United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: TC HEARTLAND LLC,
`Petitioner
`______________________
`
`2016-105
`______________________
`
`On Petition for Writ of Mandamus to the United
`States District Court for the District of Delaware in No.
`1:14-cv-00028-LPS, Chief Judge Leonard P. Stark.
`______________________
`
`ON PETITION
`______________________
`
`JOHN F. DUFFY, Hughes Hubbard & Reed LLP, Wash-
`ington, DC, argued for petitioner. Also represented by
`JAMES W. DABNEY, RICHARD KOEHL, STEFANIE M.
`LOPATKIN, WANDA DELORIS FRENCH-BROWN, New York,
`NY.
`
`JOHN DAVID LUKEN, Dinsmore & Shohl LLP, Cincin-
`nati, OH, argued for respondent. Also represented by
`JOSHUA LORENTZ.
`
`BRIAN DAVID LEDAHL, Russ August & Kabat, Los An-
`geles, CA, for amici curiae Guy Fielder, Jon D. Paul,
`Network-1 Technologies, Inc., Neurografix, Paul Morin-
`ville, Scientific Telecommunications, LLC, US Inventor,
`Inc. Also represented by MARC AARON FENSTER.
`
`
`

`

`
`
` 2
`
` IN RE: TC HEARTLAND LLC
`
`VERA RANIERI, Electronic Frontier Foundation, San
`Francisco, CA, for amici curiae Electronic Frontier Foun-
`dation, Public Knowledge, Engine Advocacy. Also repre-
`sented by CHARLES DUAN, Public Knowledge, Washington,
`DC.
`
`JOHN D. VANDENBERG, Klarquist Sparkman, LLP,
`Portland, OR, for amici curiae Acushnet Company, Adobe
`Systems Incorporated, Asus Computer International,
`Demandware, Inc., Dropbox, Inc., Ebay, Inc., Google Inc.,
`HP Inc., HTC America, Inc., InterActiveCorp, Intuit, Inc.,
`L Brands, Inc., Lecorpio LLC, LinkedIn Corp., Macy’s,
`Inc., Newegg Inc., North Carolina Chamber, North Caro-
`lina Technology Association, QVC, Inc., SAP America,
`Inc., SAS Institute Inc., Symmetry LLC, Vizio, Inc.,
`Xilinx, Inc. Also represented by ROBERT TODD CRUZEN,
`KLAUS H. HAMM.
`______________________
`
`Before MOORE, LINN, and WALLACH, Circuit Judges.
`MOORE, Circuit Judge.
`
`O R D E R
`TC Heartland LLC (“Heartland”) petitions for a writ
`of mandamus to direct the United States District Court
`for the District of Delaware to either dismiss or transfer
`the patent infringement suit filed against it by Kraft
`Foods Group Brands LLC (“Kraft”). We deny Heartland’s
`petition.
`
`BACKGROUND
`Heartland is a limited liability company organized
`and existing under Indiana law and headquartered in
`Indiana. Kraft Foods Grp. Brands LLC v. TC Heartland,
`LLC, No. 14-28-LPS, 2015 WL 4778828, at *1 (D. Del.
`Aug. 13, 2015) (“Magistrate’s Report”). Respondent Kraft
`is organized and exists under Delaware law and its prin-
`
`

`

`IN RE: TC HEARTLAND LLC
`
`3
`
`cipal place of business is in Illinois. Id. Kraft filed suit
`against Heartland in the United States District Court for
`the District of Delaware alleging that Heartland’s liquid
`water enhancer products (“accused products”) infringe
`three of Kraft’s patents. Id. at *1–2. Heartland moved to
`dismiss the complaint under Federal Rule of Civil Proce-
`dure 12(b)(2) for lack of personal jurisdiction. Id. at *1. It
`also moved to either dismiss the action or transfer venue
`to the Southern District of Indiana under 28 U.S.C.
`§§ 1404 and 1406. Id.
`Before the district court, Heartland alleged that it is
`not registered to do business in Delaware, has no local
`presence in Delaware, has not entered into any supply
`contracts in Delaware or called on any accounts there to
`solicit sales. But Heartland admitted it ships orders of
`the accused products into Delaware pursuant to contracts
`with two national accounts. In 2013, these shipments,
`which contained 44,707 cases of the accused product that
`generated at least $331,000 in revenue, were about 2% of
`Heartland’s total sales of the accused products that year.
`The Magistrate Judge, applying, inter alia, our precedent
`from Beverly Hills Fan Co. v. Royal Sovereign Corp., 21
`F.3d 1558, 1571 (Fed. Cir. 1994), determined that it had
`specific personal jurisdiction over Heartland for claims
`involving the accused products. He also rejected Heart-
`land’s arguments that Congress’ 2011 amendments to 28
`U.S.C. § 1391 changed the law governing venue for patent
`infringement suits in a manner which nullified our hold-
`ing in VE Holding Corp. v. Johnson Gas Appliance Co.,
`917 F.2d 1574 (Fed. Cir. 1990). The district court adopted
`the Magistrate Judge’s report in all respects and denied
`Heartland’s motions. Kraft Foods Grp. Brands LLC v. TC
`Heartland, LLC, No. 14-28-LPS, 2015 WL 5613160, at *1–
`2 (D. Del. Sept. 24, 2015) (“District Court Order”). In so
`doing, the district court specifically stated that the Magis-
`trate Judge correctly concluded that Beverly Hills Fan
`governed the personal jurisdiction analysis and that
`
`

`

`
`
` 4
`
` IN RE: TC HEARTLAND LLC
`
`Congress’ 2011 amendments to 28 U.S.C. § 1391 “did not
`undo” our decision in VE Holding. Id. We agree.
`DISCUSSION
`A writ of mandamus is an extraordinary remedy ap-
`propriate only in exceptional circumstances, such as those
`amounting to a judicial “usurpation of power” or a clear
`abuse of discretion. Cheney v. U.S. Dist. Court for the
`Dist. of Columbia, 542 U.S. 367, 380 (2004). Three condi-
`tions must be satisfied before issuing the writ: 1) the
`petitioner must have no other adequate means to attain
`the relief he desires; 2) the petitioner has the burden to
`show his right to mandamus is “clear and indisputable”;
`and 3) the issuing court must be satisfied that the writ is
`appropriate under the circumstances. Id. at 380–81. The
`parties do not address all three parts of the Cheney test in
`their briefing, focusing instead on only the second part.
`We likewise confine our analysis to only the second part of
`the Cheney test.
`Heartland argues that it is entitled to a writ of man-
`damus based on two legal theories. First, it argues that it
`does not “reside” in Delaware for venue purposes accord-
`ing to 28 U.S.C. § 1400(b). Second, it argues that the
`Delaware district court lacks specific personal jurisdiction
`over it for this civil action. We conclude that a writ of
`mandamus is not warranted. The arguments raised
`regarding venue have been firmly resolved by VE Hold-
`ing, a settled precedent for over 25 years. The arguments
`raised regarding personal jurisdiction have been defini-
`tively resolved by Beverly Hills Fan, a settled precedent
`for over 20 years. As a panel, we are bound by the prior
`decisions of this court.
`
`A. Venue
`With respect to venue, Heartland argues that Con-
`gress’ 2011 amendments to 28 U.S.C. § 1391 changed the
`statutory law in a manner which effectively overruled VE
`
`

`

`IN RE: TC HEARTLAND LLC
`
`5
`
`Holding: “To be clear, the argument set forth here is that
`this Court’s holding in VE Holding no longer applies given
`the changed language in §§ 1391(a) and (c).” Pet. 9. We
`do not agree. In VE Holding, this court held that the
`definition of corporate residence in the general venue
`statute, § 1391(c), applied to the patent venue statute, 28
`U.S.C. § 1400. The 2011 amendments to the general
`venue statute relevant to this appeal were minor. The
`language preceding the definition of corporate residence
`in § 1391 was changed from “For the purposes of venue
`under this chapter . . .” to “For all venue purposes . . . .”
`Compare 28 U.S.C. § 1391(c) (1988) with 28 U.S.C.
`§ 1391(c) (2011). This is a broadening of the applicability
`of the definition of corporate residence, not a narrowing.
`This change in no manner supports Heartland’s argu-
`ments.
`The only other relevant 2011 amendment is the addi-
`tion of the language in § 1391(a), “Applicability of sec-
`tion.--Except as otherwise provided by law.” Heartland
`argues that the “law” otherwise defined corporate resi-
`dence for patent cases and therefore the statutory defini-
`tion found in § 1391(c) is no longer applicable to patent
`cases. As Heartland itself acknowledges, “most special
`venue statutes have not been held to encompass particu-
`lar rules about residency, and thus subsection (c) can
`apply to such statutes wherever they are found in the
`U.S. Code.” Pet. 7–8. The patent venue statute, 28
`U.S.C. § 1400(b), provides in its entirety: “Any civil action
`for patent infringement may be brought in the judicial
`district where the defendant resides, or where the defend-
`ant has committed acts of infringement and has a regular
`and established place of business.” It is undisputed that
`the patent venue statute itself does not define corporate
`residence and thus there is no statutory “law” that would
`satisfy Heartland’s claim that Congress intended in 2011
`to render § 1391(c)’s definition of corporate residence
`inapplicable to venue for patent cases. However, Heart-
`
`

`

`
`
` 6
`
` IN RE: TC HEARTLAND LLC
`
`land argues that Congress intended to include federal
`common law limited to Supreme Court precedent in the
`law which could otherwise define corporate residence and
`thus render the statutory definition of § 1391(c) inappli-
`cable.1 Accepting without deciding whether Heartland is
`correct that “except as otherwise provided by law” in-
`cludes such federal common law, Heartland has not
`established that federal common law actually supports its
`position. Heartland asks us to presume that in the 2011
`amendments Congress codified the Supreme Court’s
`decision in Fourco Glass Co. v. Transmirra Products
`Corp., 353 U.S. 222 (1957) regarding the patent venue
`statute that was in effect prior to the 1988 amendments.
`We find this argument to be utterly without merit or logic.
`The venue statute was amended in 1988 and in VE Hold-
`ing, this court held that those amendments rendered the
`statutory definition of corporate residence found in § 1391
`applicable to patent cases. In VE Holding, we found that
`the Supreme Court’s decision in Fourco with regard to the
`appropriate definition of corporate residence for patent
`cases in the absence of an applicable statute to be no
`longer the law because in the 1988 amendments Congress
`had made the definition of corporate residence applicable
`to patent cases. 28 U.S.C. § 1391(c) (1988) (“For the
`purposes of venue under this chapter”). In 1988, the
`common law definition of corporate residence for patent
`cases was superseded by a Congressional one. Thus, in
`2011, there was no established governing Supreme Court
`common law ruling which Congress could even arguably
`
`1 Dubitante: Heartland’s briefs cite nothing to sup-
`port its idea that the general statement “except as other-
`wise provided by law” was meant to codify Supreme Court
`common law. And the briefs do not cite a single case
`holding that Congress codified Supreme Court common
`law into a statute using such general language like that
`at issue here.
`
`

`

`IN RE: TC HEARTLAND LLC
`
`7
`
`have been codifying in the language “except otherwise
`provided by law.”
`Heartland cites to a single sentence in a footnote in
`the Supreme Court’s decision in Atlantic Marine Con-
`struction Co. v. United States District Court for the West-
`ern District of Texas, 134 S. Ct. 568, 577 n.2 (2013), to
`argue “the Supreme Court showed its belief that § 1391 is
`not applicable to patent cases, and § 1400 is.” Reply 9.
`Heartland’s argument misses its mark. The Supreme
`Court’s footnote states in its entirety: “Section 1391
`governs ‘venue generally,’ that is, in cases where a more
`specific venue provision does not apply. Cf., e.g., § 1400
`(identifying proper venue for copyright and patent suits).”
`Atl. Marine Constr. Co., 134 S. Ct. at 577 n.2. It is un-
`disputed that § 1400 is a specific venue provision pertain-
`ing to patent infringement suits. But what Heartland
`overlooks, and what Atlantic Marine does not address, is
`that § 1400(b) states that venue is appropriate for a
`patent infringement suit “where the defendant resides”
`without defining what “resides” means when the defend-
`ant is a corporation. The general statement in this foot-
`note is completely accurate, but cannot be transmogrified
`into the argument made by Heartland. “[T]he general
`statute, § 1391(c), expressly reads itself into the specific
`statute, § 1400(b),” “only operates to define a term in
`§ 1400(b),” and does not “conflict with § 1400(b).” VE
`Holding, 917 F.2d at 1580.
`Heartland has presented no evidence which supports
`its view that Congress intended to codify Fourco in its
`2011 amendments. In fact, before and after these
`amendments, in the context of considering amending the
`patent venue statute, Congressional reports have repeat-
`edly recognized that VE Holding is the prevailing law.
`See H.R. Rep. No. 110–314, at 39–40 (2007); S. Rep. No.
`110–259, at 25 (2008); H.R. Rep. No. 114–235, at 34
`(2015) (stating that “Congress must correct” our holding
`in VE Holding by amending § 1400); cf. Venue Equity and
`
`

`

`
`
` 8
`
` IN RE: TC HEARTLAND LLC
`
`Non-Uniformity Elimination Act of 2016, S. 2733, 114th
`Cong. § 2(a) (2016).2 Even if Congress’ 2011 amendments
`were meant to capture existing federal common law, as
`Heartland argues, regarding the definition of corporate
`residence for venue in patent suits, Fourco was not and is
`not the prevailing law that would have been captured.
`We reject Heartland’s argument that in 2011 Congress
`codified the common law regarding venue in patent suits
`as described in Fourco.
`B. Personal Jurisdiction
`Heartland’s argument regarding personal jurisdiction
`in this case is, as the Magistrate Judge noted, difficult to
`follow.3 Heartland appears to be arguing that 1) the
`Supreme Court’s recent decision in Walden v. Fiore, 134
`S. Ct. 1115, 1121 n.6 (2014), makes clear that specific
`personal jurisdiction can only arise from activities or
`occurrences taking place
`in the
`forum state, and
`2) Federal Circuit case law makes clear that each act of
`patent infringement gives rise to a separate cause of
`action, such that 3) the logical combination of these two
`points of law means that the Delaware district court has
`specific personal jurisdiction over Heartland for allegedly
`infringing acts that occurred in Delaware only, not those
`
`2
`In fact, the 2007 House Report indicates that the
`House Judiciary Committee “believes that simply return-
`ing to the 1948 venue framework [i.e., that described in
`Fourco] would be too strict for modern patterns of tech-
`nology development and global commerce.” H.R. Rep. No.
`110–314, at 40 (2007).
`3
`It appears that Heartland does not contest juris-
`diction under Delaware’s long-arm statute. As such, we,
`like the district court, interpret Heartland’s argument to
`be that the Delaware district court lacks specific personal
`jurisdiction under the Due Process Clause of the Four-
`teenth Amendment.
`
`

`

`IN RE: TC HEARTLAND LLC
`
`9
`
`occurring in other states.4 Applied to the facts of record,
`under Heartland’s argument, the Delaware district court
`would only have specific personal jurisdiction over the
`approximately 2% of Heartland’s 2013 sales of the ac-
`cused product (i.e., 44,707 cases of the accused product
`that generated at least $331,000 in revenue) that Heart-
`land shipped into Delaware. Thus, to resolve nationwide
`the same issues as in this Delaware infringement suit,
`Kraft would have to bring separate suits in all other
`states in which Heartland’s allegedly infringing products
`are found. Alternatively, under Heartland’s argument,
`Kraft could opt to bring one suit against Heartland in
`Heartland’s state of incorporation.5
`
`
`4 Heartland argues even for the 2% of products it
`shipped to Delaware it did not “purposefully avail” itself
`of the privilege of conducting activities in Delaware and
`thus the due process requirement for specific personal
`jurisdiction is not met. Heartland has not established
`that it is clearly and indisputably entitled to relief on this
`point.
`In its Reply and its rebuttal at oral argument,
`5
`Heartland made a new argument that it asserts is a
`“complete answer:” that Kraft would be able to bring a
`single suit in a jurisdiction other than where Heartland is
`incorporated because “[u]nder Federal Rule of Civil Pro-
`cedure 4(k)(1)(C), a patentee can obtain personal [jurisdic-
`tion] by serving process under [28 U.S.C.] § 1694 and
`thereby obtain complete relief in any district where a
`defendant ‘has committed acts of infringement and has a
`regular and established place of business.’” Reply 1
`(quoting 28 U.S.C. § 1400(b)). Heartland did not raise
`this argument before the district court. In fact, Heartland
`made a contradictory argument before the district court,
`stating in its opening brief to the Magistrate Judge that
`“[t]here is no federal statute that authorizes service of
`
`

`

`
`
` 10
`
` IN RE: TC HEARTLAND LLC
`
`Heartland’s arguments are foreclosed by our decision
`in Beverly Hills Fan. In that case, we held that the due
`process requirement that a defendant have sufficient
`minimum contacts with the forum was met where a non-
`resident defendant purposefully shipped accused products
`into the forum through an established distribution chan-
`nel and the cause of action for patent infringement was
`alleged to arise out of those activities. Beverly Hills Fan,
`21 F.3d at 1565; see also Acorda Therapeutics Inc. v.
`Mylan Pharm. Inc., Nos. 2015-1456, 2015-1460, 2016 WL
`1077048, at *7 (Fed. Cir. Mar. 18, 2016) (determining that
`the minimum contacts requirement was met where a
`defendant contracted with a network of independent
`wholesalers and distributors to market the accused prod-
`uct in Delaware, the forum state). Such is the case here.
`Heartland admits that it shipped orders of the accused
`products directly to Delaware under contracts with what
`it characterizes as “two national accounts” that are head-
`quartered outside of Delaware. And Heartland does not
`dispute that Kraft’s patent infringement claims arise out
`of or relate to these shipments. This is sufficient for
`minimum contacts.
`
`
`originating process in patent cases, so Federal Rule of
`Civil Procedure 4(k)(1)(C) does not apply.” Heartland’s
`Opening Br. at 5, Kraft Foods Grp. Brands LLC v. TC
`Heartland, LLC, No. 14-28-LPS (D. Del. June 23, 2014),
`ECF No. 8. And Heartland did not raise this argument in
`its petition for a writ of mandamus. Thus, Kraft did not
`have an opportunity to respond to Heartland’s new argu-
`ment, and, based on Heartland’s arguments before the
`district court, it would not have expected to face such an
`argument. Heartland’s belated raising of this new argu-
`ment is especially inappropriate in the context of a peti-
`tion for a writ of mandamus.
`
`

`

`IN RE: TC HEARTLAND LLC
`
`11
`
`We also held in Beverly Hills Fan that, even where
`there are sufficient minimum contacts under a stream of
`commerce theory or otherwise, due process also requires
`that a forum’s assertion of jurisdiction be reasonable,
`considering all the facts and circumstances of a case.
`Beverly Hills Fan, 21 F.3d at 1568; see also Int’l Shoe Co.
`v. Washington, 326 U.S. 310, 316 (1947) (explaining that
`due process requires that “maintenance of the suit does
`not offend ‘traditional notions of fair play and substantial
`justice’”). We explained that the forum state had signifi-
`cant interests in discouraging injuries that occur within
`the state, such as patent infringement, and in cooperating
`with other states to provide a forum for efficiently litigat-
`ing a plaintiff’s cause of action. Beverly Hills Fan, 21 F.3d
`at 1568. We further explained that the plaintiff could
`seek redress in the forum state for sales of the accused
`product in other states, thereby sparing other states the
`burden of also having to provide such a forum and pro-
`tecting defendants from being harassed with multiple
`infringement suits. Id. And we explained that the bur-
`den on the defendant did not appear particularly signifi-
`cant and was not sufficiently compelling to outweigh the
`plaintiff’s and the forum state’s interests. Id. at 1569.
`Heartland does not argue that the district court’s exercise
`of jurisdiction is unreasonable, nor does it dispute that
`the balance of the plaintiff’s and forum state’s interests
`against the burdens imposed on it is any different than
`those in Beverly Hills Fan. Instead, it argues that our
`statement in Beverly Hills Fan that a forum state could
`hear claims for infringing acts occurring outside of the
`forum state was dictum. We do not agree. Heartland also
`argues that we ought to be guided by the Supreme Court’s
`footnote in Walden. We are bound by Beverly Hills Fan
`and the Supreme Court’s general statement in Footnote 6
`of Walden cannot be read to overturn sub silentio Beverly
`Hills Fan.
`
`

`

`
`
` 12
`
` IN RE: TC HEARTLAND LLC
`
`CONCLUSION
`Heartland’s arguments are foreclosed by our long
`standing precedent. Heartland has thus failed to show
`that its right to mandamus is clear and indisputable.
`Accordingly,
`IT IS ORDERED THAT:
`The petition for a writ of mandamus is denied.
`FOR THE COURT
`
`
`
`
`
`
`April 29, 2016
` Date
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Daniel E. O’Toole
` Daniel E. O’Toole
`
` Clerk of Court
`
`