This past week, the Federal Circuit denied a petition for a writ of mandamus sought by RingCentral after Western District of Texas Judge Alan D. Albright rejected its renewed motion to dismiss for improper venue. RingCentral had argued that plaintiff Marble VOIP Partners LLC could not fix a venue flaw by filing an amended complaint identifying for the first time a lease for an in-district property that RingCentral signed after the date of the original complaint. The appeals court turned RingCentral away, as it has two other recent mandamus petitioners: Apple, in a case filed by Lionra Technologies Limited (involving a transfer for convenience); and Realtek Semiconductor, in one filed by ParkerVision, Inc. (involving alternative means of service).
The RingCentral Denial
Marble VOIP sued RingCentral, together with Mitel Networks, in March 2022. RingCentral challenged venue in May 2022 and then signed a lease for office space in Austin, Texas in August 2022. In late September, the plaintiff filed an amended complaint, alleging for the first time that RingCentral maintains a regular and established place of business in West Texas based on the August 2022 lease, also filing a new original complaint in the same district (which was voluntarily dismissed by early December). RingCentral filed a second motion to dismiss, arguing that proper venue must be established based on facts that exist at the time of the original complaint.
Mitel having settled out in December 2022, Judge Albright, in relatively quick succession denied RingCentral’s motion, both the request to dismiss for improper venue and the alternative request to transfer for convenience to the Northern District of California (on May 31), held a claim construction hearing (on June 2), docketed a public version of the denial (June 9), and handed down a Markman ruling (July 5).
RingCentral sought the Federal Circuit’s help on June 29, asking the appeals court to confirm that proper venue is to be determined by facts as they exist on the date of the original complaint, noting that this circumstance did not involve a plaintiff that alleged facts in its amended complaint that actually existed as of the date of the original complaint, facts that it had simply not pleaded in the earlier document. Instead, Marble VOIP pleaded in its amended complaint facts that did not even exist as of the date of the original complaint.
Judge Albright sided with Marble VOIP, stretching to cover the current situation a Federal Circuit ruling (in In re Samsung) that facts pleaded in an amended complaint, albeit facts that existed on the date of the original complaint, could be considered when assessing a convenience transfer:
The issue before the Court here admittedly differs from the issue faced in In re Samsung. In In re Samsung, the Federal Circuit only considered whether facts alleged in the amended complaint, but not alleged in the original complaint, could be considered under the threshold inquiry under § 1404(a). Id. at 1376. Here, the question is whether facts that were alleged in an amended complaint and occurred after the filing of original complaint should be considered in the venue analysis under § 1400(b). While In re Samsung does not address this issue precisely, the Court is persuaded that the analysis of the threshold inquiry under § 1404(a) and the venue analysis under § 1400(b) are analogous. The analysis of whether a case “might have been brought” in a district under § 1404(a) should reflect the analysis of whether a case was properly brought in a district under § 1400(b). See Van Dusen v. Barrack, 376 U.S. 612, 622, 624 (1964) (explaining that “where it might have been brought” within § 1404(a) reflects federal venue statutes, including § 1400(b)). Further, the Federal Circuit’s holding in In re Samsung does not suggest that facts relevant to the venue inquiry alleged in the amended complaint must have taken place before the filing of the original complaint. Thus, because the Federal Circuit determined that facts alleged in an amended complaint apply to determine whether a case “might have been brought” in the transferee forum under § 1404(a), the Court believes that facts alleged in an amended complaint should apply to determine whether venue is proper under § 1400(b).
RingCentral asked the Federal Circuit to step in and reverse Judge Albright's ruling. The appeals court refused to do so, first by laying out the standard that a petitioner for a writ, dubbed an “extraordinary remedy”, must meet. Such a petitioner must show (1) it has “no other adequate means to attain the relief [it] desires”; (2) the right to the writ is “clear and indisputable”; and (3) “the writ is appropriate under the circumstances”.
Per the court, RingCentral has another adequate means to remedy Judge Albright’s ruling: “It can seek to overturn the venue ruling on appeal after final judgment”, the court noting that “RingCentral does not point to irreparable harm that will go unaddressed if we do not grant mandamus or some important need for judicial administration that might warrant the extraordinary step of immediate review here”. Note, however, that in myriad decisions granting writs ordering Judge Albright either to revisit a flawed convenience transfer analysis or to outright transfer a case for convenience, the Federal Court has not spent much time considering whether each petitioner has “another adequate means” to remedy the denial of its motion for a convenience transfer" appeal after judgment.
Perhaps, therefore, it is the second prong that carried the day. There, the Federal Circuit seems to provide the thrust of its analysis by string citation:
Nor has RingCentral’s petition shown a clear and indisputable right to dismissal. In particular, RingCentral has not shown that the district court clearly abused its discretion in resting its venue determination on the in-district leased office space identified in Marble’s amended complaint despite the lease not existing at the time of the original complaint. See Fed. R. Civ. P. 15(a), (d); Prasco, LLC v. Medicis Pharm. Corp., 537 F.3d 1329, 1337 (Fed. Cir. 2008) (explaining that “the proper focus” is generally on “the facts existing at the time the complaint under consideration was filed” (citations omitted)); In re Samsung Elecs. Co., Ltd., 2 F.4th 1371, 1376 (Fed. Cir. 2021) (“We are unaware of any instance, and none has been called to our attention, in which a court has denied transfer based on the original complaint despite an amended complaint establishing proper venue.”); see also Mathews v. Diaz, 426 U.S. 67, 75 (1976) (indicating that even jurisdictional defects can be cured through post-complaint pleadings); Cortés-Ramos v. Martin-Morales, 956 F.3d 36, 44 (1st Cir. 2020) (same); Woods v. Ind. Univ.-Purdue Univ. at Indianapolis, 996 F.2d 880, 884 (7th Cir. 1993) (noting that corrected pleadings under Rule 15 have been uniformly applied to allow parties to “cure defective statements of jurisdiction or venue.”)
The court distinguished the 1960 US Supreme Court case on which RingCentral relied as not having involved pleading facts arising after an original complaint but pleaded for the first time in an amended complaint. The court then rejected the other basis for the writ requested with one sentence: “We will also not grant mandamus based on RingCentral’s other argument that the leased space does not constitute a ‘regular and established’ place of business”. As to RingCentral’s denied alternative request, for a convenience transfer to the Northern District of California, the court laid out the standard (“see if there was such a clear abuse of discretion that refusing transfer amounted to a patently erroneous result”), reviewed Judge Albright’s analysis in a few sentences, and denied the request.
The district court docket has been relatively quiet since Judge Albright handed down the claim construction order in early July. Trial is currently set for next June. For additional background concerning this campaign, see “Recent Mandamus Petition Addresses Proper Venue, Not Convenience” (July 2023).
The Realtek Denial
A Western District of Texas suit filed against Realtek in ParkerVision’s long-running litigation campaign was assigned to Judge Albright, who has shown remarkable flexibility recently when it comes to requests to effect alternative means of service on foreign defendants. Generally speaking, to satisfy constitutional due process concerns, plaintiffs must provide notice to any defendant of the case filed against it by “serving”—that is, formally delivering—copies of related papers on the defendant. Service on domestic entities is often simple, for example, because entities operating in a US state must identify an agent in that state to receive service of process. However, service on foreign entities can present particular challenges.
ParkerVision requested the district court clerk’s help in effectuating service on Realtek, with someone at the company’s headquarters allegedly signing for the FedEx package (containing the summons and complaint) sent by the clerk in December 2022, shortly after which Realtek returned the materials and contested service. The deadline to respond to the complaint (as calculated in light of the disputed service) passed, prompting ParkerVision to move for entry of default, Realtek to retain limited purpose counsel, and Judge Albright to deny the request for entry of default and order ParkerVision simply to serve the papers on that limited purpose counsel.
Judge Albright justified this approach to service because, per the court, ParkerVision’s earlier attempts to serve Realtek were purportedly conducted “in good faith”, and the court “desired to promote expediency in resolving the case on the merits”. In May 2023, Realtek filed a petition for a writ of mandamus from the Federal Circuit, arguing that such extraordinary relief is “warranted to settle disparate district court rulings on fundamental issues of service and due process”. Realtek sets out three questions with more particularity that it contends the Federal Circuit should take this opportunity to answer: (1) whether a Taiwanese defendant (like Realtek) may be served via “FedEx mailed by the district court clerk”; (2) whether a district court (like Judge Albright) can authorize alternative service where “more conventional means of service would be merely inconvenient”; and (3) whether a court can expand the limited purpose(s) for which counsel might be retained to effectuate such alternative service, which, per Realtek, would “have a chilling effect, with defendants refusing to engage counsel for fear of waiving their rights”.
As it did in rejecting RingCentral’s petition, the Federal Circuit first enunciated, in its mid-August denial, the standard for such “extraordinary relief”: showing that (1) it has “no other adequate means to attain the relief [it] desires”; (2) the right to the writ is “clear and indisputable”; and (3) “the writ is appropriate under the circumstances”. Here, though, the court acknowledges in a footnote an alternative basis for granting mandamus relief: “where such relief ‘is important to proper judicial administration’”. The court commented that it perceived “no ‘unusual’ and ‘exceptional’ circumstances as are necessary to warrant the exercise of our discretion to provide mandamus relief under this narrow, alternative basis”.
Considering the main standard for Realtek to meet, the court again comments that “[i]n general, a party seeking to vindicate its right not to be forced to appear before a court at all must ordinarily wait until after a final decision in order to seek appellate review”. After that note of doom, the court moves on to Realtek’s failure to show a “clear and indisputable” right to relief, noting that improper service under one subpart of Federal Rule of Civil Procedure 4 ignores other subparts of Rule 4, namely Rule 4(f)(3), which authorizes courts “to direct ‘other means’ of service as long as such means are not ‘prohibited by international agreement’”. No international agreement expressly prohibited Judge Albright’s chosen “other means” here—service on the attorney engaged on a limited basis, to contest threshold and jurisdictional issues—so, per the court, no harm and no foul.
Moreover, the Federal Circuit noted that other courts “have sanctioned service on United States counsel as an alternative means of service under Rule 4(f)(3) without requiring any specific authorization by the defendant for the recipient to accept service on its behalf”. As to Realtek’s contention that doing so violates its due process rights, the court was unmoved: “But [Realtek] has failed to show that the means of service was not reasonably calculated to provide notice of the action and afford an opportunity to respond. Realtek has not shown that it was not in communication with its attorney who appeared before the district court at the hearing, and its attorney told the district court that 30 days would be sufficient to inform Realtek to file its answer. Under such circumstances, we discern no clear and indisputable constitutional infirmity” (citations omitted).
A scheduling order in the November 2022 case that ParkerVision filed against Realtek sets trial for December 2024. Meanwhile, in May 2023, ParkerVision filed a second case against Realtek. That second suit was assigned to Judge Albright as well. Last week, Judge Albright granted ParkerVision’s motion—in the second case—to effect alternative service on Realtek. ParkerVision may do so by sending “by email and FedEx” the complaint (and other required materials) to Realtek’s outside counsel in the first case (Lisa K. Nguyen at Allen & Overy LLP).
To read recent coverage of wider events in this campaign, see “Latest Round of ParkerVision Complaints Focuses on Chipmakers” (May 2023).
The Apple Denial
On the same day that the Federal Circuit denied Realtek’s petition, it turned away one from Apple, this one in the area that has produced a large number of petitions: consideration of motions to transfer for convenience. In a case filed against it by Lionra, an Atlantic IP Services plaintiff, Apple sought reversal of Judge Albright’s decision to keep the case, arguing, among other things, that Lionra’s reliance on three witnesses not identified during venue-related discovery justified intervention. Judge Albright held the late reliance harmless, indicating that Apple at all times has access to its own employees. The appeals court sided with Judge Albright, ultimately concluding that Apple failed to meet the heightened burden on mandamus review.
In this context, the appeals court, as it often does, glides through articulation of the mandamus standard a bit: “To obtain the extraordinary remedy of a writ of mandamus, Apple must show, inter alia, a clear and indisputable right to relief. When assessing this element in the context of § 1404(a) transfer disputes, we apply relevant regional circuit law and review only for “a ‘clear’ abuse of discretion such that refusing tranfer [sic] produced a ‘patently erroneous result’” (citations omitted). Getting to the central issue, the court ruled that Judge Albright’s approach to the three witnesses identified for the first time in reply did not amount to an abuse of discretion, noting that “the district court reasonably found that Apple had access to the three Apple employees at issue and plausibly concluded that Apple had a meaningful opportunity to challenge Lionra’s evidence in its reply (which it did, albeit without the level of detail Apple says a further investigation could have yielded). Under the circumstances, Apple’s petition has not shown a clear and indisputable entitlement to granting its motion to strike” Lionra’s reliance on those three Apple employees.
To dig into this decision, and the wider campaign in which it came down, see RPX’s recent coverage at “Federal Circuit Refuses to Reverse Judge Albright’s Decision to Keep Lionra Case Against Apple” (August 2023). Trial is now set for May 2024, with the parties contesting the set of products properly accused in the case.
A Coming Sony Denial?
The past several years have seen petitions for mandamus review become less extraordinary, or at least more frequent, with quite a few defendants in Judge Albright’s courtroom seeking petitions for writs reversing that court’s decisions—and more keep coming. In early August, Sony has filed such a petition asking the appeals court to transfer a case filed against it by ACQIS LLC, a subsidiary of Acqis Technology Incorporated, to the Northern District of California. Judge Albright denied the motion, granting an alternative request to move the case from the Waco Division to the Austin Division of the Western District of Texas—where he will continue to preside over the dispute.
Judge Albright also denied Sony’s request to stay the case to await word from the Federal Circuit. Judge Albright did so in a text-only order, arguing that a party that received its alternative request for relief (an intra-district transfer) cannot be much prejudiced by denial of its main request for relief (an inter-district transfer). While its petition is briefed, Sony has filed an answer—in Austin. Trial is set for July 2024. For further details concerning this campaign, see “Text-Only Order Denies Motion to Stay to Await Federal Circuit Ruling” (August 2023).
