In re HTC Corp.
889 F.3d 1349
| Fed. Cir. | 2018Background
- Respondents (3G Licensing, Orange, KPN) sued HTC Corporation (Taiwanese) and HTC America (U.S. subsidiary) for patent infringement in D. Del.; HTC moved to dismiss for improper venue (Rule 12(b)(3)) or transfer (§§1404(a), 1406(a)).
- District court held venue improper as to HTC America but proper as to foreign HTC Corporation; Respondents then voluntarily dismissed HTC America from the suit.
- HTC petitioned this court for a writ of mandamus directing dismissal of the claims against foreign HTC Corporation for improper venue.
- The Federal Circuit reviews mandamus under Cheney/Kerr: (1) no adequate alternative remedy, (2) clear and indisputable right to relief, (3) discretion that issuance is appropriate.
- Central legal question: whether the 2011 amendments to 28 U.S.C. §1391 altered the long-standing rule (from Hohorst/Brunette) that federal venue statutes do not restrict venue against alien defendants, so that §1400(b) (patent venue) now applies to foreign corporations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether mandamus is warranted to immediately resolve HTC's improper-venue motion | HTC: immediate relief is needed to avoid litigating in alleged improper forum | Respondents: mandamus is extraordinary; appeal after final judgment is adequate | Denied — appeal provides adequate remedy for §1406 venue challenges in ordinary cases, so mandamus inappropriate |
| Whether §1391(c) (2011) abrogated the alien-venue rule from Hohorst/Brunette | HTC: 2011 amendments make foreign entities "residents" for venue, bringing aliens into general venue rules and allowing use of §1400(b) | Respondents: 2011 changes were limited (e.g., permanent resident aliens) and did not abolish the centuries-old rule for foreign corporations | Denied — Brunette/Hohorst remain controlling; statutes and legislative history do not clearly show Congress intended to discard alien-venue rule for foreign corporations |
| Whether §1400(b) governs patent venue for alien defendants | HTC: if aliens are covered by §1391(c), §1400(b) as exclusive patent-venue statute should apply | Respondents: §1400(b) never intended to shield aliens; applying it to aliens would create a venue gap | Held: §1400(b) does not displace the alien-venue principle; applying HTC’s view could create impermissible venue gaps, so Brunette controls |
| Whether the district court erred in relying on Brunette and §1391(c)(3) to find venue proper | HTC: Brunette relied on outdated text and should not control after 2011 amendments | Respondents: Brunette is binding and the 2011 amendments did not change its premise | Held: District court correctly relied on Brunette; HTC failed to show a clear and indisputable right to mandamus relief |
Key Cases Cited
- Cheney v. U.S. Dist. Court for D.C., 542 U.S. 367 (2004) (sets mandamus prerequisites and standards)
- Kerr v. U.S. Dist. Court for N. Dist. of Cal., 426 U.S. 394 (1976) (mandamus as extraordinary remedy; no adequate substitute rule)
- Brunette Machine Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706 (1972) (reaffirmed that venue statutes do not restrict suits against aliens)
- In re Hohorst, 150 U.S. 653 (1893) (original articulation that venue statutes did not govern suits against alien defendants)
- TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) (interpreting patent venue statute relationship to general venue rules; discussed but not disruptive of Brunette)
- In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017) (mandamus jurisprudence on §1406(a) venue challenges)
- In re Micron Tech., Inc., 875 F.3d 1091 (Fed. Cir. 2017) (mandamus standards for venue transfer/ dismissal)
- In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011) (reluctance to expand mandamus to interlocutory venue orders)
- Bankers Life & Cas. Co. v. Holland, 346 U.S. 379 (1953) (mandamus inappropriate for improper-venue rulings; appeals adequate)