In Re: Htc Corporation ( 2018 )

United States Court of Appeals
for the Federal Circuit
______________________
In re: HTC CORPORATION,
Petitioner
______________________
2018-130
______________________
On Petition for Writ of Mandamus to the United
States District Court for the District of Delaware in No.
1:17-cv-00083-LPS, Chief Judge Leonard P. Stark.
______________________
YAR ROMAN CHAIKOVSKY, Paul Hastings LLP, Palo
Alto, CA, for petitioner. Also represented by PHILIP OU;
JOHN W. SHAW, Shaw Keller LLP, Wilmington, DE.
ANDRES HEALY, Susman Godfrey LLP, Seattle, WA,
for respondents 3G Licensing, S.A., Koninklijke KPN
N.V., Orange S.A. Also represented by ALEXANDRA
GISELLE WHITE, Houston, TX.
______________________
ON PETITION
______________________
Before PROST, Chief Judge, WALLACH and TARANTO,
Circuit Judges.
PROST, Chief Judge.
ORDER
2 IN RE: HTC CORPORATION
HTC Corporation petitions for a writ of mandamus di-
recting the United States District Court for the District of
Delaware to (a) vacate its December 18, 2017 order deny-
ing-in-part HTC Corporation’s motion to dismiss for
improper venue under Federal Rule of Civil Procedure
12(b)(3); and (b) dismiss the complaint against HTC
Corporation. 3G Licensing, S.A., Orange S.A., and Kon-
inklijke KPN N.V. (collectively, “Respondents”) oppose.
In January 2017, Respondents filed their patent in-
fringement suit against HTC Corporation, a Taiwanese
corporation with its principal place of business in Taiwan,
and its wholly owned U.S. based subsidiary, HTC Ameri-
ca, Inc., a Washington corporation with its principal place
of business in Seattle, Washington. In June 2017, after
Respondents filed their second amended complaint, HTC
Corporation and HTC America filed a motion to dismiss
for improper venue pursuant to Rule 12(b)(3) or, in the
alternative, to transfer the case to the United States
District Court for the Western District of Washington
pursuant to 28 U.S.C. §§ 1404(a) or 1406(a).
In its December 18, 2017 order, the district court
found that venue was not proper as to HTC America but
was proper as to HTC Corporation. App. 1–7. Following
the order, Respondents voluntarily dismissed their suit
against HTC America without prejudice. HTC Corpora-
tion now files this mandamus petition seeking dismissal
for improper venue. 1
DISCUSSION
A writ of mandamus is a drastic remedy available on-
ly in extraordinary circumstances. Such a writ may issue
1 On March 28, 2018, the petition was dismissed for
failure to pay the docketing fee. The petition was rein-
stated on March 29, 2018, after Petitioner paid the dock-
eting fee and moved to vacate the dismissal order.
IN RE: HTC CORPORATION 3
only where the following conditions are met: (1) the peti-
tioner must have no other adequate means to attain the
relief desired; (2) the petitioner must demonstrate a “clear
and indisputable” right to the issuance of the writ; and (3)
“even if the first two prerequisites have been met, the
issuing court, in the exercise of its discretion, must be
satisfied that the writ is appropriate under the circum-
stances.” Cheney v. U.S. Dist. Court for D.C., 542 U.S.
367, 380–81 (2004).
I
A party seeking mandamus must demonstrate that it
has “no other adequate means to attain the relief [it]
desires.” Cheney, 542 U.S. at 380 (quoting Kerr v. U.S.
Dist. Court for N. Dist. of Cal., 426 U.S. 394, 403 (1976)).
This requirement is “designed to ensure that the writ will
not be used as a substitute for the regular appeals pro-
cess.” Id. at 380–81.
The mandamus petition in this case is based on the
denial of a motion to dismiss under Rule 12(b)(3) or,
alternatively, to transfer under § 1406(a), for improper
venue. 2 While this court has granted mandamus peti-
tions based on the denial of motions to transfer under 28
U.S.C. § 1404(a) with some frequency, 3 we have done so
2 Objections to improper venue are made through a
Rule 12(b)(3) motion, and § 1406(a) provides for either
dismissal or transfer if venue is found to be improper. See
§ 1406(a); Fed. R. Civ. P. 12(b)(3).
3 See, e.g., In re Nintendo Co., 589 F.3d 1194, 1197
(Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315,
1318 (Fed. Cir. 2008). Section 1404(a) governs changes of
venue “[f]or the convenience of parties and witnesses, in
the interest of justice.” “Unlike § 1406(a), § 1404(a) does
not condition transfer on the initial forum’s being
4 IN RE: HTC CORPORATION
less frequently with respect to petitions based on the
denial of motions under § 1406(a) asserting improper
venue. See In re Cray Inc., 871 F.3d 1355, 1367 (Fed. Cir.
2017); In re Micron Tech., Inc., 875 F.3d 1091, 1102 (Fed.
Cir. 2017). This divergence, in part, relates to the first
requirement for granting mandamus—that the manda-
mus petitioner have no other adequate means to attain
the relief desired. 4
Unlike a defendant challenging the denial of a
§ 1404(a) transfer motion, 5 a defendant aggrieved by the
‘wrong.’” Atl. Marine Constr. Co. v. U.S. Dist. Court for W.
Dist. of Tex., 571 U.S. 49, 59 (2013).
4 We need not decide whether to apply regional or
Federal Circuit law in evaluating whether post-judgment
appeal is adequate for review of a denial of a § 1406(a)
motion. We agree with the Third Circuit on that issue.
5 Two reasons have been stated for the inadequacy
of post-judgment appeals as a remedy for denials of
§ 1404(a) challenges, i.e., for why such cases “normally
deal with an issue, the convenience of parties and wit-
nesses, which in its nature must be reviewed before trial,
if at all.” Gulf Research & Dev. Co. v. Leahy, 193 F.2d
302, 305 (3d Cir. 1951) (internal quotation marks omit-
ted). First, the purpose of § 1404(a) is to avoid burdening
parties and witnesses with unnecessary inconvenience
and expense, so by the time a case is tried and appealed,
for example, witnesses would have suffered the inconven-
ience of traveling to a distant forum. In short, the man-
damus petitioner would have suffered the very
inconvenience the statute seeks to avoid. See id.; In re
Volkswagen of Am., Inc., 545 F.3d 304, 319 (5th Cir. 2008)
(en banc). Second, mere inconvenience does not support a
showing of harmful error under 28 U.S.C. § 2111 and Fed.
R. Civ. P. 61 on appeal after judgment. See, e.g., In re
Nat’l Presto Indus., Inc., 347 F.3d 662, 663 (7th Cir. 2003)
IN RE: HTC CORPORATION 5
denial of an improper-venue motion has an adequate
remedy on appeal from a final judgment. Specifically, if
after judgment venue is determined to have been improp-
er, and the improper-venue objection was not waived, the
appellants “will be entitled to assert it on appeal and, if
the objection is sustained, obtain from [the appeals] court
an order vacating the judgment . . . and directing the
remand of the action to the [appropriate venue].” Gulf
Research & Dev. Co. v. Leahy, 193 F.2d 302, 304–05 (3d
Cir. 1951); see id. (“[A]n appeal in this action will be just
as adequate as in any other case where an objection to
jurisdiction or venue is overruled by the trial court and
after a trial on the merits the objection is sustained on
appeal from the final judgment.” (footnote omitted)); Chi.,
R.I. & P.R. Co. v. Igoe, 212 F.2d 378, 381 (7th Cir. 1954)
(“[A]ny judgment entered in the cause is a nullity, an
error correctible on appeal.”); cf. Lexecon Inc. v. Milberg
Weiss Bershad Hynes & Lerach, 523 U.S. 26, 41–43 (1998)
(indicating that a strict venue limitation, such as
§ 1391(a), “is sufficient to establish the substantial char-
acter of any violation,” making such a violation not harm-
less error under 28 U.S.C. § 2111). Given the availability
of adequate relief on appeal, mandamus review of im-
proper-venue decisions is generally inappropriate. See
Bankers Life & Cas. Co. v. Holland, 346 U.S. 379, 379–84
(1953) (holding that mandamus review of an improper-
venue decision was inappropriate and noting it was not
clear that an adequate remedy could not be afforded);
Comfort Equip. Co v. Steckler, 212 F.2d 371, 374–75 (7th
(inconvenienced appellant “would not be able to show that
it would have won the case had it been tried in a conven-
ient forum”); see also In re Volkswagen of Am., 545 F.3d at
318–19 (citing the harmless error rule, Fed. R. Civ. P. 61,
and holding that appeal would provide no remedy for a
“patently erroneous” denial of a § 1404(a) convenience
transfer).
6 IN RE: HTC CORPORATION
Cir. 1954) (denying mandamus review of an improper-
venue motion); Gulf Research, 193 F.2d at 304–05 (deny-
ing mandamus review of an improper-venue motion in a
patent case and stating that “an appeal in this action will
be just as adequate as in any other case where an objec-
tion to jurisdiction or venue is overruled by the trial court
and after a trial on the merits the objection is sustained
on appeal from the final judgment” (footnote omitted)).
Although Petitioner argues that it should “not be
forced to litigate this case in an improper venue through a
final judgment before it can contest venue via appeal,”
Pet’r’s Br. 6, the Supreme Court rejected this same argu-
ment in Bankers Life, explaining that “the extraordinary
writs cannot be used as substitutes for appeals, even
though hardship may result from delay and perhaps
unnecessary trial.” Bankers Life, 346 U.S. at 383 (cita-
tions omitted); see also Comfort Equip., 212 F.2d at 375(“If the correctness of [the judge’s] ruling on the [improp-
er-venue] motions to dismiss must await an appeal from
the final disposition of the case on its merits in the dis-
trict court, there is no unusual inconvenience or hard-
ship.”). Decisions of this court and the Third Circuit
reflect that reasoning. See In re BP Lubricants USA Inc.,
637 F.3d 1307, 1313 (Fed. Cir. 2011) (“To issue a writ [of
mandamus] solely for th[e] reasons [that a defendant will
be forced to undergo the cost of discovery and trial] would
undermine the rare nature of its form of relief and make a
large class of interlocutory orders routinely reviewable.”
(citing Bankers Life, 346 U.S. at 383)); Gulf Research, 193
F.2d at 304–05 (“The mere fact that the petitioners will be
put to the inconvenience and expense of what may prove
to be a wholly abortive trial is an argument which might
be addressed to Congress in support of legislation author-
izing interlocutory appeals but does not constitute ground
for invoking mandamus power.”).
To be sure, while an appeal will usually provide an
adequate remedy for a defendant challenging the denial of
IN RE: HTC CORPORATION 7
an improper-venue motion, there may be circumstances in
which it is inadequate. We need not articulate such
circumstances here, as Petitioner’s only argument is that
it should be able to avoid the inconvenience of litigation
by having this issue decided at the outset of its case. This
is insufficient, and there is no other indication that Peti-
tioner cannot be afforded adequate relief on appeal.
II
A party seeking issuance of a writ of mandamus must
also demonstrate that the right to the writ is clear and
indisputable. Cheney, 542 U.S. at 381 (quoting Kerr, 426
U.S. at 403). Petitioner has failed to meet this burden.
The district court in this case relied on Brunette Ma-
chine Works, Ltd. v. Kockum Industries, Inc., 406 U.S.
706, 706 (1972), and § 1391(c)(3) to hold that HTC Corpo-
ration, as a foreign corporation, is subject to suit in any
judicial district. App. 3. Petitioner argues that the dis-
trict court erred in three ways: (1) by applying § 1391(c)(3)
in a patent case; (2) by relying on Brunette, which inter-
preted a prior version of § 1391; and (3) by not applying
the patent venue statute, § 1400(b). We see no error in
the district court’s analysis. As explained below, Petition-
er’s arguments are fully addressed by reaffirming the
“long-established rule that suits against aliens are wholly
outside the operation of all the federal venue laws, gen-
eral and special.” Brunette, 406 U.S. at 714.
A
The issue of whether the venue laws protect alien de-
fendants is colored by a long statutory and judicial histo-
ry, including two cases in which the Supreme Court
directly addressed this same question. Id. at 707; In re
Hohorst, 150 U.S. 653, 659 (1893).
As explained in Brunette, the origins of the venue
laws extend back to the Judiciary Act of 1789. Brunette,
406 U.S. at 708. The original venue restriction stated:
8 IN RE: HTC CORPORATION
[N]o civil suit shall be brought before [district or
circuit] courts against an inhabitant of the United
States, by any original process in any other dis-
trict than that whereof he is an inhabitant, or in
which he shall be found at the time of serving the
writ . . . .
Act of Sept. 24, 1789, ch. XX, § 11, 1 Stat. 79 (1789) (em-
phasis added). Because this venue limitation applied
“only to suits against ‘an inhabitant of the United States,’
suits against aliens were left unrestricted, and could be
tried in any district.” Brunette, 406 U.S. at 708.
The Court addressed this background principle (re-
ferred to for convenience as the alien-venue rule) in In re
Hohorst, which involved the Hamburg-American Packet
Company, a German corporation, as defendant. 150 U.S.
at 654. The Court held that the then-existing venue
statute did not govern suits by citizens against alien
defendants. Id. at 662; see also Galveston, H. & S.A. Ry.
Co. v. Gonzales, 151 U.S. 496, 507 (1894) (“[I]f the suit be
against the alien, he may doubtless, under [Hohorst], be
sued in any district wherein he is found.”). At the time,
the statute read, in relevant part:
[N]o civil suit shall be brought before [district or
circuit] courts against any person by any original
process or proceeding in any other district than
that whereof he is an inhabitant . . . .
Act of Mar. 3, 1887, ch. 373, § 1, 24 Stat. 552 (emphasis
added); Hohorst, 150 U.S. at 660. The Court explained
that “person,” as used in the statute, referred to “inhabit-
ants of some district within the United States,” describing
the shift in language from the original 1789 statute as
immaterial. Hohorst, 150 U.S. at 660–61. Accordingly,
the Court held that the venue restriction was “inapplica-
ble to an alien or a foreign corporation sued here, . . . and
that, consequently, such a person or corporation may be
sued by a citizen of a state of the Union in any district in
IN RE: HTC CORPORATION 9
which valid service can be made upon the defendant.” Id.
at 662.
In Brunette, the Supreme Court reaffirmed its reason-
ing in Hohorst, despite the intervening enactment of the
Judicial Code of 1948, which included then-§ 1391(d) and
§ 1400(b) (the patent venue statute). Brunette, 406 U.S.
at 710 (“The reasoning of Hohorst with respect to suits
against aliens continues to have force today.”). The issue
before the Court in Brunette was “which provision of Title
28 governs the venue of an action for patent infringement
against an alien defendant”—§ 1400(b) or then-§ 1391(d).
Id. at 706–07. Section 1391(d), at the time, stated that
“[a]n alien may be sued in any district.” § 1391(d) (1970).
The Court upheld the alien-venue rule, despite the ex-
istence of § 1400(b), emphasizing the need to avoid a
venue gap, where the federal courts have jurisdiction, but
where no proper venue to exercise that jurisdiction exists.
Brunette, 406 U.S. at 709–10 (noting the reasoning in
Hohorst that “the venue provisions are designed, not to
keep suits out of the federal courts, but merely to allocate
suits to the most appropriate or convenient federal fo-
rum”). Looking to the relevant venue statutes, the Court
found that applying those statutes to alien defendants
would create a venue gap. Id. at 710. The Court thus
preserved the alien-venue rule, noting that “Congress
does not in general intend to create venue gaps,” and that
“in construing venue statutes it is reasonable to prefer the
construction that avoids leaving such a gap.” Id. at 710
n.8.
Moreover, emphasizing its treatment of the alien-
venue rule as a background principle in Hohorst, the
Court noted that “in the 79 years since Hohorst was
decided, Congress has never given the slightest indication
that it is dissatisfied with the longstanding judicial view
that the 1789 language continues to color the venue
statutes, with the result that suits against aliens are
10 IN RE: HTC CORPORATION
outside the scope of all the venue laws.” Id. at 710–11.
Therefore, the Court concluded that the “broad and over-
riding” principle stated in then-§ 1391(d) “cannot be
confined in its application to cases that would otherwise
fall under the general venue statutes,” as the statute
merely reflected the “long-established rule that suits
against aliens are wholly outside the operation of all the
federal venue laws, general and special.” Id. at 714. The
Court thus upheld the alien-venue rule and held that the
Canadian corporation defendant in that case, Brunette
Machine Works, Ltd., could not rely on § 1400(b) as a
“shield” against suit in a particular district. Id.
B
Despite the Court’s having affirmed this overriding
principle on two separate occasions, Petitioner now con-
tends that § 1400(b) should apply to it because Congress
abrogated Brunette—and the alien-venue rule—through
the Federal Courts Jurisdiction and Venue Clarification
Act of 2011 (“the 2011 amendments”). Pet’r’s Br. 22.
In the 2011 amendments, Congress revised § 1391(a)–
(d), among other subsections. As amended, § 1391(c)
reads:
(c) Residency.—For all venue purposes—
(1) a natural person, including an alien law-
fully admitted for permanent residence in the
United States, shall be deemed to reside in
the judicial district in which that person is
domiciled;
(2) an entity with the capacity to sue and be
sued in its common name under applicable
law, whether or not incorporated, shall be
deemed to reside, if a defendant, in any judi-
cial district in which such defendant is subject
to the court's personal jurisdiction with re-
spect to the civil action in question and, if a
IN RE: HTC CORPORATION 11
plaintiff, only in the judicial district in which
it maintains its principal place of business;
and
(3) a defendant not resident in the United
States may be sued in any judicial district,
and the joinder of such a defendant shall be
disregarded in determining where the action
may be brought with respect to other defend-
ants.
28 U.S.C. § 1391(c).
As explained below, we believe Congress did not in-
tend the 2011 amendments to upend the centuries-old
understanding that the venue laws (as opposed to re-
quirements of personal jurisdiction) do not restrict the
location of suits against alien defendants, unless Congress
has specifically provided otherwise. First, as the Court
held in Brunette, § 1400(b) itself was not intended to
apply to alien defendants. Second, nothing in the 2011
amendments to § 1391 changed this understanding of
§ 1400(b). Third, against the historical background
leading up to and including Brunette, the 2011 amend-
ments do not sufficiently indicate an intent to make venue
protections applicable to alien defendants, with a limited
exception not relevant here—applicable to natural per-
sons who are aliens but have been lawfully admitted to
the United States for permanent residence. Fourth,
Petitioner’s contrary view would make some foreign
corporations that infringe a U.S. patent unamenable to
domestic suit even though personal jurisdiction exists—a
gap we cannot conclude Congress created.
1
At the outset, the patent venue statute was not in-
tended to supplant the longstanding rule that the venue
laws do not protect alien defendants. Brunette, 406 U.S.
at 711–14. Given that § 1400(b) has not been amended
12 IN RE: HTC CORPORATION
since Brunette, the Court’s explanation of § 1400(b) re-
mains instructive—and binding—today.
In Brunette, the Court rejected the argument that
Congress intended the patent venue statute to regulate
venue in patent suits against aliens. Id. at 711. In doing
so, the Court explained:
Since the general venue statutes did not reach
suits against alien defendants, there is no reason
to suppose the new substitute in patent cases was
intended to do so. Indeed, the only glimmer of ev-
idence of legislative intent points in the other di-
rection. . . . [I]n 1948 [when Congress codified
§ 1391(d)], Congress was apparently quite content
to leave suits against alien defendants exempt
from the venue statutes, in patent cases as in all
others.
Id. at 713–14 (emphasis added). 6
The Court’s recent decision in TC Heartland does not
alter this conclusion. See TC Heartland LLC v. Kraft
Foods Grp. Brands LLC, 137 S. Ct. 1514, 1520 n.2 (2017).
TC Heartland continued a line of cases that interpreted
the relationship between the patent venue statute and the
general venue statute. See Fourco Glass Co. v. Transmir-
ra Prods. Corp., 353 U.S. 222, 225 (1957); Stonite Prods.
Co. v. Melvin Lloyd Co., 315 U.S. 561, 563 (1942). Bru-
nette addressed Stonite and Fourco, recognizing the
Court’s prior refusal to apply the general venue provisions
to patent infringement cases. Brunette, 406 U.S. at 711.
That, however, did not deter the Court from applying the
well-established alien-venue rule, even though that rule
had been codified in § 1391(d). The Court explained that
6 As explained in Section II.A of this order, at the
time of the Brunette decision, § 1391(d) stated: “An alien
may be sued in any district.” § 1391(d) (1970).
IN RE: HTC CORPORATION 13
unlike the venue provisions at issue in Stonite and Four-
co, § 1391(d) was “not derived from the general venue
statutes that § 1400(b) was intended to replace.” Id. at
712–13. Instead, the Court concluded:
[I]n § 1391(d) Congress was stating a principle of
broad and overriding application, and not merely
making an adjustment in the general venue stat-
ute, as this Court found Congress had done in
Stonite and Fourco. The principle of § 1391(d)
cannot be confined in its application to cases that
would otherwise fall under the general venue
statutes. For § 1391(d) is properly regarded, not
as a venue restriction at all, but rather as a decla-
ration of the long-established rule that suits
against aliens are wholly outside the operation of
all the federal venue laws, general and special.
Id. at 714. The Court thus held that the alien defendant
in that case, a foreign corporation like Petitioner here,
could not use § 1400(b) as a shield against suit in a par-
ticular district court. Id. In short, while § 1400(b) gov-
erns venue in patent cases, it governs only to displace
otherwise-applicable venue standards, not where there
are no such standards due to the alien-venue rule. See id.
2
Given that § 1400(b) itself does not provide an excep-
tion to the alien-venue rule, we next ask whether the
2011 amendments to the general venue statute somehow
altered the meaning of § 1400(b) so as to change how the
alien-venue rule applies in patent cases. As Petitioner
concedes, “absent from the House Judiciary Committee
report is any discussion or even mention of patent cases
such as Fourco or Brunette and the interplay between
those decisions and the amendments to the general venue
14 IN RE: HTC CORPORATION
statute.” Pet’r’s Br. 20. 7 There is no indication Congress
intended to modify the alien-venue rule specifically for
patent cases. Accordingly, Brunette’s holding that
§ 1400(b) does not govern suits against aliens still applies
at least where other venue standards remain inapplicable
to aliens—which, as we next conclude, is true here.
3
Petitioner’s final argument is that the reasoning un-
derlying Brunette—that aliens fall outside the venue laws
entirely—has been abrogated by the 2011 amendments.
Pet’r’s Br. 22. Therefore, the argument goes, because the
set of venue laws, general and special, now apply to alien
defendants, and because § 1400(b) is the sole and exclu-
sive provision governing patent venue, HTC should be
able to use § 1400(b) as a venue defense. In other words,
HTC argues that Congress intended to discard the well-
7 While Petitioner argues that the House Report
should be read as “clearly separating any application of
the general venue provisions from the specialized venue
statutes,” see Pet’r’s Br. 20, this argument misses the
mark. This issue does not turn on whether § 1400(b) can
be read in conjunction with a particular section of the
general venue statute; instead the question is the same
one posed in Brunette—namely, whether Congress in-
tended to abrogate the centuries-old rule that all venue
laws, both general and special, do not apply to suits
against alien defendants, regardless of whether that
longstanding rule has been codified in the general venue
statute. See Brunette, 406 U.S. at 714 (“The principle of
§ 1391(d) cannot be confined in its application to cases
that would otherwise fall under the general venue stat-
utes. For § 1391(d) is properly regarded . . . as a declara-
tion of the long-established rule that suits against aliens
are wholly outside the operation of all the federal venue
laws, general and special.”).
IN RE: HTC CORPORATION 15
established alien-venue rule in favor of generally bringing
alien defendants, including foreign corporations like the
defendants in Hohorst and Brunette, within the protection
of the venue laws. We find no such intent. The textual
changes made to § 1391 in 2011 no more support an
inference of the suggested radical displacement of the
Hohorst/Brunette rule than did the textual changes TC
Heartland held inadequate to displace the Fourco rule.
At the outset, it is important to note the broad impli-
cations of Petitioner’s argument. A holding that the 2011
amendments altogether discarded the alien-venue rule
would extend far beyond patent law and would impact
other types of civil cases. Given that this would be a sea
change in federal venue law, we expect Congress would
make its intent clear, if indeed this was its intent.
Congress made only one clear change to the alien-
venue rule in 2011. That was only a modest adjustment
limited to natural persons. Congress did not clearly
make—and did not otherwise express an intent to make—
a change to the rule as it affects foreign corporations.
In light of certain inconsistencies in how the term “re-
sides” had been interpreted, Congress enacted the current
versions of § 1391(c)(1)–(2) to include express definitions
of residency for natural persons and for unincorporated
entities (in addition to residency for corporations, which
had previously been defined). See H.R. Rep. No. 112-10,
at 20–21 (2011) (“House Report”) (noting that some courts
had extended the definition of a natural person’s resi-
dence, for venue purposes, beyond the person’s domicile to
potentially include the location of a summer home; and
noting a split of authority regarding venue for unincorpo-
rated associations). Congress also made two other specific
changes regarding venue as to natural persons. First,
Congress altered how permanent residents (who are,
nonetheless, “aliens”) should be treated for venue purpos-
es. See id. at 23 (“[T]he proposed statute would grant a
16 IN RE: HTC CORPORATION
venue defense to permanent resident aliens who are
domiciled in the United States.”). Second, Congress
removed venue protections for U.S. citizens domiciled
abroad. See § 1391(c)(3); House Report at 22 (“This would
mean that aliens and United States citizens domiciled
abroad could not claim a venue defense to the location of
litigation. Prohibiting United States citizens domiciled
abroad from raising a venue defense would be a change in
current law.”). See generally 14D Charles A. Wright et
al., Federal Practice & Procedure § 3810 (4th ed. Apr.
2018 update).
Congress thus slightly modified the well-established
alien-venue rule in one respect. It granted venue protec-
tion to alien natural persons having permanent resident
status. § 1391(c)(1). 8 In doing so, it aligned the venue
laws with the already-existing treatment of permanent
resident aliens for certain jurisdictional purposes. See
House Report at 23 (noting that the version of § 1332(a) in
existence at the time already recognized that “permanent
resident aliens may be viewed as citizens of their state of
domicile for certain jurisdictional purposes”); see also 28
U.S.C. § 1332(a) (1988); Wright, Federal Practice & Pro-
cedure § 3810 (“Since 1988, Section 1332(a)(2) has defined
permanent resident aliens as citizens of the states in
which they are domiciled for purposes of diversity of
citizenship jurisdiction. It made little sense not to do the
same regarding their residence for venue purposes.”).
This minor change with respect to one discrete class of
8 Section 1391(c)(3) eliminated venue protections
for certain non-aliens (specifically, U.S. citizens domiciled
abroad). Adding to the group of persons denied venue
protection does not curtail the denial of venue protection
to aliens. Only adding to the group of persons provided
venue protection, e.g., § 1391(c)(1), does that.
IN RE: HTC CORPORATION 17
individuals is insufficient to upend the centuries-old rule
that the venue laws do not protect alien defendants.
There is no comparable change with respect to foreign
corporations. Petitioner relies on § 1391(c)(2) and the fact
that it does not expressly limit itself to domestic entities,
and on that basis argues that a foreign corporation now is
deemed a resident in the United States wherever it is
subject to personal jurisdiction. We are not persuaded.
The mere absence of an express foreign-corporation
exclusion from § 1391(c)(2) is not enough to infer the
sweeping repudiation of the Hohorst/Brunette rule that
Petitioner’s position produces. In fact, the conspicuous
absence of any reference to aliens in § 1391(c)(2) is telling,
since the immediately preceding paragraph, § 1391(c)(1),
does expressly refer to aliens, extending venue protections
to permanent resident aliens. At the same time, the
immediately succeeding paragraph, § 1391(c)(3), uses
broad language to deny venue protection to any “defend-
ant not resident in the United States,” with no exclusion
of foreign corporations. And the accompanying House
Report makes no mention of alien defendants being
included in § 1391(c)(2). Quite the contrary—the House
Report emphasizes that aliens will remain without a
venue defense. House Report at 22 (discussing the shift
from alienage to residency and stating “[t]his would mean
that aliens and United States citizens domiciled abroad
could not claim a venue defense to the location of litiga-
tion”); id. (“[F]or a party resident abroad, whether a
natural person or a corporation, any venue privilege
against suit in a particular Federal district court would be
eliminated” (emphasis added)). 9
9 For all of the reasons we have recited, including
the TC Heartland decision, we do not think that the
statute is properly read to adopt the view on this point
expressed by the American Law Institute Federal Judicial
18 IN RE: HTC CORPORATION
Finally, Petitioner contends that former § 1391(d) was
not merely recodified in § 1391(c)(3). In light of the
changes Congress implemented through the 2011
amendments, however, it is evident why former § 1391(d)
had to be reformulated. See House Report at 23 (“[T]he
deletion of the current language of 28 U.S.C. § 1391(d),
combined with the proposed amendment to paragraph
1391(c)(1), would also permit permanent resident aliens
domiciled in the United States to raise a venue defense.”).
To maintain “the consistent focus of determining venue by
reference to the domicile of natural persons,” id., the
language of § 1391(c)(3) had to be changed from “an alien
may be sued in any district,” see § 1391(d) (1970), to “a
defendant not resident in the United States may be sued in
any judicial district,” § 1391(c)(3). 10 This shift in lan-
guage is insufficient to indicate a move away from the
longstanding alien-venue rule.
Code Revision Project 146–47, 200–01 (2004), from which
the 2011 legislation derived through a process that
changed the ALI’s proposal (which included repeal of
§ 1400) and produced a quite different congressional
committee explanation. We also do not adopt the brief
statement on the issue in Wright, Federal Practice &
Procedure § 3810 (“Because nothing in the statute limits
the application of Section 1391(c)(2) to entities formed in
the United States, the provision governs venue in cases
involving entities formed in foreign countries.” (citing
Poliseno v. Credit Suisse Secs. (USA), LLC, 2013 WL
499509 (D. Mont. Feb. 8, 2013), report & recommendation
adopted, 2013 WL 1767951 (D. Mont. Apr. 24, 2013))).
10 Further, that former § 1391(d) now falls under
§ 1391(c) under the heading “Residency” is also not dis-
positive. This merely reflects the general shift in focus
from alienage to residency.
IN RE: HTC CORPORATION 19
4
Petitioner concedes that its interpretation of the
venue laws could create a venue gap, where at least some
alien defendants would be entirely exempt from patent
infringement actions. Pet’r’s Br. 9–10. It attempts to
gloss over this problem, however, by arguing that no gap
would exist in this case, as HTC Corporation’s subsidiary,
HTC America, is a resident of Washington, and venue for
HTC Corporation could reasonably be based on where
venue is proper for its subsidiary. Pet’r’s Br. 10. But,
even assuming we could completely disregard the corpo-
rate form in this case, there would still be cases, as Peti-
tioner concedes, where a venue gap exists (because, under
Petitioner’s theory, § 1400(b) displaces § 1391(b), (c)).
While Petitioner contends that abiding by Brunette cre-
ates a “loophole” for a plaintiff to forum shop, see Pet’r’s
Br. 11, that has always been the case. Meanwhile, Peti-
tioner’s argument creates a far more unsatisfactory
loophole—a complete inability for a patent owner to bring
its infringement claims against alien defendants that fall
outside the non-residence-based clause of § 1400(b). See
Brunette, 406 U.S. at 710 n.8 (“Congress does not in
general intend to create venue gaps . . . . Thus, in con-
struing venue statutes it is reasonable to prefer the
construction that avoids leaving such a gap.”).
With the Supreme Court having spoken on this issue
twice, this court—without clear guidance from Congress—
will not broadly upend the well-established rule that suits
against alien defendants are outside the operation of the
federal venue laws. Indeed, this longstanding rule has
“continue[d] to color the venue statutes” since 1789.
Brunette, 406 U.S. at 710–11. Because this case does not
involve the sole clear modification Congress made to the
rule in 2011, the rule, “which has prevailed throughout
the history of the federal courts, controls this case.” Id. at
714.
20 IN RE: HTC CORPORATION
III
The final requirement for mandamus to issue is that
the issuing court, in its discretion, must be satisfied that
the writ is appropriate under the circumstances. Cheney,
542 U.S. at 381. Petitioner contends mandamus is war-
ranted in this case to address an unsettled and important
question of law. Pet’r’s Br. 26–28. Although Petitioner
attempts to characterize this legal issue as “unsettled”
and resulting in “inconsistent” holdings, Petitioner does
not cite a single case that has adopted its interpretation.
Accordingly, even if Petitioner had satisfied the first two
mandamus requirements discussed above, the court is not
convinced that a writ would be warranted in this case.
CONCLUSION
Petitioner has not satisfied the high standard neces-
sary for a writ of mandamus to issue.
IT IS ORDERED THAT:
The petition for writ of mandamus is denied.
FOR THE COURT
May 9, 2018 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court