Mandamus Relief Denied: Federal Circuit Avoids Clarifying TC Heartland in In re Google LLC

Result: Infringing acts committed on servers stored in a third-party ISP’s facility may constitute a regular and established place of business, sufficient to satisfy venue.

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges).

SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b).

The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Google petitioned for panel rehearing and for rehearing en banc. The panel denied the petition for panel rehearing, and, after a poll of the full Federal Circuit was taken, the petition for rehearing en banc was also denied. Judge Reyna, joined by Judges Newman and Lourie, authored a dissenting opinion to the majority’s denial of Google’s petition for rehearing en banc.

Dissent Warns Against Kicking the Can Down the Road

The dissent began by noting “[m]andamus review is part of our bedrock supervisory duty as an appellate court to ensure proper judicial administration.” The dissent further noted, “[g]iven the nature of our exclusive subject-matter jurisdiction over federal questions involving patent law, this court in particular has a vital supervisory and instructional duty to further the goals of uniformity and predictability that are ‘the cornerstones of a well-functioning patent system’ and part of the reason for this court’s very existence.”

To demonstrate mandamus relief was appropriate on this issue, the dissent compared this case to In re Cray Inc., where the Federal Circuit granted mandamus relief to ensure § 1400(b) was not given an expansive construction after TC Heartland v.  Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017). Moreover, because of inconsistent case law in the district courts on this question, the dissent felt mandamus relief was appropriate. The dissent was also troubled by the fact that the panel’s original denial of mandamus relief had led to many more subsequent suits:

“The bar apparently already views the denial of the petition at the panel stage as a signal that it is safe to file more cases against Google and similar defendants in the same district. At the time of filing of the petition for rehearing, Google had been sued thirteen more times in the same district under the same venue theory since October 29, 2018, the date that we denied the petition for mandamus. [] That number now stands at thirty-four. I count that as trending.”

The dissent further explained that the district court’s holding could be read as another expansion of § 1400(b) and “essentially reestablish nationwide venue, in conflict with TC Heartland, by standing for the proposition that owning and controlling computer hardware involved in some aspect of company business (e.g., transmitting data) alone is sufficient.”

Finally, the dissent reasoned that the question would eventually be taken up by the Federal Circuit and that, by denying the question now, judicial and party resources would be wasted:

“By the time we eventually decide these questions, it is possible that dozens of cases will proceed through motion practice, discovery, claim construction, or trial before potentially getting thrown out by a reversal of a ruling on a motion to dismiss for improper venue.”


The Author

Joseph Robinson & Robert Schaffer

Joseph Robinson & Robert Schaffer  

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Joseph Robinson & Robert Schaffer

Dustin Weeks is a Partner in the intellectual property practice group at Troutman Sanders. His practice spans all areas of intellectual property law, including patent prosecution, patent litigation (including Hatch-Waxman litigation), and client counseling. He represents clients ranging from start-ups and solo inventors to Fortune 500 companies. Dustin works closely with his clients to learn their business objectives so that he can tailor strategies to procure, protect, and enforce their intellectual property. Dustin specializes in post-grant proceedings (e.g. Inter Partes Reviews) before the Patent Trial and Appeal Board (PTAB) where he has extensive experience representing both patent owners and petitioners across a wide range of technologies, including wireless networking, pharmaceuticals, MEMs devices, medical devices, and electro-mechanical consumer devices. Dustin's broad experience in patent prosecution, counseling, and patent litigation uniquely positions him to navigate the blended practice of post-grant proceedings.

For more information or to contact Dustin, please visit his Firm Profile Page.

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Discuss this

There are currently 4 Comments comments.

  1. Pro Say February 21, 2019 2:22 pm

    In the age of eCommerce, servers — at least in the case where a company like Google exercises this level of control — are indeed places of business.

    Servers do what people used to do — buy and sell products and services.

    In other words; conduct business.

    That said; for the reasons the dissent provide; the CAFC should have tackled this question now.

  2. Anon February 22, 2019 11:44 am

    Pro Say,

    As rare as it may be, I refer you to that “other blog” for some discussion vis a vis the issue here:

  3. Eric Berend February 24, 2019 2:13 pm

    @ 2., “Anon”:

    That “other blog”?? – oh, you mean, the selfsame site that has consistently auto-erased my comments, unilaterally censoring me right out of existence, over there?

    Let’s see: ‘Pro Say’, Josh, ‘anon’, ‘Night Writer’, and ‘valuationguy’ seem to have no trouble seeing their comments posted to “that other blog”.

    And then: there’s little ol’ me, apparently so threatening to the censored so-called “discourse” there, that I’m on auto-ban…having tried to post nothing but a few comments expressing inventors’ interests.

    Professor Crouch: your manifest contempt for inventors and your sycophancy for IP pirates, as an ardent advocate for infringers’ interests, is unfortunately, all too typical of the corrupt academia of America’s colleges and universities today.

    You are charged with a responsibility to not abuse the power of the authority of your exalted position in society. Instead, you devote dozens of your influential Internet blog’s articles to denigration of the inventor’s interest, and distortions and misrepresentations about the jurisprudence and the issues involved. Therefore: you, “sir”, are frankly, quite despicable.

  4. Anon February 25, 2019 10:09 am

    Eric @ 3,

    The other blog has had its share of “editorial” issues for MANY years now, and I can confirm for you that the editorial controls employed there are NOT objectively applied.

    Your case may well be more severe than most, and for that, you have my sympathies.