NOTE: This order is nonprecedential.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.

O R D E R

Medtronic, Inc. petitions for a writ of mandamus directing 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 denying its motion to transfer venue under 28 U.S.C. § 1404(a). 

TMT Systems, Inc. opposes the petition.

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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, including Medtronic USA” and by “contributing to direct infringement committed by customers such as health care 

providers and physicians” within the district and elsewhere. Appx161–63. TMT further alleges that Medtronic,

Inc. maintains a “regular and established place of business” 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 facility; 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 allegations of indirect infringement were sufficient to establish, 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 specific 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 granting transfer of this case under that statute, namely, that 

the present action “might have been brought” in the Northern 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 Medtronic[, Inc.] or its California subsidiary Medtronic Vascular 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 purposes of establishing venue. Appx16.

Medtronic, Inc. then filed this petition principally challenging the district court’s determination that the complaint sufficiently alleged that Medtronic, Inc. has

 

* The district court reached a different conclusion as 

to Medtronic USA, finding it had no regular and established 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). Medtronic, 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 under § 1404(a) and asks the court to grant mandamus to direct 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 alternative” 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), mandamus 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 review 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 denial 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 circumstances 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 requirement 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 documentary evidence that conclusively defeat those allegations.” 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 records clearly and indisputably refute TMT’s indirect infringement 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 allegations 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 contributory 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 allegations may not be sufficient to support induced infringement. But those allegations do not stand alone. The 

quoted sentence is within a section alleging infringement 

that expressly incorporates the preceding paragraphs, several of which allege that Medtronic USA sells Endurant 

while Medtronic, Inc. holds itself out to the FDA and consumers as the manufacturer of Endurant, Appx141–42, influences Medtronic USA’s actions through shared officers, 

Appx145, and knew that Endurant infringes the ’393 patent, 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 requirement 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 under 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 facility 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 establishing the facility in San Antonio, TX and its exercise 

of attributes of possession and control over that San Antonio 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 evidence showing a similar level of control over Medtronic 

Vascular’s Northern California facility. 

Accordingly,

IT IS ORDERED THAT:

Medtronic, Inc.’s petition is denied.

December 27, 2021 

Date

FOR THE COURT

/s/ Peter R. Marksteiner

Peter R. Marksteiner

Clerk of Court

s31

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