Patent Venue Mandamus Has Its Limits
Having just addressed several, important patent venue issues on mandamus in a trilogy of cases (see our prior posts here, here, and here), the Federal Circuit recently issued a terse opinion denying mandamus on yet another venue-related petition, stating that mandamus was unwarranted.
The case, In re Hantover, Inc., No. 2018-138, involved a patent infringement suit resolved by a 2007 settlement agreement that provided for continuing jurisdiction over the agreement before a Northern District of Ohio judge. In 2014, the plaintiff filed suit alleging breach of the agreement and infringement of the same patents that it had asserted in the original suit. The case proceeded through claim construction. Two and one half months after the Supreme Court’s landmark decision on patent venue in TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1517 (2017), the defendant moved to dismiss or transfer the case for improper venue, “arguing that it did not reside in the Northern District of Ohio within the meaning of 28 U.S.C. § 1400(b) as interpreted by TC Heartland or have a regular and established place of business in the district to warrant venue.” The district court denied the motion based on the “advanced stage” of the case and the waiver of venue “by virtue of [defendant’s] assent” to the settlement agreement. Without opining on the district court’s reasoning, the Federal Circuit concluded that the defendant did not satisfy the mandamus requirement that there be no adequate alternative to mandamus for obtaining relief: defendant “fails to sufficiently explain why raising its arguments on appeal from final judgment would be inadequate here.” In other words, venue could be appealed as part of the final judgment and, if found improper, would nullify the judgment, thus providing “adequate” relief.
Takeaway: Not all mandamus petitions are created equal. In one of its recent mandamus cases on patent venue—In re HTC Corp., No. 2018-130—the Federal Circuit seemed to be signaling that future mandamus petitioners challenging venue decisions would face a higher bar when it indicated that mandamus would not be granted merely “to avoid the inconvenience of litigation by having this [venue] issue decided at the outset of the case.” In re Hantover suggests that, at least for the time being, the usefulness of mandamus petitions as means for challenging venue under the patent venue statute may have reached its practical limit.