In re Monolithic Power Sys., Inc.

50 F.4th 157

IN RE: MONOLITHIC POWER SYSTEMS, INC., Petitioner

2022-153

United States Court of Appeals, Federal Circuit.

September 30, 2022

Deanne Maynard, Morrison & Foerster LLP, Washington, DC, for petitioner. Also represented by Seth W. Lloyd ; Weizhi Stella Mao, Bryan J. Wilson, Palo Alto, CA; Diek Van Nort, San Francisco, CA.

Christopher Ferenc, Katten Muchin Rosenman LLP, Washington, DC, for respondent Bel Power Solutions Inc. Also represented by Andrew John Pecoraro, Robert Thomas Smith; Brian Sodikoff, Chicago, IL.

Before Lourie, Chen, and Stark, Circuit Judges.

Dissenting opinion filed by Circuit Judge Lourie.

ON PETITION

ORDER

Per Curiam.

Monolithic Power Systems, Inc. petitions for a writ of mandamus directing the United States District Court for the Western District of Texas to dismiss or transfer this case to the United States District Court for the Northern District of California. Bel Power Solutions Inc. opposes. For the following reasons, we deny the petition.

I.

Bel Power brought this suit alleging that Monolithic infringes Bel Power's patents by selling certain power modules to original equipment manufacturers (OEMs) and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. § 1406(a) and Federal Rule of Civil Procedure 12(b)(3), arguing that, as a Delaware corporation, it does not "reside" in the Western District within the meaning of 28 U.S.C. § 1400(b) ; that it does not own or lease any property in that district; and that the homes of four fulltime remote employees in the Western District identified in the complaint to support venue do not constitute a "regular and established place of business" of Monolithic. Monolithic alternatively moved to transfer under 28 U.S.C. § 1404(a) to the Northern District of California.

The district court denied both requests. The court first rejected Monolithic's improper venue challenge, finding Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local OEM customers, even if none of its Western District employees were required to reside there. The court also found significant that Monolithic provided certain employees in the Western District with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. Based on those findings, the court concluded that the circumstances surrounding venue here were distinguishable from In re Cray Inc. , 871 F.3d 1355 (Fed. Cir. 2017), and more similar to circumstances that another district court in RegenLab USA LLC v. Estar Technologies Ltd. , 335 F. Supp. 3d 526 (S.D.N.Y. 2018), found sufficient to support venue.

Having concluded that venue over Monolithic in the Western District was proper, the court then analyzed whether the convenience of parties and witnesses and the interests of justice weighed in favor of transfer, following the multi-factor approach adopted by the United States Court of Appeals for the Fifth Circuit in In re Volkswagen of America, Inc. , 545 F.3d 304, 310 (5th Cir. 2008) (en banc). After considering those factors, the court determined that Monolithic had failed to demonstrate that the Northern District of California was clearly more convenient than the Western District and thus denied transfer.

Monolithic then filed this petition challenging the court's determination that the Western District is a proper venue under § 1400(b) based on its employees' homes. Monolithic also contends that the district court clearly abused its discretion in its assessment of the relevant transfer factors under § 1404(a). We have jurisdiction under 28 U.S.C. §§ 1651(a) and 1295(a)(1).

II.

Under the All Writs Act, federal courts "may issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law." 28 U.S.C. § 1651(a). Before a court may issue the writ, three conditions must be satisfied: (1) the petitioner must have "no other adequate means to attain the relief he desires"; (2) the petitioner must show that the right to the writ is "clear and indisputable"; and (3) the court "in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances." Cheney v. U.S. Dist. Ct. for D.C. , 542 U.S. 367, 380–81, 124 S.Ct. 2576, 159 L.Ed.2d 459 (2004) (citations and internal quotation marks omitted). Monolithic has not met these requirements with respect to either of its challenges.

A

As to the district court's refusal to dismiss or transfer for improper patent venue, "[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) ). We have found mandamus to be available for alleged § 1400(b) violations 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) ; Cray , 871 F.3d at 1360. But Monolithic has not shown that mandamus is necessary for this purpose here.

We are not persuaded that the district court's venue ruling implicates a "basic, unsettled, recurring legal issue[ ] over which there is considerable litigation producing disparate results," or similar circumstances that might warrant mandamus. Micron , 875 F.3d at 1095. The court analyzed Monolithic's arguments under the factors established in Cray for determining whether, for purposes of venue, a defendant has sufficiently ratified a place of business to make it its own. And it did so based on the specific circumstances surrounding Monolithic's history of soliciting employees to work in the Western District to support Monolithic's local OEM customers in that district and the extent and type of laboratory equipment and product maintained in the homes of those employees.

Among other things, the court 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).¹ In this case, there is some "evidence that the employees' location" in the district "was material to" Monolithic. Cf. Cray , 871 F.3d at 1365.

The dissent 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, 77 S.Ct. 309, 1 L.Ed.2d 290 (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...