Posts Tagged: "writ of mandamus"

Raytheon, Nokia and Ericsson all filed briefs with the Federal Circuit encouraging the court to decline the Cray mandamus on a motion to transfer from EDTX… Cray is asking the Federal Circuit to decide two issues: did the Eastern Texas court err in holding that a “regular and established place of business” need not be a physical presence; and did the district court err in determining that the residence of a single work-from-home employee constitutes a “regular and established place of business” of his employer.

In the U.S. Supreme Court case of TC Heartland LLC v. Kraft Foods Grp. Brands LLC, venue in patent infringement cases are governed by 28 U.S.C. § 1400(b), which states that patent infringement suits can be brought in the district where the defendant “resides” or where the defendant has committed acts of infringement and has a regular and established place of business.

The Federal Circuit granted a mandamus petition filed by Google and ordered a Texas federal court to transfer a patent infringement case to a federal court that covers Silicon Valley as requested by Google. This extraordinary remedy was delivered in the form of a non-precedential opinion authored by Chief Judge Prost and joined by Judge Lourie. Despite the Federal Circuit’s designation of the decision as non-precedential the Court should be prepared for the onslaught of mandamus petitions that will now be filed given that they have shown a willingness to step in and re-weigh transfer factors de novo.

As a threshold matter, the Court considered whether it had jurisdiction over the writ of mandamus. The Court noted the America Invents Act broadened its jurisdiction to cases including compulsory counterclaims “arising under” patent. Here, the Court found that the patent infringement counterclaims were compulsory because Rearden’s infringement counterclaim shared a critical factual dispute with its claims regarding ownership and rightful use of the technology claimed in the MOVA patents. Therefore, the Court found it did have jurisdiction over the writ of mandamus.

On Friday, March 18, 2016, in a one paragraph Order that for some reason is not available on the Court’s website, the United States Court of Appeals for the Federal Circuit denied that mandamus petition. The Court took the position that Trading Technologies simply has to go through the entire exercise of defending the ‘304 patent during a CBM review and then at the end they will circle back and determine whether the CBM should have been instituted in the first place. As if spending $1 million or more to defend a patent from a bogus challenge that never should have been instituted in a tribunal that clearly doesn’t have jurisdiction is no big deal. It just makes the Judges seem out of touch with the financial realities facing patent owners.

Seeking to push this issue to a head sooner rather than later, Technology Trading International, the owner of the ‘304 patent, has recently filed a Petition for Writ of Mandamus with the United States Court of Appeals for the Federal Circuit. As the mandamus petition explains, the ‘304 patent has been the subject of serial CBM petitions. They are challenging the institution of this CBM because the ‘304 patent is clearly not a business method patent.