United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: GOOGLE LLC,

Petitioner

______________________ 

2018-152

______________________ 

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 2:17-

cv-00442-JRG, Judge J. Rodney Gilstrap.

______________________ 

ON PETITION FOR PANEL REHEARING AND 

REHEARING EN BANC

______________________ 

NEAL KUMAR KATYAL, Hogan Lovells US LLP, Washington, DC, filed a combined petition for panel rehearing 

and rehearing en banc for petitioner. Also represented by 

COLLEEN SINZDAK; THOMAS SCHMIDT, New York, NY.

MASSIMO CICCARELLI, Thompson & Knight LLP, Dallas, TX, filed a response to the petition for respondent 

SEVEN Networks, LLC. Also represented by NATALIE 

COOLEY, JAMES MICHAEL HEINLEN, BRUCE STEVEN SOSTEK. 

______________________ 
2

Before PROST, Chief Judge, NEWMAN, LOURIE, DYK, 

MOORE, O’MALLEY, REYNA, WALLACH, TARANTO, CHEN, 

HUGHES, and STOLL, Circuit Judges. 

REYNA, Circuit Judge, with whom NEWMAN and LOURIE, 

Circuit Judges, join, dissents from the denial of the 

petition for rehearing en banc. 

PER CURIAM. 

O R D E R

Petitioner Google LLC filed a combined petition for 

panel rehearing or rehearing en banc. A response to the 

petition was invited by the court and filed by respondent 

SEVEN Networks, LLC. The petition for rehearing was 

first referred to the panel that decided the mandamus petition, and thereafter the petition for rehearing and response were referred to the circuit judges who are in 

regular active service. A poll was requested, taken, and 

failed.

Upon consideration thereof,

IT IS ORDERED THAT: 

The petition for panel rehearing is denied.

The petition for rehearing en banc is denied.

 FOR THE COURT

February 5, 2019 /s/ Peter R. Marksteiner

 Date Peter R. Marksteiner

 Clerk of Court

 
United States Court of Appeals 

for the Federal Circuit ______________________ 

In re: GOOGLE LLC,

Petitioner

______________________ 

2018-152

______________________ 

On Petition for Writ of Mandamus to the United States 

District Court for the Eastern District of Texas in No. 2:17-

cv-00442-JRG, Judge J. Rodney Gilstrap.

______________________ 

REYNA, Circuit Judge, with whom NEWMAN and LOURIE,

Circuit Judges, join, dissenting from the denial of the petition for rehearing en banc. 

The court elects not to decide en banc the question of 

whether servers or similar equipment in third-party facilities are a regular and established place of business, such 

that venue is proper under 35 U.S.C § 1400(b). The court 

bases its decision on grounds that the issue it presents does 

not rise to a level that warrants mandamus review. I dissent because the court’s decision causes two adverse results. First, the court sidesteps the precise purpose of 

mandamus relief, thereby weakening our Writ of Mandamus jurisprudence. Second, we leave unanswered a critical 

issue that increasingly affects venue in legal actions involving e-commerce.

The question poised before the court is whether 

Google’s servers (shown below in the black box), which 

have no physical interaction with Google employees or 

IN RE: GOOGLE LLC 3

is not one of those vague principles which, in the interests 

of some overriding policy, is to be given a liberal construction.” Cray Inc., 871 F.3d at 1361 (quoting Schnell v. Peter 

Eckrich & Sons, Inc., 365 U.S. 260 (1961)). 

Supreme Court and Federal Circuit jurisprudence approves taking up on mandamus important issues such as 

the issue in this case. For example, we may decide issues 

important to “proper judicial administration” on mandamus. La Buy v. Howes Leather Co., 352 U.S. 249, 259–60 

(1957). Mandamus may also be appropriate “to further supervisory or instructional goals where issues are unsettled 

and important.” In re Queen’s Univ. at Kingston, 820 F.3d 

1287, 1291 (Fed. Cir. 2016). We may also review “basic 

[and] undecided” legal questions on mandamus. Schlagenhauf v. Holder, 379 U.S. 104, 110 (1964); Cray, 871 F.3d at

1358–59. Mandamus may be warranted where the petitioner shows, among other things, that she has a “clear and 

indisputable” right to its issuance. Cray, 871 F.3d at 1358. 

But as was the case in Cray, where there is an unsettled, 

basic, and undecided legal question at issue, the right to 

issuance of the writ cannot be clear and indisputable. See 

id. at 1358–59. 

Mandamus review is part of our bedrock supervisory 

duty as an appellate court to ensure proper judicial administration. In re Cement Antitrust Litig., 688 F.2d 1297, 

1304 (9th Cir. 1982). Given the nature of our exclusive subject-matter jurisdiction over federal questions involving 

patent law, this court in particular has a vital supervisory 

and instructional duty to further the goals of uniformity 

and predictability that are “the cornerstones of a well-functioning patent system” and part of the reason for this 

court’s very existence. See Timothy B. Dyk, Federal Circuit 

Jurisdiction: Looking Back and Thinking Forward, 67 AM.

U. L. REV. 971, 977 (2018). 

With this court’s supervisory and instructional duties 

and goals in mind, we have taken up issues on mandamus 
4 IN RE: GOOGLE LLC

since TC Heartland to ensure § 1400(b) is not given an expansive construction. E.g., In re BigCommerce, Inc., 890 

F.3d 978, 982 (Fed. Cir. 2018); Cray, 871 F.3d at 1359–60. 

In Cray, we took mandamus action to correct the district 

court’s impermissibly expansive construction of § 1400(b) 

that would have otherwise held that an employee working 

from home in the district was sufficient to be a “regular and 

established place of business” of the defendant for proper 

venue. Cray, 871 F.3d at 1361–62. We noted that even 

though many businesses have moved from a brick-andmortar model to an increasingly virtual one, in the wake of 

TC Heartland, the focus remains on the unchanged language of the statute. See id. at 1359–60. 

As we saw in Cray, there is again growing uncertainty 

among district courts and litigants as to the requirements 

of § 1400(b) when conducting business virtually through 

servers and similar equipment in the district. Prior to this 

case, another district court in the Eastern District wrestled 

with the same issue involving the same defendant yet 

reached a different and contrary conclusion. See Personal 

Audio, LLC v. Google, Inc., 280 F. Supp. 3d 922, 934 (E.D. 

Tex. 2017) (rejecting the argument that Google servers in 

local ISP facilities constituted a regular and established 

place of business). In CUPP Cybersecurity, LLC v. Symantec Corp., another district court, in the Northern District of 

Texas, faced the identical legal issue in a case with a different defendant—“whether the presence of [defendant’s] 

servers at a data center owned by a third party constitutes 

a regular and established place of business”—and concluded that they did not. No. 3:18-CV-1554, Dkt. No. 44, at 

*4–6 (N.D. Tex. Dec. 21, 2018). The district court, citing 

our denial of mandamus in this case, acknowledged the disagreement among its neighboring courts in the Eastern 

District of Texas and highlighted this court’s silence on the 

issue: “[t]he Federal Circuit has not yet determined 

whether the presence of a company’s servers in a data center operated by a third party establishes a regular and 
IN RE: GOOGLE LLC 5

established place of business for purposes of venue.” Id. As 

to the majority’s rationale for finding that mandamus was 

inappropriate in this case, the district court in CUPP observed that there would be “far reaching consequences” of 

concluding that venue was proper, which would “distort the 

scope of the statute.” Id. at *6 (quoting Personal Audio, 

280 F. Supp. 3d at 934). I agree with this assessment because it recognizes the tension between the statute and the 

realities of the continued change in the nature of the marketplace and how goods and services are traded.

Other courts have wrestled with cases involving similar equipment installed in facilities of third parties. See, 

e.g., Peerless Network, Inc. v. Blitz Telecom Consulting,

LLC, No. 17-CV-1725, 2018 WL 1478047, at *3–4 (S.D.N.Y. 

Mar. 26, 2018) (rejecting the argument that voice-over-internet protocol routers installed in a third-party’s facility

constituted a regular and established place of business); 

Automated Packaging Sys., Inc. v. Free-Flow Packaging 

Int’l, Inc., No. 5:14-CV-2022, 2018 WL 400326, at *9 (N.D. 

Ohio Jan. 12, 2018) (rejecting the argument that owning 

and controlling equipment in customer facilities constituted a regular and established place of business). Routers 

play similar roles to servers in that they handle electronic 

communication, and it takes little imagination to see how 

the district court’s holding in this case could impact companies that, while conducting business, transmit data over 

a wide variety of equipment. See, e.g., Personal Audio, 280 

F. Supp. 3d at 934 (questioning whether cell phone towers 

could be a regular and established place of business for 

wireless phone service providers if Google’s servers were to 

qualify).

The same legal issues are relevant to every technology 

company that, like Google, conducts business over the internet. Amici comprising similarly situated technology 

companies who provide internet infrastructure and services filed briefs in support of the mandamus petition and 

expressed concern over the impact of this issue on their 
6 IN RE: GOOGLE LLC

business—evidence of this case’s importance and broad implications. The bar apparently already views the denial of 

the petition at the panel stage as a signal that it is safe to 

file more cases against Google and similar defendants in 

the same district. At the time of filing of the petition for 

rehearing, Google had been sued thirteen more times in the 

same district under the same venue theory since October 

29, 2018, the date that we denied the petition for mandamus. Pet. for Reh’g 2–3. That number now stands at 

thirty-four.1 I count that as trending. 

Although the majority denied mandamus on grounds 

that extraordinary relief was not warranted, it succumbed 

to the temptation to comment on the merits. Cf., e.g., In re 

Verinata Health, Inc., No. 2017-109, 2017 WL 1422489, at 

*2 (Fed. Cir. Mar. 9, 2017) (denying petition without commenting on the merits on the basis that “Petitioners have 

failed to show why they cannot raise their arguments . . . 

with an appeal from the district court’s final judgment or 

why that alternative would be inadequate in this case”). 

The majority noted that the district court focused on “many 

specific details” of Google’s contracts with the ISPs and its 

“strong control” of the servers, and justified the denial of 

mandamus, at least in part, on those details. The district 

court itself noted that merely a virtual space or electronic 

communication is insufficient, but found that the “place” 

was “a physical server occupying a physical space” over 

which Google exercised “exclusive control.” Seven Networks, LLC v. Google LLC, 315 F. Supp. 3d 933, 951 (E.D. 

Tex. 2018). 

I agree that possession and control over a place are important factors when considering the merits. This, of 

 

1 DOCKET NAVIGATOR, https://compass.docket

navigator.com (last visited, February 1, 2019) (running 

search for Party: Google; Court: Texas Eastern District; 

and Case Filing Date: On or after 2018-10-29) 
IN RE: GOOGLE LLC 7

course, counts among the factors that the court should have 

addressed en banc. That said, exclusive ownership and 

control over the servers may be insufficient under Cray. 

See Cray, 871 F.3d at 1363 (“Relevant considerations include whether the defendant owns or leases the place, or 

exercises other attributes of possession or control over the 

place.” (emphases added)). It is undisputed that no Google 

employee has ever visited the places where the servers are 

installed. Nor do those facilities resemble one of the many 

Google offices in other venues that would satisfy § 1400(b) 

under a straightforward application of the statute. See id.

at 1364 (“A further consideration for this requirement 

might be the nature and activity of the alleged place of 

business of the defendant in the district in comparison with

that of other places of business of the defendant in other 

venues.”).

The district court’s holding in this case can be read as 

another, possibly even more expansive construction of 

§ 1400(b) than the district court’s holding in Cray. For 

many companies, the reasoning of the district court’s holding could essentially reestablish nationwide venue, in conflict with TC Heartland, by standing for the proposition

that owning and controlling computer hardware involved 

in some aspect of company business (e.g., transmitting 

data) alone is sufficient. 

To what extent does the defendant have to be “present” 

in the district to be “engaging in business”? See Peerless 

Network, 2018 WL 1478047, at *4 (“[W]hatever ‘engaging 

in business’ is, a ‘place of business’ is the location where 

some person performs that verb.”) Is owning, renting, or 

leasing real property required to establish a “place”? Is a 

piece of equipment a “place”? Is a shelf where equipment 

is installed a “place” where business is conducted? Would 

we have held differently if the employer in Cray exercised 

“exclusive control” over the equipment in the employee’s 

home office? These questions are before us now. There is 
8 IN RE: GOOGLE LLC

no principled reason to wait for these questions to “percolate” further among district courts. 

By the time we eventually decide these questions, it is

possible that dozens of cases will proceed through motion 

practice, discovery, claim construction, or trial before potentially getting thrown out by a reversal of a ruling on a 

motion to dismiss for improper venue. See In re Sea Ray 

Boats, Inc., 695 F. App’x 543, 544 (Fed. Cir. 2017) (Newman, J., dissenting) (noting that missing “an opportunity 

for this court to determine whether the district court’s decision was in compliance with the venue requirements revived by TC Heartland may have harsh consequences” and 

collecting cases). Given our established practice of taking 

up other important and undecided issues of judicial administration on mandamus in the wake of TC Heartland, I see 

no justification for us to sit idly by while uncertainty builds 

and litigants and courts expend their resources on issues 

that we could have provided guidance on here. I am confident that my colleagues will eventually appreciate the 

widespread implications of the issue before us in this case. 

The question is not if we will take this issue up, but when, 

and how many judicial and party resources will have been 

needlessly wasted by the time we do.