appealed.
Mandamus Standards
The party seeking a writ of mandamus must show (1) no other adequate means to attain relief; (2) a clear and indisputable right to issuance of the writ; and (3) the writ is appropriate under the circumstances. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004). In the past, the court has suggested that 1400(b) issues are unlikely to lead to mandamus relief because “post-judgment appeal is an adequate alternative means for attaining relief” if venue is found improper on appeal. In re Monolithic Power Sys., Inc., 50 F.4th 157 (Fed. Cir. 2022).
The Federal Circuit’s Decision
In a short opinion authored by Judge Cunningham, the Federal Circuit denied Charter’s petition for mandamus, finding no justification for immediate review of the district court’s order:
At most, CCI’s arguments present a record-specific dispute: whether CCI exerts control sufficient to impute its subsidiaries’ in-district operations to CCI under Fifth Circuit law. . . . CCI’s petition does not raise the type of broad, fundamental, and recurring legal question or other considerations that might warrant mandamus review.
In re Charter Commc’ns, Inc., (Fed. Cir. Sept. 5, 2023) (internal citations and quotation marks omitted). The court here emphasized that mandamus is an “extraordinary remedy” and Charter had not shown the district court’s decision was clearly wrong or raised a novel legal issue requiring prompt resolution. Rather, Charter seemed to “present[] a record-specific dispute” about imputing its subsidiaries’ activities to Charter for venue purposes. The court also explained that Charter could still challenge venue on direct appeal after final judgment, which provided an adequate alternative remedy.
Conclusions
The court has refused to take the bait and expand mandamus relief to improper venue challenges under § 1400(b). Defendants must generally wait to appeal after final judgment, even if venue may have been erroneous. Note though that mandamus may be still be justified for improper venue decisions implicating unsettled areas of law or where the party can show a major resulting injustice. But disagreements about case-specific facts and analysis are unlikely to clear the high mandamus bar.
What if the petitioner demonstrates they can only afford to pay for one trials? Or what if they demonstrate harm from an additional 3-5 years of duplicative litigation. Would that qualify for mandamus relief?
Thus, even though “wrong venue” sounds like a bigger deal than “inconvenient venue” the Federal Circuit has historically only granted immediate mandamus actions for the latter.
Which seems utterly backward.
It “seems” even worse that that when one remembers that “inconvenient” is a statutorily DISCRETIONARY provision (coupled with the writ provision “
(2) a clear and indisputable right to issuance of the writ”).
Clear and indisputable… to a discretionary item… (that discretion is discretion OF THE Court – not the parties)
What if the petitioner demonstrates they can only afford to pay for one trials? Or what if they demonstrate harm from an additional 3-5 years of duplicative litigation. Would that qualify for mandamus relief?
Perhaps a ‘point’ under victimhood, but that level of equity is not covered under the legal concept of mandamus.
I don’t think it’s really correct, either. Some important section 1400 venue cases have arisen out of mandamus in the last few years. TC Heartland was a mandamus, and there have been a few major mandamus decisions post-TC Heartland. In re Cray, In re Volkswagen.
The difference between those cases and this case seems to be that this case is about an application of 5th Circuit law on agency for purposes of jurisdiction/venue, whereas those other cases had broader questions about the interpretation of 1400 in new/unique circumstances.
But also, I think it is correct that improper venue is able to be remedied on appeal effectively (because it is per se harmful error) whereas inconvenient venue is less able to be remedied (because it is often not a harmful error), so it does make sense that a fact-bound inquiry like this one is not amenable to mandamus
^^^ is this a case of missing the forest for the trees?
Not a close call. Not nearly. Surprising that Charter even bothered.
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