Posts Tagged: "venue"

More Mandamus Maneuvering at the CAFC in Latest Venue Transfer Win for Apple

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Apple’s petition for a writ of mandamus asking the court to direct the U.S. District Court for the Western District of Texas to transfer a case brought by BillJCo, LLC to the Northern District of California. BillJCo owns six patents directed to beacon technology, with Bill Johnson and his son Jason Johnson, who lives in Waco, Texas, named as inventors or co-inventors. The suit was brought against Apple for infringement based on its iBeacon protocol. Apple argued that it “researched, designed, and developed the accused technology from its headquarters within the [Northern District of California]; that evidence and witnesses would likely be in Northern California; and that neither BillJCo nor this litigation had any meaningful connection to Western Texas.”

Federal Circuit Continues Transfer Trend, Orders Gilstrap to Send Google and Samsung Cases to Northern California

On May 23, the U.S. Court of Appeals for the Federal Circuit issued an order in In re: Google, LLC granting petitions by Google, Waze and Samsung seeking writs of mandamus to direct the Eastern District of Texas to transfer a trio of patent infringement suits brought by patent owner AGIS Software Development to the Northern District of California. Although the Federal Circuit’s order is non-precedential, it continues the appellate court’s recent penchant for exercising mandamus relief in venue issues that some commentators have found questionable, at best.

Federal Circuit Further Defines the Scope of Patent Venue

Recently, in In Re: Volkswagen Group of America, Inc., the United States Court of Appeals for the Federal Circuit (CAFC) further defined the level of control a defendant must exercise over an in-district agent to establish patent venue – i.e., where a case can be filed. The Federal Circuit held that the requisite control a principal must establish over its alleged agent in order to establish venue is “interim control”: day-to-day control over the manner of carrying out the specific actions for which the alleged agency relationship exists. Accordingly, in reversing the lower court, the Federal Circuit held that the dealerships in question were not agents of Hyundai or Volkswagen for the purposes of selling cars to consumers and providing warranty services. 

CAFC Corrects Albright on Transfer Again, Granting Mandamus to Volkswagen and Hyundai

Just as some sources had begun to speculate that Judge Alan Albright had received the United States Court of Appeals for the Federal Circuit’s (CAFC’s) message on transfer—in light of a slew of decisions reversing his refusals to move cases out of his court—the CAFC yesterday granted two more petitions for mandamus relief, holding the United States District Court for the Western District of Texas clearly abused its discretion in not granting a change of venue.

In December 2020, StratosAudio, Inc. (Stratos) filed patent infringement complaints in the Western District of Texas against Volkswagen and Hyundai (the Petitioners) which are incorporated in New Jersey and California, respectively. The two cases were consolidated on appeal. Since both Volkswagen and Hyundai reside outside of the Western District of Texas, the two companies moved to dismiss or transfer the cases under 28 U.S.C. §1406(a) and Federal Rule of Civil Procedure 12(b)(3).

CAFC Grants Mandamus on Netflix Motion to Transfer Out of Gilstrap’s Court

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Netflix, Inc.’s Petition for Writ of Mandamus to transfer a case brought against it by CA Inc. and Avago Technologies from Judge Rodney Gilstrap’s Eastern District of Texas court to the Northern District of California. The Order is the latest in a series of decisions from the CAFC censuring Texas courts for their refusal to transfer cases. In today’s ruling, the CAFC said the district court’s denial of transfer was a clear abuse of discretion and ordered the court to transfer the case, but did not address Netflix’s motion to dismiss the case for lack of venue.

Federal Circuit Affirms Dismissal of Celgene’s Hatch-Waxman Suit Against Mylan, Clarifying Venue and Pleading Requirements

On November 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in Celgene Corp. v. Mylan Pharmaceuticals Inc. affirming a ruling of the District of Delaware, which dismissed a Hatch-Waxman lawsuit against related Mylan entities for either improper venue or failure to state a claim upon which relief could be granted. In issuing the decision, the Federal Circuit found that Mylan’s submission of a notice letter to Celgene regarding Mylan’s paragraph IV certification to the U.S. Food and Drug Administration (FDA) stating that Mylan’s generic version of the multiple myeloma treatment Pomalyst would not infringe Celgene’s patents was not itself an act of infringement for purposes of the patent venue statute.

CAFC Grants Mandamus to Apple on Petition to Vacate Albright’s Intra-District Re-Transfer

On Friday, October 1, the U.S Court of Appeals for the Federal Circuit (CAFC) ordered the latest in a series of recent grants of petitions for writ of mandamus, ordering Judge Alan Albright’s court to vacate its decision to re-transfer a case between Apple and Fintiv  from Austin, Texas back to Waco, Texas. Fintiv originally filed the case in the Waco division of the U.S. Court of Appeals for the Western District of Texas in December 2018, and in September 2019 the district court granted-in-part Apple’s motion to transfer the case to Austin. The court denied Apple’s request to transfer the case to the Northern District of California, but agreed that Austin was more convenient. The trial was scheduled to begin in October 2021, but in September, the court ordered transfer back to Waco, explaining that the COVID-19 pandemic had suspended jury trials for the forseeable future.

CAFC Grants Mandamus Relief to Juniper Networks in Latest Directive to Albright on Transfer

On Friday, September 24, the United States Court of Appeals for the Federal Circuit (CAFC) granted Juniper Networks, Inc.’s petition for a writ of mandamus directing Judge Alan Albright of the United States District Court for the Western District of Texas (WD of TX) to transfer six actions to the United States District Court for the Northern District of California, holding that denying the motion to transfer constituted a legal error. The Federal Circuit has repeatedly granted such mandamus petitions from the WD of TX, or ordered Albright to reconsider denials of motions to transfer, in recent months.

CAFC Affirms Improper Venue Ruling in Victoria’s Secrets’ Favor

On August 3, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Eastern District of Texas’ partial grant of Victoria’s Secret Stores LLC, Victoria’s Secret Stores Brand Management Inc, and Victoria’s Secret Direct Brand Management’s (the Defendants) motion to dismiss Andra Group, LP’s (Andra’s) patent infringement suit for improper venue. In April 2019, Andra sued the Defendants for infringement of U.S. Patent No. 8,078,498 (‘498 patent), which claims inventions directed to presenting articles on a webpage. Andra’s infringement claims focus on the victoriassecret.com website, and other functional smartphone applications for using the “master display field,” which the ‘498 patent claims.

Federal Circuit: Clear Attempts to Manipulate Venue Won’t Defeat Motions to Transfer

The U.S. Court of Appeals for the Federal Circuit (CAFC) in In re Samsung today granted Samsung’s and LG’s writs of mandamus, which sought to order the United States District Court for the Western District of Texas to transfer the underlying actions to the United States District Court for the Northern District of California. The CAFC explained that the district court erred in failing to consider pre-litigation tactics by Ikorongo Technology LLC (Ikorongo Tech) and Ikorongo Texas LLC aimed at purposely manipulating venue in the case.

Federal Circuit Grants Apple Petition for Writ of Mandamus to Transfer Uniloc Suit

On November 9, the Federal Circuit granted Apple’s petition for a writ of mandamus directing the Western District of Texas to transfer Uniloc’s patent infringement suit against Apple to the Northern District of California. Judge Moore dissented, asserting that the majority applied an incorrect standard of review.

Federal Circuit Vacates District Court Decision to Retain Second Filed Case in Overlapping Cases

On October 28, the United States Court of Appeals for the Federal Circuit (CAFC) granted a petition for a writ of mandamus directing the United States District Court for the Western District of Texas in In re: Nitro Fluids, L.L.C. In particular, Nitro Fluids petitioned the CAFC for a writ of mandamus directing the district court to dismiss an action or transfer it to the United States District Court for the Southern District of Texas, where an overlapping case was pending. The CAFC granted the petition to the extent that it vacated the district court’s order and directed the district court to conduct further proceedings consistent with the CAFC’s order.

Small Town Venue to Cosmopolitan City: What Is Waco’s ED of Texas Equivalent?

As outlined in Part I of this two-part article, Waco, Texas residents exude a more western mentality than Marshall’s residents. The small town that once served as a pit stop between Dallas and Austin has turned into its own charming cosmopolitan city, serving almost as a bedroom community for those with periodic work in Dallas and Austin…. Instead of attorneys comparing Marshall to Waco, they would be more accurate to compare the Sherman division’s Denton and Collin counties to the Waco division. Comprising about 80% of panelists in a Sherman division jury selection, jurors from both Denton and Collin counties exude a more western independent mentality than other Eastern District of Texas (EDTX) jurors. Denton and Collin counties have recently transitioned from ranching and farming into commuter suburbs a couple of decades ago, and now the counties have their own stand-alone cosmopolitan and sporting areas. Although lacking the diversity of the Sherman division, over time the Waco division’s growth will likely align it more closely to the Sherman division—a division much more friendly to defendants than Marshall.   

CAFC Affirms Sanctions Entered Against Overly Litigious Doctors

On August 13, the United States Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Northern District of Illinois in Kahn v. Hemisphere Inc, holding that “the district court did not abuse its discretion in dismissing the action, granting the defendants’ sanctions motion, denying the Khans’ sanctions motion, or denying Merit Medical’s motion for attorney fees under § 285.” Drs. Nazir Khan and Iftikhar Khan filed an action against Hemosphere Inc., CryoLife Inc., and Merit Medical Systems, Inc., and over 300 hospitals and individual physicians, for infringing a claim of U.S. Patent No. 8,747,344, which was directed to an arteriovenous shunt, by “manufacturing or implanting into patients the accused HeRO® Graft shunt.” The Khans sent a waiver of service of summons form and a copy of the complaint to the over 300 defendants, but only three returned a completed waiver form. The district court dismissed without prejudice the Kahns’ claims against Merit Medical, CryoLife, and three physicians  for  improper  venue because “the Khans had not contended that any of these defendants resided in the Northern District of Illinois, and the Khans had failed to plausibly allege that any of them infringed the asserted claim in the district and had a ‘regular and established place of business’ in the district.”

Are Machines ‘Agents’ for Purposes of the Patent Venue Statute? (Part II)

Part I of this article provided an overview of the Federal Circuit’s understanding of the patent venue statute after the Supreme Court’s decision in TC Heartland, and especially the meaning of In re: Google LLC, 949 F.3 1338 (Fed. Cir. 2020) (“SIT”) in this analysis. Part II of the article will address the impact that “machines” may be considered a factor in the analysis of whether venue in a patent infringement can be asserted in a particular location, as raised by the court in Personalized Media Communications LLC v. Google, Netflix, 2:19-CV-00090-JRG (Lead Case). As more and more companies move at least part of their operations online, especially now in response to the COVID-19 crisis, companies, as part of this process, should consider whether this will increase the chances that they will be sued in a district that they regard as unfavorable.