In Re FORTINET, INC.

• Court: Court of Appeals for the Federal Circuit
• Decided: May 1, 2020
• Docket: 20-120
• Status: Unpublished

Opinion

Case: 20-120 Document: 28 Page: 1 Filed: 05/01/2020

NOTE: This order is nonprecedential.

United States Court of Appeals for the Federal Circuit ______________________

In re: FORTINET, INC., Petitioner ______________________

2020-120 ______________________

On Petition for Writ of Mandamus to the United States District Court for the District of Delaware in No. 1:18-cv- 01018-CFC-MPT, Judge Colm F. Connolly. ______________________

ON PETITION AND MOTION ______________________

Before LOURIE, DYK, and REYNA, Circuit Judges. DYK, Circuit Judge. ORDER Fortinet, Inc. petitions for a writ of mandamus vacat- ing the United States District Court for the District of Del- aware’s order denying Fortinet’s motion to dismiss and remanding for reconsideration. Fortinet also moves to stay the underlying proceedings pending its petition to this court for a writ of mandamus. British Telecommunications plc and BT Americas, Inc. (collectively, “BT”) oppose the petition and the motion. Fortinet replies. Case: 20-120 Document: 28 Page: 2 Filed: 05/01/2020

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BT filed this suit against Fortinet in the District of Del- aware, asserting claims that Fortinet had infringed its pa- tent by making, using, offering to sell, selling, and/or importing in the United States various accused products. Fortinet moved to dismiss the case under the doctrine of forum non conveniens, invoking a prior agreement estab- lishing a global commercial relationship between British Telecom and Fortinet that included a forum selection clause whereby the parties had agreed to “submit to the exclusive jurisdiction of the English courts in relation to contractual and/or non-contractual obligations.” The district court denied Fortinet’s motion. Relying on Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254 n.22 (1981) (“At the outset of any forum non conveniens inquiry, the court must determine whether there exists an alternative forum.”) and Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 507 (1947), the district court concluded, over Fortinet’s objec- tion, that it could consider the adequacy of the alternative forum in its forum non conveniens analysis. In doing so, the district court concluded that dismissal would not be in the interest of justice here because there was “a real ques- tion” about whether plaintiffs could bring in England their infringement claims of United States patents. A writ of mandamus is a “drastic and extraordinary remedy reserved for really extraordinary causes.” Cheney v. U.S. Dist. Court for Dist. of Columbia, 542 U.S. 367, 380 (2004) (internal quotation marks and citation omitted). A petitioner must satisfy three requirements: (1) the peti- tioner must “have no other adequate means to attain the relief” desired; (2) the petitioner must show that the “right to issuance of the writ is clear and indisputable;” and (3) the petitioner must convince the court that the writ is “ap- propriate under the circumstances.” Id. at 380–81 (inter- nal quotation marks and citations omitted). Because orders denying motions to dismiss for forum non conveniens are normally reviewable after final Case: 20-120 Document: 28 Page: 3 Filed: 05/01/2020

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judgment, see In re Orange, S.A., 818 F.3d 956, 963 (9th Cir. 2016), courts generally limit review on mandamus to making sure that the district court “took the question be- fore it seriously, gave careful consideration to the relevant factors that bear on a forum non conveniens motion, and came to a reasoned conclusion,” In re Ford Motor Co., 344 F.3d 648, 652 (7th Cir. 2003). Outside the context of a forum selection clause, this court has already addressed the importance in a forum non conveniens analysis to consider the adequacy of a forum with regard to claims of intellectual property infringement that occurred in the United States. In Halo Creative & De- sign Ltd. v. Comptoir Des Indes, Inc., 816 F.3d 1366, 1371 (Fed. Cir. 2016), this court made clear that “[t]erritoriality is always of concern in intellectual property disputes” since “[i]t cannot be assumed that a foreign court would adjudi- cate an intellectual property dispute where the alleged in- fringement occurred elsewhere[.]” We held in Halo that the moving party, here Fortinet, bears the burden of persuasion in demonstrating the ade- quacy of the alternative forum. Id. The district court con- cluded that Fortinet had failed to make such a showing, noting that it had only been able to cite cases in which Eng- lish courts had construed claims of a United States patent in the context of a licensing dispute and had failed to cite any English case or statute that provides assurance that an English court could or would assert jurisdiction over a United States patent infringement action. Fortinet contends that the existence of the forum selec- tion clause here changes the calculus. There is first the question of whether the forum selection clause applies at all here. BT notes that BT Americas did not sign the agree- ment and separately raises legitimate questions concern- ing whether the scope of the clause extends to the asserted patent infringement claims. And even putting those issues aside, there is the question of whether Fortinet has met the Case: 20-120 Document: 28 Page: 4 Filed: 05/01/2020

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exacting standard for mandamus relief. Although it is true that in Atlantic Marine Construction Co. v. United States District Court for Western District of Texas, 571 U.S. 49, 63 (2013), the Supreme Court stated that “a valid forum-se- lection clause should be given controlling weight in all but the most exceptional cases” (internal quotation marks and citation omitted), Atlantic Marine was a 28 U.S.C. § 1404(a) case and did not address the question of whether courts are precluded from considering the availability of the alternative forum in the course of conducting its forum non conveniens doctrine analysis. Moreover, courts since Atlantic Marine have, at best, expressed differing views on this issue. Compare Azima v. RAK Inv. Auth., 926 F.3d 870, 875 (D.C. Cir. 2019) (stating that “if we are dealing with an applicable, mandatory, valid, and enforceable forum-selection clause, we need not ask whether the location it identifies is available, ade- quate, or best for the parties’ private interests”), with id. at 875 n.2 (acknowledging that “some courts have left open the possibility that they will consider whether the prese- lected forum meets these criteria”); and Collins v. Mary Kay, Inc., 874 F.3d 176, 186 (3d Cir. 2017) (suggesting that after Atlantic Marine a court in the Third Circuit should still consider in its analysis “the availability of an adequate alternative forum where defendants are amenable to pro- cess and plaintiffs’ claims are cognizable”). We need not resolve this question in this case. Even with some regional circuits calling into question the need to assess the availability of the alternative forum in a fo- rum non conveniens analysis when there exists an applica- ble, mandatory, valid and enforceable forum-selection clause, with other courts, including the regional circuit in which this case arose, seemingly going the other way, it simply is not indisputably clear that Fortinet has estab- lished a right to dismissal under the doctrine of forum non conveniens. Given the additional questions surrounding Case: 20-120 Document: 28 Page: 5 Filed: 05/01/2020

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the applicability of the forum selection clause here, we must conclude that mandamus relief is inappropriate. Accordingly, IT IS ORDERED THAT: (1) The petition is denied. (2) The motion to stay is denied as moot. FOR THE COURT

May 1, 2020 /s/ Peter R. Marksteiner Date Peter R. Marksteiner Clerk of Court

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