Case: 21-149 Document: 2-1 Page: 1 Filed: 06/04/2021
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`No. _____
`
`United States Court of Appeals
`for the Federal Circuit
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`IN RE VOLKSWAGEN GROUP OF AMERICA, INC.,
`
`Petitioner
`
`On Petition for a Writ of Mandamus to the
`United States District Court for the Western District of Texas
`No. 6:20-cv-01131
`Judge Alan D. Albright
`
`PETITION FOR A WRIT OF MANDAMUS
`
`Mark Hannemann
`Thomas R. Makin
`Eric S. Lucas
`Ahmed ElDessouki
`SHEARMAN & STERLING LLP
`599 Lexington Avenue
`New York, NY 10022
`212.848.4000
`
`Attorneys for Petitioner
`Volkswagen Group of America, Inc.
`
`June 4, 2021
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`
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 1 of 44
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`Case: 21-149 Document: 2-1 Page: 2 Filed: 06/04/2021
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`FORM 9. Certificate of Interest
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`Form 9 (p. 1)
`July 2020
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`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
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`CERTIFICATE OF INTEREST
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`Case Number
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`Short Case Caption
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`In re Volkswagen Group of America, Inc.
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`Filing Party/Entity
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`Volkswagen Group of America, Inc.
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`Instructions: Complete each section of the form. In answering items 2 and 3, be
`specific as to which represented entities the answers apply; lack of specificity may
`result in non-compliance. Please enter only one item per box; attach
`additional pages as needed and check the relevant box. Counsel must
`immediately file an amended Certificate of Interest if information changes. Fed.
`Cir. R. 47.4(b).
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`I certify the following information and any attached sheets are accurate and
`complete to the best of my knowledge.
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`06/04/2021
`Date: _________________
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`Signature:
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`/s/ Mark Hannemann
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`Name:
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`Mark Hannemann
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 2 of 44
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`Case: 21-149 Document: 2-1 Page: 3 Filed: 06/04/2021
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 2)
`July 2020
`
`1. Represented
`Entities.
`Fed. Cir. R. 47.4(a)(1).
`
`2. Real Party in
`Interest.
`Fed. Cir. R. 47.4(a)(2).
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`3. Parent Corporations
`and Stockholders.
`Fed. Cir. R. 47.4(a)(3).
`
`Provide the full names of
`all entities represented
`by undersigned counsel in
`this case.
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`Provide the full names of
`all real parties in interest
`for the entities. Do not
`list the real parties if
`they are the same as the
`entities.
`
`Provide the full names of
`all parent corporations
`for the entities and all
`publicly held companies
`that own 10% or more
`stock in the entities.
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`(cid:1798) None/Not Applicable (cid:1798) None/Not Applicable
`✔
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`Volkswagen Group of America, Inc.
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`Volkswagen AG
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`Additional pages attached
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 3 of 44
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`Case: 21-149 Document: 2-1 Page: 4 Filed: 06/04/2021
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`FORM 9. Certificate of Interest
`
`Form 9 (p. 3)
`July 2020
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`4. Legal Representatives. List all law firms, partners, and associates that (a)
`appeared for the entities in the originating court or agency or (b) are expected to
`appear in this court for the entities. Do not include those who have already
`entered an appearance in this court. Fed. Cir. R. 47.4(a)(4).
`
`None/Not Applicable
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`Additional pages attached
`
`David Whittlesey
`
`Daniel M. Chozick
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`(Shearman & Sterling LLP)
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`(Shearman & Sterling LLP)
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`5. Related Cases. Provide the case titles and numbers of any case known to be
`pending in this court or any other court or agency that will directly affect or be
`directly affected by this court’s decision in the pending appeal. Do not include the
`originating case number(s) for this case. Fed. Cir. R. 47.4(a)(5). See also Fed. Cir.
`R. 47.5(b).
`
`None/Not Applicable
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`Additional pages attached
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`IPR2021-00712
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`IPR2021-00716
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`IPR2021-00717
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`IPR2021-00718
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`IPR2021-00719
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`IPR2021-00720
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`IPR2021-00721
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`6. Organizational Victims and Bankruptcy Cases. Provide any information
`required under Fed. R. App. P. 26.1(b) (organizational victims in criminal cases)
`and 26.1(c) (bankruptcy case debtors and trustees). Fed. Cir. R. 47.4(a)(6).
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`✔
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`None/Not Applicable
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`Additional pages attached
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 4 of 44
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`Case: 21-149 Document: 2-1 Page: 5 Filed: 06/04/2021
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`
`TABLE OF CONTENTS
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`RELIEF SOUGHT ................................................................................................ - 1 -(cid:3)
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`ISSUES PRESENTED .......................................................................................... - 2 -(cid:3)
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`STATEMENT OF FACTS ................................................................................... - 4 -(cid:3)
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`A.(cid:3)
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`Procedural History ............................................................................ - 4 -(cid:3)
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`B.(cid:3) Volkswagen Has No Place of Business in the Western District of
`Texas ................................................................................................. - 7 -(cid:3)
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`REASONS WHY THE WRIT SHOULD ISSUE ................................................ - 9 -(cid:3)
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`A.(cid:3)
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`It is Clear and Undisputable that Venue Is Improper in the
`Western District of Texas ................................................................. - 9 -(cid:3)
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`B.(cid:3) A Writ of Mandamus Is the Only Adequate Means for
`Volkswagen to Obtain Relief ......................................................... - 13 -(cid:3)
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`C.(cid:3) A Writ of Mandamus Is Appropriate in This Case ........................ - 18 -(cid:3)
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 5 of 44
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`Case: 21-149 Document: 2-1 Page: 6 Filed: 06/04/2021
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`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`In re Apple Inc.,
`979 F.3d 1332 (Fed. Cir. 2020) ............................................................................ 1
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019 (PTAB Mar. 20, 2020) ................................................. 16, 17, 18
`
`Bankers Life & Casualty Co. v. Holland,
`346 U.S. 379 (1953) ............................................................................................ 13
`
`In re BigCommerce, Inc.,
`890 F.3d 978 (Fed. Cir. 2018) ............................................................................ 14
`
`Blitzsafe Texas, LLC v. BMW of North America, LLC, et al.,
`2:17-cv-00418-JRG, 2018 WL 4849345 (E.D. Tex. Sep. 6, 2018) .. 10, 11, 12, 14
`
`In re Bose Corp.,
`No. 2021-145 (Fed. Cir. May 25, 2021) ....................................................... 13, 14
`
`Brunette Mach. Works, Ltd. v. Kockum Indust., Inc.,
`406 U.S. 706 (1972) ............................................................................................ 15
`
`Corydoras Techs., LLC v. Volkswagen Group of America Inc..,
`2:21-cv-00199 (E.D. Tex. June 3, 2021) ............................................................ 19
`
`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017) .............................................................. 10, 11, 14
`
`Ford Motor Co. v. Texas Dep’t of Transp.,
`264 F.3d 493 (5th Cir. 2001) ............................................................................ 8, 9
`
`In re Google LLC,
`949 F.3d 1338 (Fed. Cir. 2020) .......................................................................... 12
`
`In re Google,
`No. 2018-152, 2018 WL 5536478 (Fed Cir. Oct. 29, 2018) .............................. 13
`
`In re Micron Tech., Inc.,
`875 F.3d 1091 (Fed. Cir. 2017) .......................................................................... 14
`
`
`
`ii
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 6 of 44
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`Case: 21-149 Document: 2-1 Page: 7 Filed: 06/04/2021
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`In re Nintendo Co., Ltd.,
`544 F. App’x 934 (Fed. Cir. 2013) ..................................................................... 15
`
`Omega Patents, LLC v. BMW of North Am.,
`1:20-cv-01907-SDG, 2020 WL 8184342 (N.D. Ga. Dec. 21, 2020) ..........passim
`
`Optic153 LLC v. Thorlabs Inc.,
`6:19-CV-667-ADA, 2020 WL 3403076 (W.D. Tex. June 19, 2020) ................. 15
`
`In re SK Hynix Inc.,
`835 F. App’x 600 (Fed. Cir. 2021) ..................................................................... 15
`
`TC Heartland LLC v. Kraft Foods Group Brands LLC,
`137 S.Ct. 1514, 581 U.S. ___ (2017) .................................................................... 9
`
`Tour Tech. Software, Inc. v. RTV, Inc.,
`377 F.Supp.3d 195 (2019) .................................................................................. 11
`
`In re TracFone Wireless, Inc.,
`No. 2021-118, 2021 WL 865353 (Fed. Cir. Mar. 8, 2021) ................................ 15
`
`U.S. v. Munsingwear, Inc.,
`340 U.S. 36 (1950) .............................................................................................. 19
`
`Uni-Sys., LLC v. U.S. Tennis Ass’n. Nat’l. Tennis Center Inc.,
`2020 WL 1694490 (E.D.N.Y., Apr. 7, 2020) ..................................................... 11
`
`West View Research, LLC v. BMW of North America, LLC, et al.,
`16-cv-2590 JLS, 2018 WL 4367378 (S.D. Cal. Feb. 5, 2018) ............... 10, 12, 14
`
`In re ZTE (USA) Inc.,
`890 F.3d 1008 (Fed. Cir. 2018) .......................................................................... 14
`
`Statutes
`
`28 U.S.C. § 1391 ...................................................................................................... 11
`
`28 U.S.C. § 1400(b) ................................................................................. 9, 11, 12, 13
`
`28 U.S.C. § 1406(a) ................................................................................................. 12
`
`Tex. Occ. Code § 2301.476(c) ............................................................................... 8, 9
`
`
`
`iii
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 7 of 44
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`Case: 21-149 Document: 2-1 Page: 8 Filed: 06/04/2021
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`RELIEF SOUGHT
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`1.
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`An order requiring the district court to dismiss this action for improper
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`venue (or, if transfer rather than dismissal is in the interest of justice, to
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`transfer it to the Eastern District of Michigan, a district in which the case
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`could have been brought); or
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`2.
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`In the alternative, an order requiring the district court to give
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`Volkswagen’s motion to dismiss for improper venue filed February 19,
`
`2021, which was fully briefed on March 12, 2021, “top priority,” In re
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`Apple Inc., 979 F.3d 1332, 1343 (Fed. Cir. 2020), and to stay further
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`litigation in the district court pending decision on the improper-venue
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`motion.
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`- 1 -
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 8 of 44
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`Case: 21-149 Document: 2-1 Page: 9 Filed: 06/04/2021
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`ISSUES PRESENTED
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`
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`1.
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`Is an independent automotive dealership (e.g., Volkswagen of Waco) a
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`“regular and established place of business” of the associated automotive
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`supplier (i.e., Volkswagen Group of America) for the purposes of the
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`patent venue statute? Volkswagen respectfully submits that the answer is
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`“no,” it is not subject to nationwide venue for patent cases merely
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`because it sells cars to independent dealerships nationwide.
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`2.
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`Is it proper for a district court to require a defendant to engage in
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`litigation (e.g., by serving invalidity contentions, producing documents,
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`selecting claim terms for construction, proposing constructions and
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`identifying associated extrinsic evidence, and briefing Markman issues)
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`before the district court decides the defendant’s motion to dismiss for
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`improper venue? Volkswagen respectfully submits that the answer is
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`“no,” because, among other reasons, (i) the very purpose of the venue
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`laws is to prevent parties from having to litigate in districts where they
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`have no operations, and (ii) the risk to Volkswagen that the Patent Trial
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`and Appeal Board may deny institution of co-pending inter parties
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`review petitions in view of the ongoing litigation activity, and scheduled
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`Markman and trial dates, underway in the improper venue.
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`- 2 -
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 9 of 44
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`Case: 21-149 Document: 2-1 Page: 10 Filed: 06/04/2021
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`3.
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`Is mandamus appropriate in this case? Volkswagen respectfully submits
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`that the answer is “yes,” mandamus is appropriate, because of (i) the
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`irreparable harm Volkswagen will otherwise suffer, and (ii) the recurring
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`nature of the legal issue raised in this petition.
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`
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`- 3 -
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`StratosAudio Exhibit 2002
`Volkswagen v StratosAudio
`IPR2021-00716
`Page 10 of 44
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`Case: 21-149 Document: 2-1 Page: 11 Filed: 06/04/2021
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`STATEMENT OF FACTS
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`
`
`A.
`
`Procedural History
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`Plaintiff filed its complaint in this case (D.I. 1) on December 11, 2020. On
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`February 19, 2021, defendant Volkswagen Group of America, Inc.
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`(“Volkswagen”) responded to the complaint by filing a Rule 12(b)(3) motion to
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`dismiss for improper venue, or, if it is in the interest of justice to transfer rather
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`than dismiss, to transfer to the Eastern District of Michigan, where the case could
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`have been brought (D.I. 16). Volkswagen filed its reply brief (D.I. 23) on March
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`12, making the motion fully briefed and ready for decision.1
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`The grounds for the motion are described in the sections below, but the
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`overall point of Volkswagen’s motion is that Volkswagen has no place of business
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`in the Western District of Texas—no real estate, no employees, and no inventories
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`(see generally D.I. 16; see also the Hahn Declaration, Appx0001–0003). Plaintiff
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`does not contest those facts, but instead argues that the presence of independent
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`Volkswagen- and Audi-brand dealerships in the district suffices to make venue
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`proper in a case against Volkswagen (see generally D.I. 22, Plaintiff’s opposition
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`brief).
`
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`On March 4, the parties filed a Case Readiness Status Report (D.I. 21), as
`required by the district court’s procedures. That report pointed to the
`pending motion to dismiss.
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`- 4 -
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`1
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 11 of 44
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`Case: 21-149 Document: 2-1 Page: 12 Filed: 06/04/2021
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`While the venue briefing was ongoing, on March 4, the parties filed their
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`required joint status report, which noted that Volkswagen expected to file IPR
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`petitions shortly (D.I. 21).
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`On April 30, Plaintiff filed in the district court a notice (D.I. 27) that on
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`April 16 Volkswagen had filed seven IPR petitions (one for each asserted patent).
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`As the district court’s procedures required, the notice included expected dates for
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`the PTAB’s institution decisions, the earliest being October 26, 2021, and final
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`written decisions, the earliest being October 26, 2022.
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`Less than a week after Plaintiff filed the notice, on May 4, the district court’s
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`law clerk emailed the parties (Appx0004) to say that the court would not hold a
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`case-management conference, but that for scheduling purposes one would be
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`deemed to have occurred on May 13. The law clerk also informed the parties that
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`there would be a Markman hearing on October 4, 2021, and that the estimated trial
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`date was October 3, 2022. That Markman date is just before the predicted date for
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`the IPR institution decisions, and that trial date is just before the predicted date for
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`the IPR final written decisions.
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`The parties’ joint scheduling proposal was due May 27. On May 17, after
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`consultations among the parties, Volkswagen emailed the district court’s law clerk
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`with both sides’ positions on the impact of the pending motion to dismiss on the
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`proposed schedule. Volkswagen expressed its position thus:
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`- 5 -
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`IPR2021-00716
`Page 12 of 44
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`Case: 21-149 Document: 2-1 Page: 13 Filed: 06/04/2021
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`
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`Defendants Volkswagen and Hyundai believe that this
`litigation should not go forward in this Court unless their
`respective motions to dismiss for improper venue are
`denied. Volkswagen and Hyundai respectfully request the
`Court’s guidance on when the Court anticipates ruling on
`those motions.
`
`
`Appx0008-0009.2
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`The district court’s law clerk responded later the same day:
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`
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`The Court is in trial this week and will not hold a hearing
`for the issue listed below. The Court will not stay the cases
`pending rulings on the motions to dismiss/transfer.
`Pursuant to the Court’s Standing Order Regarding
`Motion(s) for Inter-District Transfer, the Court will rule
`on these motions before Markman hearing.
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`Appx0008.
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`The case is accordingly advancing, with proposed schedules for production
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`of technical documents about every accused car (178 of them, at last count3),
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`production of financial information about every accused car, invalidity contentions,
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`exchange of proposed claim terms and proposed constructions, disclosure of
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`This case is one of five that Plaintiff filed on the same day. The defendants
`in the other four cases are Hyundai, Mazda, Subaru, and Volvo.
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`Plaintiff accused 127 Audi model years, 13 Bentley model years, 9
`Lamborghini model years, and 29 Volkswagen model years. Plaintiff also
`accused various Porsche model years, but Volkswagen did not sell those
`cars.
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`- 6 -
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`2
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`3
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`IPR2021-00716
`Page 13 of 44
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`Case: 21-149 Document: 2-1 Page: 14 Filed: 06/04/2021
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`extrinsic claim-construction evidence, Markman briefing, and filing of technical
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`tutorials. See generally D.I. 29, submitting the proposed schedules.
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`The standing order to which the law clerk’s email referred states:
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`When there is a pending inter-district transfer, the Court
`will either promptly enter an order resolving the pending
`motion(s) prior to the Markman hearing or it will postpone
`the Markman hearing until it has had the opportunity to do
`so. The Court will not conduct a Markman hearing until it
`has resolved the pending motion to transfer.
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`Standing Order Regarding Motion for Inter-District Transfer (W.D. Tex. Mar. 23,
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`2021). The order does not explicitly address motions to dismiss for improper
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`venue.
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`B. Volkswagen Has No Place of Business in the Western District of
`Texas
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`As set forth in the Hahn Declaration (Appx0001-0003), Volkswagen does
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`not own or lease any real estate in the Western District of Texas (Appx0002, ¶ 4),
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`does not have any offices, warehouses, or other places of business within the
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`Western District of Texas (Appx0002, ¶ 5), does not have ownership of an
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`inventory of vehicles or parts at warehouses or other facilities in the Western
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`District of Texas (Appx0002, ¶ 6), does not regularly employ any personnel
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`stationed in the Western District of Texas or create, maintain, or store any
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`documents at any location in the Western District of Texas (Appx0002, ¶ 7), and
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`- 7 -
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`Volkswagen v StratosAudio
`IPR2021-00716
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`Case: 21-149 Document: 2-1 Page: 15 Filed: 06/04/2021
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`does not service or sell vehicles directly to consumers in the Western District of
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`Texas (Appx0002, ¶ 8).4
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`There are Volkswagen- and Audi-brand dealerships in the district, but those
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`dealerships are owned and operated by entities independent of Defendant,
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`Volkswagen (Appx0002, ¶ 10). Under Texas law, those dealerships are required to
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`be owned and operated independently from Volkswagen (Appx0002, ¶10). See
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`Tex. Occ. Code § 2301.476(c); see also Ford Motor Co. v. Texas Dep’t of Transp.,
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`264 F.3d 493, 507 (5th Cir. 2001) (the statute “provides that a manufacturer may
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`not directly or indirectly, operate or control a dealer or act in the capacity of a
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`dealer”).
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`4
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`Volkswagen does maintain a place of business (a customer relations and
`after sales support center) in Auburn Hills, Michigan. Appx0003 (Hahn
`Decl.), ¶ 11.
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`- 8 -
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`IPR2021-00716
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`Case: 21-149 Document: 2-1 Page: 16 Filed: 06/04/2021
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`REASONS WHY THE WRIT SHOULD ISSUE
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`A.
`
`It is Clear and Undisputable that Venue Is Improper in the
`Western District of Texas
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`A corporate defendant may be forced to litigate a patent case only in (i) the
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`district in which the defendant is incorporated, or (ii) a district where the defendant
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`has a “regular and established place of business.” See 28 U.S.C. § 1400(b); TC
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`Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514, 1516–17, 581
`
`U.S. ___ (2017).
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`It is the plaintiff’s burden to prove that venue is proper. See, e.g., Omega
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`Patents, LLC v. BMW of North Am., 1:20-cv-01907-SDG, 2020 WL 8184342, at
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`*1 (N.D. Ga. Dec. 21, 2020).
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`As described above, Volkswagen itself has no presence in the district.
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`Plaintiff’s venue argument depends entirely on the presence of Volkswagen
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`dealers in the district.
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`However, these dealers are, by Texas law, independent of Volkswagen. See
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`Tex. Occ. Code § 2301.476(c); see also Ford Motor Co. v. Texas Dep’t of Transp.,
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`264 F.3d 493, 507 (5th Cir. 2001) (the statute “provides that a manufacturer may
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`not directly or indirectly, operate or control a dealer or act in the capacity of a
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`dealer”).
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`Nonetheless, Plaintiff argues that the independent dealerships are
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`Volkswagen’s own places of business.
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`- 9 -
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`IPR2021-00716
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`Case: 21-149 Document: 2-1 Page: 17 Filed: 06/04/2021
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`The question presented in this petition is not an issue of first impression.
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`Three district courts have already considered the question of whether an
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`independent car dealership is the car manufacturer’s place of business.
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`On the one hand, both the United States District Court for the Northern
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`District of Georgia and the United States District Court for the Southern District of
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`California concluded that the presence of dealerships does not confer venue for a
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`suit against the automaker, because the dealerships are not “the place of the
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`defendant.”5
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`On the other hand, in a since-vacated decision, the United States District
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`Court for the Eastern District of Texas concluded that the presence of dealerships
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`did make venue proper.6
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`In the Texas case, Judge Gilstrap, citing Cray, found that venue was proper
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`because BMW had “adopted and ratified the dealerships within this District as its
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`place of business.” 2018 WL 4849345 at *7–8. The Georgia court considered
`
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`Omega Patents, 2020 WL 8184342, at *2–6, citing In re Cray Inc., 871 F.3d
`1355, 1360 (Fed. Cir. 2017); see West View Research, LLC v. BMW of North
`America, LLC, et al., 16-cv-2590 JLS (AGS), 2018 WL 4367378, at *9
`(S.D. Cal. Feb. 5, 2018).
`
`See Blitzsafe Texas, LLC v. BMW of North America, LLC, et al., 2:17-cv-
`00418-JRG, 2018 WL 4849345, at *12 (E.D. Tex. Sept. 6, 2018), vacated by
`Blitzsafe Texas LLC v. Mitsubishi Electric Corp. et al., 2:17-cv-00418-JRG,
`2019 WL 3494359, at *1 (E.D. Tex., Aug. 1, 2019).
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 17 of 44
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`Case: 21-149 Document: 2-1 Page: 18 Filed: 06/04/2021
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`Judge Gilstrap’s reasoning at length, 2020 WL 8184342 at *4–6, but, having
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`analyzed the case law, including Cray, concluded that venue was not proper:
`
`A finding that venue is proper in this District as to
`BMWNA under the facts alleged would, in this Court’s
`view, significantly expand the scope of § 1400(b)—a
`result it does not believe the Federal Circuit intended
`with its decision in Cray, 871 F.3d at 1361. See also Uni-
`Sys., 2020 WL 1694490, at *15 (“Reading the statute as
`[plaintiff] suggests would read out any distinction between
`the ‘doing business’ inquiry of the general venue statute,
`28 U.S.C. § 1391, and the ‘regular and established place
`of business’ inquiry of the patent venue statute, 28 U.S.C.
`§ 1400(b).”); Tour Tech., 377 F. Supp. 3d at 209
`(distinguishing Blitzsafe and holding “[a]lthough RTV’s
`actions and contacts within the district would likely be
`sufficient to satisfy the general venue statute, the Court is
`mindful that the patent venue statute is narrower.”). In
`sum, the Court finds that venue is not proper in this
`District against BMWNA under § 1400(b).
`
`Id. at *6 (emphasis added; brackets in original).
`
`As noted above, in finding venue for BMWNA to be proper, the Texas court
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`relied on a “ratification” theory: “Here, BMWNA has undoubtedly adopted and
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`ratified the dealerships within this District as its places of business.” 2018 WL
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`4849345 at *8. The court found that BMW had “ratified” the dealerships as its own
`
`places of business because only authorized dealers are permitted to sell new
`
`BMWs, the dealerships have “BMW” in their names and display BMW’s
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`trademarks, and because BMW’s own web site points consumers to the
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`dealerships. Id.
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 18 of 44
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`Case: 21-149 Document: 2-1 Page: 19 Filed: 06/04/2021
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`Plaintiff makes the same arguments in this case. But both the California
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`court and the Georgia court explicitly rejected this reasoning. See generally 2020
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`WL 8184342; 2018 WL 4367378.
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`Those courts were correct to do so, because regardless of the fact that
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`dealerships sell cars, and use the car makers’ trademarks to do so, and regardless of
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`the fact that the car makers refer consumers to the dealers, the dealerships are
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`nonetheless separate entities from the car makers. Volkswagen- and Audi-brand
`
`dealers have physical places of business, but they are the dealers’ own places of
`
`business, not Volkswagen’s.
`
`In Google, the Federal Circuit (though talking about computer server farms)
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`articulated another reason why dealerships are not the car makers’ places of
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`business: To qualify under the venue statute, a place of business “generally
`
`requires an employee or agent of the defendant to be conducting business at that
`
`place.” In re Google LLC, 949 F.3d 1338, 1344 (Fed. Cir. 2020). Volkswagen has
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`no employees or agents located at the dealerships. Appx0002 (Hahn Decl.), ¶ 7.
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`The Omega Patents (Georgia) and West View Research (California)
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`decisions are correct, and the now-vacated Blitzsafe (Texas) decision is wrong.
`
`Volkswagen does not have a regular and established place of business in this
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`District, and so, pursuant to 28 U.S.C. §§ 1400(b) and 1406(a), this case must be
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`dismissed or transferred.
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`Volkswagen v StratosAudio
`IPR2021-00716
`Page 19 of 44
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`Case: 21-149 Document: 2-1 Page: 20 Filed: 06/04/2021
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`B. A Writ of Mandamus Is the Only Adequate Means for
`Volkswagen to Obtain Relief
`
`Volkswagen appreciates that “Mandamus is reserved for extraordinary
`
`situations,” In re Bose Corp., No. 2021-145, (Fed. Cir. May 25, 2021)
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`(nonprecedential), and that this Court has stated, “a post-judgment appeal generally
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`is an adequate remedy for asserted § 1400(b) violations.”7 In Bose, this Court
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`found no need to grant mandamus on a venue issue because “The only deadlines
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`Bose seeks to stay are the deadlines to file its responsive Markman brief and sur-
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`reply Markman brief,” and moreover because Bose did not show that it would be
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`irreparably harmed absent a writ. Slip op. at 3. This case is at an earlier stage than
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`was the Bose case, with more discovery and other deadlines coming up, including
`
`technical and financial document production, invalidity contentions, and the entire
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`claim-construction process. Moreover, as also described below, a writ of
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`mandamus is the only way for Volkswagen to obtain relief and avoid the risk of
`
`irreparable harm—not just in district court, but in the PTAB as well, where
`
`Volkswagen has seven IPR petitions pending (one for each asserted patent).
`
`
`In re Google, No. 2018-152, 2018 WL 5536478, at *2 (Fed Cir. Oct. 29,
`2018) (citing Bankers Life & Casualty Co. v. Holland, 346 U.S. 379 (1953),
`a case where a transfer was granted and the plaintiff sought mandamus to
`reverse the transfer; thus, a case in which no litigation was taking place in an
`improper venue).
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`IPR2021-00716
`Page 20 of 44
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`Case: 21-149 Document: 2-1 Page: 21 Filed: 06/04/2021
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`Mandamus is also appropriate here, when it was not in Bose, because the
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`underlying motion presents a basic, recurring issue, as evidenced by the three
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`district court decisions (Omega, in Georgia; West View Research, in California,
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`and Blitzsafe in east Texas) that have already addressed it.8 It is also appropriate
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`because this petition presents an issue “important to proper judicial
`
`administration.”9
`
`In this case, Volkswagen sought the district court’s advice as to when a
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`venue ruling might be expected. See Appx0008-0009. In response, the district
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`court’s law clerk stated only, “the Court will rule on these motions before
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`Markman hearing.” Id. The district court’s law clerk also made it clear that the
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`parties must continue to litigate while the district court considers Volkswagen’s
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`motion to dismiss. See id.
`
`
`See In re ZTE (USA) Inc., 890 F.3d 1008, 1011 (Fed. Cir. 2018) (granting
`writ in improper-venue case, and noting mandamus is appropriate to “to
`further supervisory or instructional goals where issues are unsettled and
`important”) (quotations omitted); In re BigCommerce, Inc., 890 F.3d 978,
`981 (Fed. Cir. 2018) (same); see also In re Micron Tech., Inc., 875 F.3d
`1091, 1095–96 (Fed. Cir. 2017) (granting writ in improper-venue case,
`noting, “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 Cray Inc., 871 F.3d 1355, 1358–59 (Fed. Cir. 2017).
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`IPR2021-00716
`Page 21 of 44
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`Case: 21-149 Document: 2-1 Page: 22 Filed: 06/04/2021
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`But waiting for a district-court decision on the venue motion while the
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`litigation continues is not a solution in this case. This conclusion is consistent with
`
`this Court’s mandamus jurisprudence:
`
`. . . a trial court must first address whether it is a proper
`and convenient venue before addressing any substantive
`portion of the case. Indeed, this court has specifically
`recognized the importance of addressing motions to
`transfer at the outset of litigation.10
`
`Plaintiff would argue that there is no harm to Volkswagen in actively
`
`litigating in the Western District pending a decision on the venue motion. But that
`
`argument is incorrect.
`
`First, the whole point of the venue statute is to prevent defendants from
`
`having to litigate in districts where they are not present. “The purpose of the
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`statutory limits on venue in a patent venue statute are to protect defendants from
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`suit in forums distant from their place of incorporation or residence.” Optic153
`
`LLC v. Thorlabs Inc., 6:19-CV-667-ADA, 2020 WL 3403076, at *2 (W.D. Tex.
`
`June 19, 2020); see also, e.g., Brunette Mach. Works, Ltd. v. Kockum Indust., Inc.,
`
`
`In re Nintendo Co., Ltd., 544 F. App’x 934, 941 (Fed. Cir. 2013) (quotations
`omitted, emphasis added); see also In re TracFone Wireless, Inc., No. 2021-
`118, 2021 WL 865353, at *1–2 (Fed. Cir. Mar. 8, 2021) (granting writ in
`§ 1404 discretionary-transfer case because, “district courts must give
`promptly filed transfer motions ‘top priority’ before resolving the
`substantive issues in the case.”); In re SK Hynix Inc., 835 F. App’x 600, 601
`(Fed. Cir. 2021) (on petition for writ of mandamus, directing district court to
`stay proceedings until ruling on transfer issue).
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`Case: 21-149 Document: 2-1 Page: 23 Filed: 06/04/2021
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`406 U.S. 706, 712 (1972) (explaining Congressional intent that “patent
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`infringement claims were to be heard only in the district where the defendant was
`
`an inhabitant, or the district where he committed acts of infringement and also
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`maintained a regular and established place of business.”) That Congressional
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`purpose will be frustrated if Volkswagen is forced to litigate in the Western
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`District of Texas until the Markman hearing while waiting for the district court to
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`rule on the motion.
`
`Second, litigating until the Markman hearing causes Volkswagen the very
`
`real risk that its substant