September 22, 2023

by Dennis Crouch

The U.S. Courtroom of Appeals for the Federal Circuit lately declined to situation a writ of mandamus directing the U.S. District Courtroom for the Jap District of Texas (Decide Gilstrap) to dismiss a patent infringement lawsuit in opposition to Constitution Communications based mostly upon improper venue. In re Constitution Commc’ns, Inc., No. 2023-136 (Fed. Cir. Sept. 5, 2023). Though non-precedential, the choice highlights a key distinction between motions to dismiss for improper venue below 28 U.S.C. § 1406 and motions to switch venue for comfort below 28 U.S.C. § 1404. It additionally reveals the excessive bar for acquiring the “extraordinary treatment” of mandamus aid from denial of an improper venue movement.

The same old rule for appeals is that events should wait till closing judgment.  Assuming that it loses on the deserves, Constitution can have one other alternative to attraction venue as soon as the case is concluded.

Background: Entropic sued Constitution for infringing a number of of its patents, together with US10135682.  The patents cowl numerous features of cable community administration, specializing in Cable Modem Termination Methods (CMTS) that serve a number of cable modems. The CMTS determines numerous Sign-to-Noise Ratio (SNR) associated metrics for these modems and assigns them to completely different service teams based mostly on these metrics.

Though Constitution derives substantial income from prospects positioned within the Jap District of Texas, it nonetheless moved to dismiss the case for improper venue below § 1400(b), arguing it lacked a daily and established place of job in that district.  This statute limits the areas the place patent infringement lawsuits might be filed.

1400(b) Any civil motion for patent infringement could also be introduced within the judicial district the place the defendant resides, or the place the defendant has dedicated acts of infringement and has a daily and established place of job.

Id.  The Supreme Courtroom has interpreted this statute to restrict actions in opposition to firms to both (1) their state of incorporation or (2) a district the place the defendant “has a daily and established place of job” and likewise infringes the patent by making, utilizing or promoting the invention.   Constitution is a Delaware firm and doesn’t function its personal retail shops within the Jap District.  Nonetheless, the district courtroom denied the movement to dismiss, discovering venue was correct as a result of Constitution ratified retail shops operated by its subsidiaries within the district and people subsidiaries have been Constitution’s brokers.

Improper vs. Inconvenient Venue

There is a crucial distinction between improper venue below § 1400(b) and inconvenient venue below § 1404(a). Part 1400 applies when venue is “fallacious” or “improper” within the chosen district. If venue is improper, the district courtroom should dismiss the case or switch it to a correct district.  And, if a case goes to conclusion in an improper venue, a dropping defendant would have a possibility to attraction and not less than get a brand new trial in a correct venue.

In distinction, § 1404 permits switch “[f]or the comfort of events and witnesses” even when venue is correct. Courts have higher discretion in deciding § 1404 switch motions based mostly on case-specific components like comfort and judicial financial system.  And, by the top of a trial, it’s nearly by no means “handy” to retry the case in one other venue.  Thus, post-trial part 1404 appeals are principally automated losers.

Thus, despite the fact that “fallacious venue” seems like a much bigger deal than “inconvenient venue” the Federal Circuit has traditionally solely granted quick mandamus actions for the latter.  The distinction right here is that, absent mandamus, the inconvenient venue situation can’t virtually be appealed.

Mandamus Requirements

The get together in search of a writ of mandamus should present (1) no different ample means to achieve aid; (2) a transparent and indeniable proper to issuance of the writ; and (3) the writ is acceptable below the circumstances. Cheney v. U.S. Dist. Ct. for D.C., 542 U.S. 367 (2004).  Up to now, the courtroom has instructed that 1400(b) points are unlikely to result in mandamus aid as a result of “post-judgment attraction is an ample different means for attaining aid” if venue is discovered improper on attraction. In re Monolithic Energy Sys., Inc., 50 F.4th 157 (Fed. Cir. 2022).

The Federal Circuit’s Resolution

In a brief opinion authored by Decide Cunningham, the Federal Circuit denied Constitution’s petition for mandamus, discovering no justification for quick evaluate of the district courtroom’s order:

At most, CCI’s arguments current a record-specific dispute: whether or not CCI exerts management adequate to impute its subsidiaries’ in-district operations to CCI below Fifth Circuit regulation. . . . CCI’s petition doesn’t elevate the kind of broad, elementary, and recurring authorized query or different concerns that may warrant mandamus evaluate.

In re Constitution Commc’ns, Inc., (Fed. Cir. Sept. 5, 2023) (inner citations and citation marks omitted). The courtroom right here emphasised that mandamus is an “extraordinary treatment” and Constitution had not proven the district courtroom’s resolution was clearly fallacious or raised a novel authorized situation requiring immediate decision. Fairly, Constitution appeared to “current[] a record-specific dispute” about imputing its subsidiaries’ actions to Constitution for venue functions. The courtroom additionally defined that Constitution may nonetheless problem venue on direct attraction after closing judgment, which offered an ample different treatment.


The courtroom has refused to take the bait and increase mandamus aid to improper venue challenges below § 1400(b). Defendants should typically wait to attraction after closing judgment, even when venue might have been faulty. Word although that mandamus could also be nonetheless be justified for improper venue choices implicating unsettled areas of regulation or the place the get together can present a significant ensuing injustice. However disagreements about case-specific info and evaluation are unlikely to clear the excessive mandamus bar.