Case: 23-102 Document: 11 Page: 1 Filed: 01/09/2023
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: STINGRAY IP SOLUTIONS, LLC,
Petitioner
______________________
2023-102
______________________
On Petition for Writ of Mandamus to the United States
District Court for the Eastern District of Texas in Nos.
2:21-cv-00045-JRG, 2:21-cv-00046-JRG, Chief Judge J.
Rodney Gilstrap.
______________________
ON PETITION
______________________
JEFFREY A. LAMKEN, MoloLamken LLP, Washington,
DC, for petitioner. Also represented by LUCAS M. WALKER;
LAUREN F. DAYTON, New York, NY.
KRISTOPHER L. REED, Kilpatrick Townsend & Stockton
LLP, Dallas, TX, for respondent TP-Link Technologies Co.,
Ltd., TP-Link Corp. Ltd., TP-Link International Ltd. Also
represented by KEVIN BELL, EDWARD JOHN MAYLE, Denver,
CO; STEVEN MOORE, San Francisco, CA; ANDREW N. SAUL,
Atlanta, GA.
______________________
Before LOURIE, TARANTO, and STARK, Circuit Judges.
STARK, Circuit Judge.
ORDER
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2 IN RE: STINGRAY IP SOLUTIONS, LLC
Stingray IP Solutions, LLC (“Stingray”) petitions for a
writ of mandamus seeking to undo the United States Dis-
trict Court for the Eastern District of Texas’ order trans-
ferring two cases to the United States District Court for the
Central District of California (“CDCA”). TP-Link Technol-
ogies Co., Ltd., TP-Link Corporation Limited, and TP-Link
International Ltd. (collectively, “TP-Link”) oppose. For the
reasons provided below, we grant the petition.
BACKGROUND
Stingray filed these patent infringement suits in the
Eastern District of Texas against TP-Link Technologies
Co., Ltd. (organized and headquartered in China) and TP-
Link Corporation Limited (the new name of TP-Link Inter-
national Ltd., which is organized and headquartered in
Hong Kong). TP-Link moved to dismiss for lack of personal
jurisdiction or, in the alternative, to transfer to the Central
District of California under
28 U.S.C. § 1406. TP-Link ar-
gued it was not subject to personal jurisdiction in the East-
ern District of Texas and that Federal Rule of Civil
Procedure 4(k)(2) “does not cure this jurisdictional defect
because Defendants would be amenable to suit in the Cen-
tral District of California.” Appx 161; see also Appx 176.
TP-Link also moved for transfer under
28 U.S.C. § 1404(a).
After jurisdictional and venue discovery, the district
court granted TP-Link’s motion to transfer the cases to the
Central District of California under § 1406. The court de-
termined that “the exercise of personal jurisdiction over
Defendants in this Court would be unreasonable” and, un-
der Rule 4(k)(2), personal jurisdiction over TP-Link would
not be proper in the Eastern District of Texas because the
“Defendants are amenable to suit in the CDCA” and have
made affirmative representations “that CDCA has both
proper jurisdiction and venue in this case.” Appx 16–17.
“[A]ccept[ing] and rel[ying] upon the [same] affirmative
representations made by Defendants that CDCA has both
proper jurisdiction and venue,” the court transferred the
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IN RE: STINGRAY IP SOLUTIONS, LLC 3
cases under § 1406. Appx 17. The court denied the
§ 1404(a) motion as moot. Appx 18. Stingray then filed
this petition, focusing solely on the issue of whether TP-
Link’s unilateral, post-suit consent to personal jurisdiction
in another state (California) defeated application of Rule
4(k)(2). We have jurisdiction pursuant to
28 U.S.C.
§§ 1295(a)(1) and 1651(a). See In re Princo Corp.,
478 F.3d
1345, 1351 (Fed. Cir. 2007).
DISCUSSION
“[A]ll courts established by Act of Congress 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). Despite the seeming breadth of
that provision, it is well settled that the remedy of manda-
mus must be limited to extraordinary circumstances, “to
ensure that the writ will not be used as a substitute for the
regular appeals process.” Cheney v. U.S. Dist. Court for
D.C.,
542 U.S. 367, 380–81 (2004). In deciding whether a
party has proven its entitlement to the extraordinary relief
of mandamus, we usually proceed by directly applying the
Supreme Court’s statement of three requirements:
(1) there are “no other adequate means to attain the relief
[it] desires,” (2) the “right to issuance of the writ is clear
and indisputable,” and (3) “the writ is appropriate under
the circumstances.” Cheney,
542 U.S. at 380–81 (internal
quotation marks omitted).
Reflecting several Supreme Court decisions, we have
also held that “[m]andamus may be used in narrow circum-
stances where doing so is important to ‘proper judicial ad-
ministration,’” such as when an appellate court “correct[s]
a district court’s answers to ‘basic, undecided’ legal ques-
tions” concerning judicial administration matters. In re
Micron Tech., Inc.,
875 F.3d 1091, 1095 (Fed. Cir. 2017)
(quoting La Buy v. Howes Leather Co.,
352 U.S. 249, 259–
60 (1957) and Schlagenhauf v. Holder,
379 U.S. 104, 110
(1964)). This narrow basis for mandamus is solidly
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4 IN RE: STINGRAY IP SOLUTIONS, LLC
grounded in Supreme Court precedent, although it is only
applicable in unusual and exceptional circumstances.
Schlagenhauf, 379 U.S. at 110 (“The Court of Appeals rec-
ognized that it had the power to review on a petition for
mandamus the basic, undecided question of whether a dis-
trict court could order the mental or physical examination
of a defendant. We agree that, under these unusual cir-
cumstances and in light of the authorities, the Court of Ap-
peals had such power.”); La Buy,
352 U.S. at 257–58 (“We
believe that supervisory control of the District Courts by
the Courts of Appeals is necessary to proper judicial admin-
istration in the federal system. The All Writs Act confers
on the Courts of Appeals the discretionary power to issue
writs of mandamus in the exceptional circumstances exist-
ing here.”).
Where we have provided mandamus relief under the
narrow “administration of justice” standard, we have not
separately required petitioners to show satisfaction of
Cheney’s three requirements. See, e.g., In re Micron Tech.,
Inc., 875 F.3d at 1095 (“We find this case to present special
circumstances justifying mandamus review of certain
basic, unsettled, recurring legal issues over which there is
considerable litigation producing disparate results.”); In re
Google LLC,
949 F.3d 1338, 1343 (Fed. Cir. 2020) (conclud-
ing that “mandamus is an available remedy” where “dis-
trict courts’ decisions on these issues are in conflict” and
“[t]his court has not addressed this fundamental and recur-
ring issue of patent law”); In re Cray Inc.,
871 F.3d 1355,
1360 (Fed. Cir. 2017) (“We conclude that mandamus here
will further supervisory or instructional goals on an unset-
tled and important issue, an appropriate basis upon which
to grant the mandamus petition.”) (internal quotation
marks omitted); In re ZTE (USA) Inc.,
890 F.3d 1008, 1011
(Fed. Cir. 2018) (“This case presents two such ‘basic’ and
‘undecided’ issues relating to proper judicial administra-
tion . . . . These issues are likely to be repeated and present
sufficiently exceptional circumstances as to be amenable to
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IN RE: STINGRAY IP SOLUTIONS, LLC 5
resolution via mandamus.”). Indeed, on rare occasion, we
have granted mandamus relief without even citing the
three requirements set out in Cheney. See, e.g., In re Oath
Holdings Inc.,
908 F.3d 1301, 1304 (Fed. Cir. 2018); In re
BP Lubricants USA Inc.,
637 F.3d 1307, 1310, 1313 (Fed.
Cir. 2011). None of this should be misunderstood, however,
as detracting from the fundamental reality that, as the Su-
preme Court has stated, “mandamus should be resorted to
only in extreme cases.” La Buy,
352 U.S. at 257–58.
I
The unusual, exceptional circumstances presented by
this case render mandamus review appropriate, as such re-
view will permit us to resolve an important issue relating
to proper judicial administration on which district courts
have been divided. In looking to Federal Circuit law, dis-
trict courts have been deeply split over whether a defend-
ant can defeat personal jurisdiction under Rule 4(k)(2) by
unilaterally consenting to suit in a different district, with
some courts concluding that personal jurisdiction cannot be
established under Rule 4(k)(2) when defendants “represent
that [they] would be amenable to suit in [another state],”
Lambeth Magnetic Structures, LLC v. Toshiba Corp., No.
14-1526,
2017 WL 782892, at *6 (W.D. Pa. Mar. 1, 2017),
while others have concluded that a “defendant must do
more than simply say, ‘I designate State X as an alternate
forum’ in order to avoid application of Rule 4(k)(2),” Medi-
aZam LLC v. Voices.com, Inc., No. 20-cv-1381,
2022 WL
993570, at *12 (E.D. Wis. Mar. 31, 2022). Compare, e.g.,
Fitbit, Inc. v. Koninklijke Philips N.V.,
336 F.R.D. 574,
582–85 (N.D. Cal. 2020); Alpha Tech. U.S.A. Corp. v. N.
Dairy Equip., Ltd., No. 6:17-cv-1000,
2018 WL 501598, at
*5 (M.D. Fla. Jan. 22, 2018), with Knoll, Inc. v. Senator Int’l
Ltd., No. 19-4566,
2020 WL 1922780, at *6–9 (E.D. Pa. Apr.
21, 2020); Mitsui O.S.K. Lines, Ltd. v. Swiss Shipping Line
S.A.L., No. 17-cv-3394,
2017 WL 6327538, at *3–4 (N.D.
Cal. Dec. 6, 2017). Resolving this disagreement is im-
portant, as it will “reduce the widespread disparities in
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6 IN RE: STINGRAY IP SOLUTIONS, LLC
rulings on th[is] fundamental legal standard[].” In re Mi-
cron Tech., Inc., 875 F.3d at 1096.
II
We next consider TP-Link’s arguments as to why man-
damus is inappropriate. First, TP-Link argues that “[o]rdi-
narily, mandamus relief is not available for rulings on
motions under
28 U.S.C. § 1406(a),” In re Volkswagen Grp.
of Am., Inc.,
28 F.4th 1203, 1207 (Fed. Cir. 2022), because
“appeal from a final judgment” is “an adequate remedy,” In
re HTC Corp.,
889 F.3d 1349, 1352–53 (Fed. Cir. 2018).
While that is ordinarily true, there may also be, as we have
already explained, “narrow circumstances” in which man-
damus relief is granted because “doing so is important to
‘proper judicial administration,’” In re Micron Tech., Inc.,
875 F.3d at 1095 (quoting La Buy,
352 U.S. at 259–60), in-
cluding in connection with venue-related issues, see, e.g.,
In re Cray Inc., 871 F.3d at 1359–60 (mandamus proper to
consider “regular and established place of business” re-
quirement of
28 U.S.C. § 1400(b) (1999)); In re Google LLC,
949 F.3d at 1342–43 (mandamus proper to consider further
what constitutes a “regular and established place of busi-
ness”); In re Micron Tech., Inc., 875 F.3d at 1095–96 (man-
damus proper to determine “whether TC Heartland
effected a change of controlling law”). We are also mindful
there is “common agreement [among appellate courts] that
mandamus should be available to set aside a transfer if the
district court lacks power to transfer or has acted on wrong
legal principles.” 16 Wright & Miller Fed. Prac. & Proc.
§ 3935.4 (3d ed., Apr. 2022 update) (footnotes omitted).
Circumstances warranting mandamus review are present
here.
Second, TP-Link contends that this Rule 4(k)(2) issue
is not properly before us because Stingray forfeited it by
not adequately presenting it to the district court. We disa-
gree. Stingray specifically argued that it was “defendant’s
burden to name a state in which the suit can proceed”
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IN RE: STINGRAY IP SOLUTIONS, LLC 7
under Rule 4(k)(2). Appx 219. The district court recog-
nized that the issue was presented, interpreting our cases
as holding that “ex-post consent to suit in a judicial district
is not necessarily sufficient to prevent” application of
Rule 4(k)(2), Appx 17 n.11 (emphasis in original), and then
relying solely on TP-Link’s post-suit consent to find that
Rule 4(k)(2) was inapplicable here. Considering the total-
ity of circumstances, we think the issue was appropriately
raised and addressed by the district court such that we may
review it on mandamus.
Finally, TP-Link argues that “[t]he record below shows
that Respondents have strong and significant contacts with
the CDCA, and that Stingray could have brought suit in
that forum regardless of the Respondents’ consent.” Resp.
at 11, 15. The district court did not make such a finding,
and we decline to do so in the first instance on mandamus.
Stingray has persuaded us that this case involves cir-
cumstances making use of mandamus appropriate. Ac-
cordingly, we turn to the merits.
III
In patent infringement cases, the issue of “[w]hether
the district court had personal jurisdiction over [a defend-
ant] is a question we review” under Federal Circuit law,
such that we “supply our own analysis as to whether
Rule 4(k)(2) applies.” Synthes (U.S.A.) v. G.M. Dos Reis Jr.
Ind. Com. de Equip. Medico,
563 F.3d 1285, 1292–93 (Fed.
Cir. 2009).
Rule 4(k)(2) was introduced to “close[] a loophole that
existed prior to the 1993 amendments,” by which “a non-
resident defendant who did not have ‘minimum contacts’
with any individual state sufficient to support exercise of
jurisdiction, but did have sufficient contacts with the
United States as a whole, could escape jurisdiction in all
fifty states.” Touchcom, Inc. v. Bereskin & Parr,
574 F.3d
1403, 1414 (Fed. Cir. 2009). The rule provides:
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8 IN RE: STINGRAY IP SOLUTIONS, LLC
For a claim that arises under federal law, serving
a summons or filing a waiver of service establishes
personal jurisdiction over a defendant if:
(A) the defendant is not subject to jurisdic-
tion in any state’s courts of general juris-
diction; and
(B) exercising jurisdiction is consistent
with the United States Constitution and
laws.
Fed. R. Civ. P. 4(k)(2).
Stingray’s petition focuses on the so-called “negation
requirement” of Rule 4(k)(2)(A)—that “the defendant is not
subject to jurisdiction in any state’s courts of general juris-
diction.” More specifically, Stingray’s petition presents the
question of whether a defendant’s post-suit, unilateral con-
sent to suit in another state prevents this condition from
being satisfied. In addressing this issue, we do not write
on a clean slate.
In Touchcom, this court joined the majority of circuits
in placing the burden on the defendant to show that the
negation requirement is not met—i.e., “the defendant is af-
forded the opportunity to avoid the application of the rule
only when it designates a suitable forum in which the
plaintiff could have brought suit.” 574 F.3d at 1415. “[I]f
the defendant contends that [it] cannot be sued in the fo-
rum state and refuses to identify any other where suit is
possible, then the federal court is entitled to use Rule
4(k)(2).” Id. (citation omitted). We further noted that if
“the district court determines that [defendants] are subject
to personal jurisdiction in another state, or if [defendants]
designate such a forum, the district court is welcome to
transfer the case as it sees fit.” Id. at 1416.
Later, in Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283 (Fed.
Cir. 2012), we confronted the question now raised by Sting-
ray’s petition but in the context of a default judgment case.
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IN RE: STINGRAY IP SOLUTIONS, LLC 9
There, the panel majority, relying on Touchcom, observed
that “the defendant’s burden under the negation require-
ment entails identifying a forum where the plaintiff could
have brought suit—a forum where jurisdiction would have
been proper at the time of filing, regardless of consent.”
Id.
at 1294 (emphasis in original). “Consistent with that obli-
gation, a defendant does not identify a more appropriate
state by suggesting an alternative forum with no basis for
personal jurisdiction but for its [i.e., the defendant’s] con-
sent.”
Id. at 1294–95 (cleaned up). Ultimately, the Merial
majority concluded that it “need not decide today the gen-
eral requirements for a defendant to prevent the applica-
tion of Rule 4(k)(2) by consenting to suit in another
jurisdiction,” because it was sufficient to limit the court’s
holding to challenges to a default judgment.
Id. at 1295.
Although the Merial majority’s statements indicating
that a defendant cannot satisfy its burden under
Rule 4(k)(2)(A) based merely on unilateral, post-suit con-
sent have been reasonably viewed as dicta for non-default
judgment cases, we nevertheless agree with the majority’s
reasoning. Therefore, we now confirm that “the defend-
ant’s burden under the negation requirement entails iden-
tifying a forum where the plaintiff could have brought
suit—a forum where jurisdiction would have been proper
at the time of filing, regardless of consent.”
Id. at 1294 (in-
ternal emphasis omitted). A defendant (such as TP-Link)
cannot simply use a “unilateral statement of consent” to
preclude application of Rule 4(k)(2) and “achieve transfer
into a forum it considers more convenient (or less conven-
ient for its opponent).”
Id. at 1295.
The Supreme Court adopted a similar approach in
Hoffman v. Blaski,
363 U.S. 335 (1960). There, the Court
interpreted
28 U.S.C. § 1404(a) (permitting transfer of a
case to a forum “where it might have been brought”) as only
allowing transfer to federal forums where the plaintiff
“ha[d] a right to sue” when “[the] suit . . . commenced,” re-
gardless of the later “wish or waiver of the defendant.”
Id.
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10 IN RE: STINGRAY IP SOLUTIONS, LLC
at 343–44 (citation omitted). 1 The Court declined to adopt
a contrary rule because it would lead to “gross discrimina-
tion”—permitting transfer “to any district desired by the
defendants and in which they were willing to waive their
statutory defenses as to venue and jurisdiction,” while pro-
hibiting the plaintiff from originally bringing or later
“transfer[ring] the action to the same district, without the
consent and waiver of venue and personal jurisdiction de-
fenses by the defendants.”
Id. at 344. Nothing in the text
or legislative history of the statute suggested Congress in-
tended “such discriminatory purpose.”
Id.
Likewise, we see nothing in Rule 4(k)(2) or its history
that would permit a defendant to achieve transfer to a pre-
ferred district simply by unilateral, post-suit consent. 2 The
plain language of the rule does not support such a result.
Nor do the Advisory Committee Notes, “a reliable source of
insight into the meaning of a rule,” Hall v. Hall,
138 S. Ct.
1118, 1130 (2018) (internal quotation marks and citation
omitted), which make clear that Rule 4(k)(2) was not in-
tended to “affect the operation of federal law[s] providing
for the change of venue,” §§ 1404(a), 1406, 1631, but was
instead envisioned to work in harmony with those provi-
sions to “preclude most conflicts between the full exercise
of territorial jurisdiction permitted by this rule and the
Fifth Amendment requirement of ‘fair play and substantial
justice.’” Advisory Committee Notes on 1993 Amendment
to Fed. R. Civ. P. 4. The notes, thus, do not contemplate
1 Congress has since amended § 1404(a) to permit
transfer “to any district or division to which all parties have
consented.”
2 The effects of forum shopping, that would arguably
be permitted under the alternative reading of Rule 4(k)(2),
could be particularly acute for non-patent, federal causes
of action, which may be affected by differences in regional
circuit law.
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IN RE: STINGRAY IP SOLUTIONS, LLC 11
that Rule 4(k)(2) may be defeated, and transfer compelled,
based on defendant’s unilateral, post-suit consent to suit in
a different forum. Rather, the notes confirm that the typi-
cal analysis for “transfer for fairness and convenience un-
der § 1404” applies, id., a standard which does not depend
on the “wish or waiver of the defendant,” Hoffman,
363 U.S.
at 343.
In light of our conclusion, we vacate the district court’s
transfer order. In further proceedings consistent with this
order, the district court may find it necessary to assess
whether TP-Link can satisfy Rule 4(k)(2)’s negation re-
quirement on the grounds that Stingray “could have
brought suit” in the Central District of California, inde-
pendent of TP-Link’s post-suit consent. See Merial, 681
F.3d at 1294–95. Additionally, or alternatively, the district
court may consider whether transfer under § 1404(a) would
be appropriate.
Accordingly,
IT IS ORDERED THAT:
The petition is granted to the extent that the district
court’s transfer orders are vacated and the court is in-
structed to recall any case files from the United States Dis-
trict Court for the Central District of California. The case
is remanded for further proceedings consistent with this
order.
FOR THE COURT
January 9, 2023 /s/ Peter R. Marksteiner
Date Peter R. Marksteiner
Clerk of Court
