Addressing for the first time whether a court must consider the adequacy of an alternative forum in its forum non conveniens analysis, the US Court of Appeals for the Federal Circuit affirmed the denial of a defendant’s motion to dismiss under forum non conveniens. In re Fortinet, Inc., Case No. 20-120 (Fed. Cir. May 1, 2020) (Dyk, J.).

British Telecommunications (BT) filed suit in the US District Court for the District of Delaware, asserting claims that Fortinet infringed several BT patents relating to computer or network security. Fortinet moved to dismiss the case under the doctrine of forum non conveniens. Fortinet argued that BT and Fortinet signed a global commercial agreement that included a forum selection clause, which stated that the parties had agreed to “submit to the exclusive jurisdiction of the English courts in relation to contractual and/or non-contractual obligations.” The Delaware court denied Fortinet’s motion, explaining that it could consider the adequacy of the alternative forum in its forum non conveniens analysis, and that dismissal was not in the interest of justice because there was “a real question” about whether an English court would (or could) exercise jurisdiction over a patent infringement case. Fortinet then filed a petition for a writ of mandamus to vacate the district court’s denial, arguing that the district court’s insistence that it had to consider the adequacy of an alternative forum was error.

The Federal Circuit emphasized that a writ of mandamus is a “drastic and extraordinary remedy reserved for really extraordinary causes.” Accordingly, the court found that Fortinet had to satisfy three requirements:

• There are no other adequate means to attain the relief desired.

• Its right to the issuance of the writ is “clear and indisputable.”

• The writ is appropriate under the circumstances.

The Federal Circuit reiterated the importance of considering the adequacy of a forum in a forum non conveniens analysis where there is a claim of patent infringement in the United States. Although the Court noted that regional circuit cases go both ways on this issue, the Court found it noteworthy that Fortinet failed to demonstrate the adequacy of an alternative forum. Of particular importance to the Court was Fortinet’s failure to show that an English court “could or would assert jurisdiction over a United States patent infringement action.” The Court also found that there was a “legitimate question” as to whether the forum selection clause applied to patent infringement claims.

However, the Federal Circuit held that it did not need to resolve the question of whether courts must assess the adequacy of the alternative forum in a forum non conveniens analysis, because Fortinet failed to show that its right to the issuance of a writ was “indisputable.” Accordingly, the Court held that mandamus relief was inappropriate and affirmed the district court’s dismissal.

Practice Note: When drafting a forum selection clause, parties should consider whether the forum can exercise jurisdiction over patent claims that arise in the United States, as it remains unclear whether courts are required to assess the adequacy of the forum.