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No Remote Working Mandamus Yet

Posted by James Juo | Oct 04, 2022 | 0 Comments

A writ of mandamus may be filed to appeal a district court's refusal to dismiss or transfer a patent lawsuit based on venue. But the nature of mandamus relief is limited.

For venue disputes under 28 U.S.C. § 1400(b) for patent cases, mandamus is available where immediate intervention is necessary to assure proper judicial administration. See, e.g., In re ZTE (USA) Inc., 890 F.3d 1008, 1011 (Fed. Cir. 2018); In re BigCommerce, Inc., 890 F.3d 978, 981 (Fed. Cir. 2018); In re Micron Tech., Inc., 875 F.3d 1091, 1095 (Fed. Cir. 2017); In re Cray, Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). Mandamus may be justified where the disputed venue ruling implicates a “basic, unsettled, recurring legal issue[] over which there is considerable litigation producing disparate results.” Micron, 875 F.3d at 1095.

But, “[o]rdinarily, mandamus relief is not available for rulings on [improper venue] motions under 28 U.S.C. § 1406(a)” because post-judgment appeal is often an adequate alternative means for attaining relief. In re Volkswagen Grp. of Am., Inc., 28 F.4th 1203, 1207 (Fed. Cir. 2022) (citing In re HTC Corp., 889 F.3d 1349, 1352–53 (Fed. Cir. 2018)).

For patent venue, the issue often is whether a defendant has sufficiently ratified a place of business to make it its own. Cray, 871 F.3d at 1360. A causal relationship between a defendant's regular and established place of business and the acts of infringement, however, is not required under Section 1400(b). See In re Google, No. 2018-152, 2018 WL 5536478, at *3 (Fed. Cir. Oct. 29, 2018).

Monolithic Venue Based on Remote Workers

A developing issue is whether the home of a remote employee may be imputed to a defendant for purposes of finding proper venue. At present, this issue is not well-settled enough to show a clear and indisputable right to mandamus relief. In re Monolithic Power Sys., Inc., No. 2022-153, __ F.4th __ (Fed. Cir. Sept. 30, 2022).

Monolithic petitioned for a writ of mandamus to review a refusal to dismiss or transfer a patent infringement lawsuit from the Western District of Texas to the Northern District of California. Monolithic had moved to dismiss or transfer for lack of venue under Federal Rule of Civil Procedure 12(b)(3), arguing that it is a Delaware corporation that does not own or lease any property in the Western District of Texas, and that the homes of its four full-time remote employees in the Western District do not constitute a “regular and established place of business.”

          Among other things, the [Western District of Texas] noted that one employee, Jason Bone, “possesses a fair amount of Monolithic's equipment, including two oscilloscopes, four to five power supplies, two electric loads, a logic analyzer, a soldering iron, a multimeter, a function generator, three to five samples of microcontrollers, MOSFETs, five op-amps, ten to fifteen comparators, twenty inductors, and fifty sample demonstration boards.” Appx6. And Monolithic provided that equipment, “which is not typically found in a generic home office,” for “the sole purpose of allowing Mr. Bone to conduct testing and validation as part of his job.” Id. Specifically, Mr. Bone uses these in-home tools and equipment to conduct validation tests for at least one of Monolithic's in-district customers. See Appx734 (cited by Pet. at 15); cf. In re Cordis Corp., 769 F.2d 733, 735, 737 (Fed. Cir. 1985) (finding venue proper in district where defendant's employees stored defendant's “literature, documents and products” in their in-district homes rather than in a separately leased or owned warehouse of the defendant); Celgene Corp. v. Mylan Pharms. Inc., 17 F. 4th 1111, 1124 (Fed. Cir. 2021) (finding venue improper where defendant's employees chose to rent storage lockers to store defendant's product samples with no evidence that defendant “established or ratified” said lockers).


          [It] may well be correct that the issue of imputing employee homes to a defendant for purposes of venue will become an issue of greater concern given the shift to remote work. But, in our view, at present, the district court's ruling does not involve the type of broad, fundamental, and recurring legal question or usurpation of judicial power that might warrant immediate mandamus review. As we have stated: “Not all circumstances in which a defendant will be forced to undergo the cost of discovery and trial warrant mandamus[ because t]o issue a writ solely for those reasons would clearly undermine the rare nature of its form of relief and make a large class of interlocutory orders routinely reviewable.” In re BP Lubricants USA Inc., 637 F.3d 1307, 1313 (Fed. Cir. 2011); cf. La Buy v. Howes Leather Co., 352 U.S. 249, 259 (1957) (explaining that “trial before a regular, experienced trial judge rather than before a temporary substitute appointed on an ad hoc basis and ordinarily not experienced in judicial work” was an example of “impelling reason for” mandamus relief). As is evident from other venue cases, the nature of the work that employees perform from their homes on behalf of their employers is varied. And given the nature of Mr. Bone's work in particular, it appears that this case may present an idiosyncratic set of facts. For us to be regularly drawn into such fact-laden disputes, presented at the outset of a case, often before much can be reasonably predicted about how a case will proceed and whether trial is a reasonable prospect, would be inconsistent with the limited nature of the writ of mandamus. See generally Cray, 871 F.3d at 1362 (“In deciding whether a defendant has a regular and established place of business in a district, no precise rule has been laid down and each case depends on its own facts.”); id. at 1366 (“We stress that no one fact is controlling.”). Thus, we conclude that Monolithic has not demonstrated the type of concerns that we have relied on when granting immediate mandamus review. Compare In re Google LLC, No. 2018-152, 2018 WL 5536478, at *2–*3 (Fed. Cir. Oct. 29, 2018) (denying mandamus for a venue challenge to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issues for us to review), with In re Google LLC, 949 F.3d 1338, 1342–43 (Fed. Cir. 2020) (granting mandamus for a similar challenge after a “significant number of district court decisions that adopt[ed] conflicting views” “crystallized and brought clarity to the issues”).

Because Monolithic has not shown a clear and indisputable right to mandamus relief on this venue question, the Federal Circuit declined to reach the merits of that challenge; but noted that “our conclusion should necessarily not be interpreted as a disagreement with the dissent's analysis of the ultimate merits of the venue issue.”


The dissent by Judge Lourie argued that Monolithic clearly lacked a regular and established place of business in the Western District of Texas, and that the Federal Circuit previously found venue to be improper under materially similar circumstances, citing In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017) and Celgene Corp. v. Mylan Pharms. Inc., 17 F.4th 1111 (Fed. Cir. 2021).

“Given the increased prevalence of remote work,” Judge Lourie argued that an erroneous ruling that a patent infringement suit can properly be brought based on the location of employee homes would threaten to erode the clear statutory requirement of a regular and established place of business; and an “immediate review by way of mandamus would be important to maintain uniformity of the court's clear precedent.”

The patent attorneys at Thomas P. Howard, LLC prosecute and litigate patents nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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