Case: 22-107 Document: 29 Page: 1 Filed: 12/27/2021
NOTE: This order is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
In re: MEDTRONIC, INC.,
Petitioner
______________________
2022-107
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Western District of Texas in No. 6:20-
cv-00973-ADA, Judge Alan D. Albright.
______________________
ON PETITION
______________________
Before DYK, REYNA, and CHEN, Circuit Judges.
PER CURIAM.
ORDER
Medtronic, Inc. petitions for a writ of mandamus di-
recting the United States District Court for the Western
District of Texas to dismiss this patent case for improper
venue under 28 U.S.C. § 1400(b). Alternatively, Medtronic,
Inc. asks this court to vacate the district court’s order deny-
ing its motion to transfer venue under 28 U.S.C. § 1404(a).
TMT Systems, Inc. opposes the petition.
Case: 22-107 Document: 29 Page: 2 Filed: 12/27/2021
2 IN RE: MEDTRONIC, INC.
BACKGROUND
TMT brought this suit in the Western District of Texas,
alleging that Medtronic USA, Inc. directly infringes U.S.
Patent No. 7,101,393 (“the ’393 patent”) by selling certain
stent graft products marketed under the name Endurant
and that Medtronic, Inc. indirectly infringes the patent by
“actively aiding and abetting infringement by others, in-
cluding Medtronic USA” and by “contributing to direct in-
fringement committed by customers such as health care
providers and physicians” within the district and else-
where. Appx161–63. TMT further alleges that Medtronic,
Inc. maintains a “regular and established place of busi-
ness” at a San Antonio facility leased to another of its
wholly-owned subsidiaries, MiniMed Distribution Corp.
§ 1400(b). Appx148–53.
Following discovery on venue, both defendants moved
to dismiss pursuant to § 1400(b) and Federal Rule of Civil
Procedure 12(b)(3). The district court denied Medtronic,
Inc.’s motion. It concluded that the San Antonio facility
was an established place of business of Medtronic, Inc. for
purposes of venue in the Western District of Texas, finding
that Medtronic, Inc. played a crucial role in establishing
the facility; 20 of Medtronic, Inc.’s own employees work
from the facility; Medtronic, Inc. owns equipment at the fa-
cility; Medtronic, Inc.’s logo is displayed on the outside of
the facility; and the facility is listed on Medtronic.com’s
website as a “Medtronic Location.” Appx1–2.
The district court further determined that TMT’s alle-
gations of indirect infringement were sufficient to estab-
lish, for purposes of venue under § 1400(b), that Medtronic,
Inc. “has committed acts of infringement” in the Western
District of Texas. The court rested that determination on
(a) its findings that Medtronic, Inc. did not dispute “that
TMT sufficiently alleged direct infringement on the part of
Medtronic USA”; (b) Medtronic, Inc. did not challenge the
sufficiency of TMT’s contributory infringement allegations;
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IN RE: MEDTRONIC, INC. 3
and (c) TMT’s complaint alleges, among other things, that
“Medtronic[, Inc.] has infringed and continues to infringe
the ’393 patent . . . by (among other things) actively aiding
and abetting infringement by others, including Medtronic
USA . . . . Medtronic[, Inc.] has made and continues to
make, offered to sell and sold, and continues to offer to sell
and sell, the Accused Products with the knowledge and spe-
cific intent to encourage and facilitate infringing uses of
such products by Medtronic USA and its customers.”
Appx5–6 (emphasis omitted). *
Having denied Medtronic, Inc.’s motion to dismiss, the
court turned to Medtronic, Inc.’s contingent motion to
transfer pursuant to § 1404(a). It held that Medtronic, Inc.
had failed to establish the threshold requirement for grant-
ing transfer of this case under that statute, namely, that
the present action “might have been brought” in the North-
ern District of California. Appx6. The court noted, among
other things, that Medtronic, Inc. did not believe that it had
a regular and established place of business of its own in the
transferee venue and “does not admit that either Med-
tronic[, Inc.] or its California subsidiary Medtronic Vascu-
lar has committed any acts of infringement in the NDCA.”
Appx15–16. It also rejected Medtronic, Inc.’s argument
that one of its subsidiaries, Medtronic Vascular, having a
facility in Santa Rosa, California, established a regular and
established place of business of Medtronic, Inc. for pur-
poses of establishing venue. Appx16.
Medtronic, Inc. then filed this petition principally chal-
lenging the district court’s determination that the com-
plaint sufficiently alleged that Medtronic, Inc. has
* The district court reached a different conclusion as
to Medtronic USA, finding it had no regular and estab-
lished place of business in the Western District of Texas,
and therefore granted its motion to dismiss.
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4 IN RE: MEDTRONIC, INC.
committed acts of infringement in the Western District of
Texas, making it subject to venue under § 1400(b). Med-
tronic, Inc’s petition secondarily contends that the district
court clearly abused its discretion in concluding that it
failed to satisfy the threshold requirements for transfer un-
der § 1404(a) and asks the court to grant mandamus to di-
rect the district court to consider the transfer factors.
DISCUSSION
Issuance of a writ of mandamus is a “drastic” remedy,
“reserved for really extraordinary causes.” Ex parte Fahey,
332 U.S. 258, 259–60 (1947). A party seeking a writ bears
the burden of demonstrating that it has no “adequate al-
ternative” means to obtain the desired relief, Mallard v.
U.S. Dist. Ct. for the S. Dist. of Iowa,
490 U.S. 296, 309
(1989), and that the right to issuance of the writ is “clear
and indisputable,” Will v. Calvert Fire Ins. Co.,
437 U.S.
655, 666 (1978) (internal quotation marks omitted). Even
when those two requirements are met, the court must be
satisfied that the issuance of the writ is appropriate under
the circumstances. Cheney v. U.S. Dist. Ct. for the Dist. of
Columbia,
542 U.S. 367, 381 (2004). Medtronic, Inc. has
not made such a showing on either of its challenges.
A
Unlike with motions to transfer under § 1404(a), man-
damus ordinarily is unavailable for immediate review of
rulings on motions asserting lack of venue under § 1400(b),
because a post-judgment appeal generally is an adequate
remedy for such violations. See Bankers Life & Cas. Co.,
346 U.S. 379, 379–84 (1953) (holding that mandamus re-
view of an improper-venue decision was inappropriate and
noting it was not clear that an adequate remedy could not
be afforded); In re HTC Corp.,
889 F.3d 1349, 1352–54 (Fed.
Cir. 2018) (“Unlike a defendant challenging the denial of a
§ 1404(a) transfer motion, a defendant aggrieved by the de-
nial of an improper-venue motion has an adequate remedy
on appeal from a final judgment”). Although this court has
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IN RE: MEDTRONIC, INC. 5
noted that mandamus may be available to raise improper
venue-related challenges in “certain exceptional circum-
stances warranting immediate intervention to assure
proper judicial administration,” In re Google LLC, No.
2018-152,
2018 WL 5536478, at *2 (Fed. Cir. Oct. 29, 2018)
(citing cases), we cannot say that Medtronic, Inc. has
clearly presented such an issue in its petition here.
Medtronic, Inc.’s only attempt to satisfy that require-
ment is its challenge concerning whether “a district court
considering the acts-of-infringement prong of § 1400(b)
may accept unsupported allegations of infringement in the
face of unrebutted declarations and other admissible docu-
mentary evidence that conclusively defeat those allega-
tions.” Pet. at 29. But the declaration Medtronic, Inc.
relies on for support does not, in clear and indisputable
terms, refute TMT’s allegations of indirect infringement; it
merely says that “Medtronic, Inc., does not manufacture,
import, offer to sell, or sell the accused Endurant products
and has not done so within the six years prior to the filing
of this litigation” and that “Medtronic, Inc., does not direct,
control, or otherwise have any direct involvement with
Medtronic USA’s sale of the accused Endurant products.”
Appx250–51. The other evidence discussed in the petition
are records Medtronic, Inc. says relate to inter-company
transfers of the accused products and records pertaining to
sales representatives responsible for selling the accused
products. Again, we are not prepared to say that those rec-
ords clearly and indisputably refute TMT’s indirect in-
fringement allegations.
Medtronic, Inc. also contends that TMT’s allegations in
its complaint are insufficient to establish infringement for
venue purposes under § 1400(b). But this is not the sort of
“basic, unsettled, reoccurring legal issue[] over which there
is considerable litigation producing disparate results” that
is usually required for this court to take up a challenge on
mandamus. In re Micron Tech., Inc.,
875 F.3d 1091, 1102
(Fed. Cir. 2017). The district court’s determinations
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6 IN RE: MEDTRONIC, INC.
focused on various case-specific details of TMT’s allega-
tions in its complaint and Medtronic, Inc.’s presentation of
the issues in its motion to dismiss for improper venue.
Nor can we say that Medtronic, Inc. has shown a clear
and indisputable error in the district court’s determination
on that issue. The district court’s determination rested in
part on its reasonable conclusion that Medtronic, Inc. did
not properly contest TMT’s allegations concerning contrib-
utory infringement when it failed to raise the issue until
its reply in support of its motion, and even then, only in a
footnote. Pet. at 28 (citing Appx329 n.5). We are also not
persuaded by Medtronic, Inc.’s challenge to the sufficiency
of the induced infringement allegations. Medtronic, Inc.
notes the district court’s order recited the portion of the
complaint that “Medtronic[, Inc.] has made and continues
to make, offered to sell and sold, and continues to offer to
sell and sell, the Accused Products with the knowledge and
specific intent to encourage and facilitate infringing uses of
such products by Medtronic USA and its customers.”
Appx5 (emphasis omitted). Considered alone, those allega-
tions may not be sufficient to support induced infringe-
ment. But those allegations do not stand alone. The
quoted sentence is within a section alleging infringement
that expressly incorporates the preceding paragraphs, sev-
eral of which allege that Medtronic USA sells Endurant
while Medtronic, Inc. holds itself out to the FDA and con-
sumers as the manufacturer of Endurant, Appx141–42, in-
fluences Medtronic USA’s actions through shared officers,
Appx145, and knew that Endurant infringes the ’393 pa-
tent, Appx160–61.
B
Medtronic, Inc. also seeks mandamus relief to overturn
the district court’s no-transfer determination under
§ 1404(a). Under applicable Fifth Circuit law, we review
those determinations only to see if there was such a clear
abuse of discretion that refusing transfer amounted to a
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IN RE: MEDTRONIC, INC. 7
patently erroneous result. See In re TS Tech USA Corp.,
551 F.3d 1315, 1319 (Fed. Cir. 2008). We cannot say that
Medtronic, Inc. has shown such abuse occurred.
Medtronic, Inc. contends that the court imposed a
higher and inconsistent burden to satisfy the threshold re-
quirement that venue was proper in the transferee venue
than it imposed on TMT to show that venue was proper in
the Western District of Texas. But Medtronic, Inc.’s own
motion expressly stated that it “does not believe that it is
subject to venue in the Northern District of California un-
der the law as correctly applied.” Appx121. Unlike in the
context of improper venue, the burden to demonstrate that
venue is proper in the transferee venue in the context of a
§ 1404(a) motion rests with the movant. See In re
Volkswagen of Am., Inc.,
545 F.3d 304, 314 (5th Cir. 2008)
(en banc). Because it found that Medtronic, Inc. disputed
infringing acts had taken place in Northern California and
disputed that venue was proper there, the court concluded
that Medtronic, Inc. failed to satisfy that burden. We see
no clear error in that determination.
Nor are we prepared to say that the district court was
unreasonable in rejecting Medtronic, Inc.’s argument that
the facility of its subsidiary, Medtronic Vascular, in the
Northern District of California constituted a regular and
established place of business of Medtronic, Inc. Fairly
read, Medtronic, Inc.’s motion merely asserted that if the
court were to find that venue in Western Texas was proper
based on the facility leased to one of its subsidiaries in San
Antonio, then it would similarly follow that venue would be
proper in the transferee venue based on the Santa Rosa fa-
cility of another of its subsidiaries. But the court noted
that its venue decision was “not based on the fact that
[Medtronic, Inc.] has a subsidiary in [San Antonio, TX], but
is based in part on Medtronic[, Inc.]’s essential role in es-
tablishing the facility in San Antonio, TX and its exercise
of attributes of possession and control over that San Anto-
nio facility.” Appx15. And we see no clear error in the
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8 IN RE: MEDTRONIC, INC.
court’s conclusion that Medtronic, Inc. failed to produce ev-
idence showing a similar level of control over Medtronic
Vascular’s Northern California facility.
Accordingly,
IT IS ORDERED THAT:
Medtronic, Inc.’s petition is denied.
FOR THE COURT
December 27, 2021 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
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