September 21, 2020 - Last Week in the Federal Circuit

Last Week in the Federal Circuit (September 14-18): A Tale Of Two Mandamus Petitions

While we’ll all remember last week because of Justice Ruth Bader Ginsburg’s passing, things were relatively quiet at the Federal Circuit. The Court issued just two written decisions in regular cases, two on mandamus petitions, and a handful of Rule 36 affirmances. Below we provide our usual weekly statistics and our case of the week—our highly subjective selection based on whatever case piqued our interest.

Precedential opinions: 1

Non-precedential opinions: 1, plus two non-precedential orders on mandamus petitions

Rule 36: 4

Longest and shortest pending case from argument: Ramirez v. DHS, No. 19-1534 (Sept. 15, 2020) (221 days) (all other cases were submitted on the briefs or affirmed by Rule 36 judgment).

Cases of the week: In re HP Inc., No. 20-140 (Sep. 15, 2020); In re Google LLC, No. 20-144 (Sep. 18, 2020)

Panel: In re HP—Judges Newman, Lourie, and Hughes, with an unsigned per curiam opinion; In re Google—Judges Reyna, Wallach, and Chen, with Judge Reyna writing the opinion.

You should read these cases if: you’re seeking mandamus on venue grounds.

Given the light week at the Federal Circuit (just one precedential decision in a case from the MSPB), we decided to focus on two orders involving mandamus petitions on venue grounds. The Court granted one petition and denied the other.

The grant was in HP, in which HP and its codefendants had moved to transfer venue from the Eastern District of Texas to the Northern District of California under 28 U.S.C. § 1404(a). They argued that HP employees with relevant knowledge were located in California, not Texas, and that only the California district court could compel third parties with relevant information to disclose that information. They also argued that the California court was already familiar with the technology because it had overseen a prior case involving one of the asserted patents.

Yet the Texas district court (Judge Mazzant presiding) denied the transfer motion. It reasoned in part that, although some witnesses and physical evidence was in California, more were in Taiwan making Texas and California equally inconvenient. The district court also reasoned that it had already gained familiarity with the case and issues in deciding the defendants’ personal jurisdiction challenge, which it held weighed against transfer.

The Federal Circuit held that HP was entitled to mandamus. It applied the standard mandamus factors—the petitioner must show it has “a clear and indisputable legal right” to relief, it lacks “any other method of obtaining relief,” and the “writ is appropriate under the circumstances.” But the Court said that “[i]n the transfer context, these requirements coalesce into one, because the possibility of an appeal after judgment is not an adequate remedy and mandamus is deemed an appropriate vehicle to correct patently erroneous transfer determinations.”

Applying Fifth Circuit law on the factors for a Section 1404(a) transfer, the Court held that the district “court’s decision lies far outside the boundaries of a reasonable exercise of discretion.” In considering the location of evidence and witnesses, the district court wrongly considered evidence and witnesses in Taiwan even though Fifth Circuit law commands courts to compare only those in either the transferee or transferor forum. The district court also erred in weighing against transfer its familiarity with the case gained while deciding personal jurisdiction because motions to transfer must be judged “based on the situation which existed when suit was instituted.” These and other errors convinced the Federal Circuit to grant mandamus.

The Court denied mandamus three days later in Google. Although the issue there was again venue, Google based its challenge on improper venue under 28 U.S.C. § 1400(b) rather than convenience grounds. The plaintiff had argued venue was proper in the Eastern District of Texas (Judge Gilstrap presiding) because Google had an agreement with a third party “to warehouse, refurbish, repair, and ship Google hardware products” from the third party’s Texas facility. Google argued that was insufficient to show an agency relationship creating a "regular and established place of business." Although the Federal Circuit commented that “Google raises viable arguments” and that the Court was “concerned that the district court did not move more quickly to resolve Google’s motion,” it still denied the petition. Without explaining, it concluded that Google failed to show a “clear and indisputable” right to relief and that “Google can obtain meaningful review of the district court’s venue ruling after final judgment.”

Although the Court's reliance in Google on the availability of later review seems at odds with its apparent blanket statement in HP about the unavailability of review after judgment, the better reading is that HP’s statement must be read in context. The Court likely meant that convenience transfer motions are effectively unreviewable on appeal because of the high bar to showing prejudice from the lack of transfer. In contrast, a properly preserved lack-of-venue challenge is not subject to harmless-error analysis, making it reviewable on appeal after a trial. The irony is that, although lack of venue is non-discretionary and so seems like a stronger challenge than convenience, that strength makes it a harder issue to raise via mandamus, at least because it raises the bar for showing later review is unavailable.

Samuel B. Goldstein co-authored this article as an associate in our Appellate + Supreme Court practice before departing the firm for a judicial clerkship.