I. Introduction

Recently, plaintiffs have been filing patent infringement suits in the Eastern District of Texas (EDTX) at an increasing rate.[1] To anyone familiar with patent litigation, the choice of the EDTX for plaintiffs won’t be a surprise.[2] After all, the EDTX has been the epicenter of the patent litigation boom of the twenty-first century.[3] The district has a reputation as a plaintiff-friendly venue, where juries are very protective of property rights and are very suspicious of large corporations accused of stealing patent rights.[4] The district has developed a series of patent-specific procedural mechanisms, most of which favor plaintiffs at the expense of defendants.[5] And perhaps most importantly, the EDTX has seen overwhelming patent-case-specific judge shopping, in which the plaintiff can choose the judge to adjudicate her patent case.[6] All of these factors have led to a high, steady volume of patent litigation. So much so that in 2015, one of the judges of the EDTX—Chief Judge Rodney Gilstrap—received over 40% of the patent cases nationwide.[7]

That changed with the 2017 ruling by the Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC: or at least, it was supposed to.[8] TC Heartland held that for venue purposes, a defendant in a patent case must (a) be a resident of the state in which the suit is brought or (b) have a regular and established place of business and have committed acts of infringement in the district within which the suit is brought.[9] After TC Heartland, many would-be defendants were insulated from having to litigate their patent cases before the EDTX’s judges, because they lacked a permanent place of business in East Texas and were not incorporated in Texas.[10] All because of a Supreme Court ruling about the “arcane but important” legal area of patent venue.[11]

But at least some plaintiffs have found a novel way to obtain venue in the EDTX when venue might otherwise be precluded. And the EDTX appears open to the new strategy. The judges have found venue in these cases not by defying the patent venue statute, but rather because it is not invoked.[12]

To understand the gambit, let’s look at a hypothetical company: ABC Corp. Like most global corporations, ABC is necessarily a grouping of various corporate entities, domestic and foreign. One corporate entity might be ABC, Ltd. ABC, Ltd. might be a holding company based in a foreign jurisdiction (say, Japan) that does not import or ship any products into the United States. It also might not manufacture, sell, or offer for sale any products in the United States. In typical patent suits brought against ABC Corp. in the United States, ABC, Ltd. would be a defendant in the suit, as well as a host of subsidiary companies that are primarily responsible for advertising, manufacturing, selling, and importing ABC’s products into the United States. Such subsidiary corporations might be labeled ABC Co. (USA), and ABC Distribution, LLC, for example.

Knowing this, and to get around TC Heartland and the patent venue statute, clever plaintiffs sue just one defendant: ABC, Ltd., the Japanese corporation. This is precisely to avoid the patent venue statute, which excepts foreign entities.[13] Rather, the alien-venue rule governs venue in suits against foreign corporations. The alien-venue rule states “that suits against aliens are wholly outside the operation of all the federal venue laws, general and special.”[14]

For example, in In re HTC Corp., the Federal Circuit denied HTC’s petition for a writ of mandamus to vacate the District of Delaware’s denial of its motion to dismiss for improper venue.[15] In doing so, the Federal Circuit held that the patent venue statute was not the proper means to analyze venue for a foreign defendant.[16] Rather the general venue statute (28 U.S.C. § 1391(c)(3)) controlled.[17] The general venue statute is much broader than the patent venue statute, allowing suits against foreign defendants to proceed in any district that has personal jurisdiction over the defendant.[18] Thus, the general venue statute does allow a suit against a foreign corporation (like ABC, Ltd.) to proceed as long as personal jurisdiction is present. Whereas the same suit against the domestic arm of the company, ABC Co. (USA), would be dismissed for lacking venue under the patent venue statute because ABC Co. (USA) is not a Texas corporation and does not (in this hypothetical) have a permanent place of business in East Texas. By excluding domestic corporations, patent plaintiffs are able to get foreign corporations like ABC, Ltd. into the EDTX, while they would be unable to haul the domestic subsidiaries of ABC into the same court.

Ultimately, the plaintiffs are betting that personal jurisdiction (under the general venue statute, venue for foreign corporations is coextensive with personal jurisdiction) will be easier to prove than venue (under the patent venue statute, venue depends on the corporation being local or having a local established place of business).[19] And this bet has proven to be well-placed. A number of recent patent cases at the EDTX involve a foreign parent corporation without its domestic subsidiaries.[20] And, perhaps unsurprisingly for followers of the EDTX, the court has found personal jurisdiction exists in nearly all of these cases.[21] And while the personal jurisdiction jurisprudence of the Supreme Court is convoluted, the personal jurisdiction jurisprudence of the Federal Circuit is even messier. This Article will examine that jurisprudence in depth, before ultimately concluding that the EDTX adheres to the basic outlines of both the Supreme Court’s and Federal Circuit’s holdings.[22]

But this strategy of suing only the parent, foreign corporation has exposed a significant tension between the Fifth Circuit’s application of Federal Rule of Civil Procedure 19 (Rule 19) and the practices of the EDTX courts. The Fifth Circuit has long applied a “active participant” test, which requires the joinder of parties that are central to the events underlying the litigation.[23] By contrast, the EDTX often focuses narrowly on the allegations in the plaintiff’s complaint, declining to compel the joinder of U.S.-based subsidiaries even when they play a critical role in the conduct at issue.[24] This divergence enables plaintiffs to manipulate corporate structures and evade the procedural safeguards that Rule 19 is designed to enforce.

And this difference in applications between the Fifth Circuit’s approach to Rule 19 and the EDTX’s approach is difficult to appeal. Because (in general) a case must proceed to a conclusion before appeal, many suits like these will settle long before they reach final judgment.[25] In fact, one of the main reasons that plaintiffs prefer the EDTX is that the expected settlement amount increases when the suit is in the EDTX.[26] The EDTX has consistently failed to follow the Fifth Circuit’s Rule 19 jurisprudence, and that failure has opened the courtroom doors to foreign defendants. This approach flies in the face of the Supreme Court’s holding in TC Heartland as well as the purpose and policies of Rule 19.

This Article examines these conflicting approaches, focusing on two core issues: (1) the erosion of personal jurisdiction defenses for global corporations, and (2) the divergence between the Fifth Circuit and the EDTX regarding the application of Rule 19 to necessary parties. The analysis argues that the Fifth Circuit’s active participant test provides a more equitable and legally sound framework, ensuring that domestic affiliates involved in alleged infringement cannot be excluded from litigation. By adopting a consistent and rigorous approach to Rule 19, courts can uphold procedural fairness and prevent the distortion of corporate liability principles in patent litigation.

The Article will proceed in Part II to describe the evolution of personal jurisdiction from an almost absolute bar against foreign corporations to the modern-day approach that allows suits against foreign corporations that have only tangential connections to the United States. This Part will then argue that, given the morass of Supreme Court precedent in this area, the EDTX is applying personal jurisdiction doctrine faithfully (or as faithfully as possible). Part III will turn to a separate issue: Rule 19. Rule 19 requires the joining of indispensable parties to a lawsuit. This Part will examine the rule and the approaches of the Fifth Circuit and the Federal Circuit in determining what makes a party indispensable. Part IV will offer a solution to the venue shopping problem, namely adopting the Fifth Circuit’s “active participant” test for Rule 19. Part V concludes.

II. Erosion of Personal Jurisdiction Defenses Against Global Corporations

For many years following the Supreme Court’s seminal International Shoe decision on personal jurisdiction,[27] U.S. courts rarely found that courts had personal jurisdiction over foreign defendants without established places of business in the United States.[28] This understanding of a lack of personal jurisdiction over foreign defendants started to crumble after the Supreme Court’s World-Wide Volkswagen decision in 1980.[29] Since that time, the Supreme Court has slowly rolled back personal jurisdiction protections for foreign corporations.[30] Today, the Court has eroded that once powerful defense of lack of personal jurisdiction to the point where foreign corporations without domestic operations are often subject to the personal jurisdiction of the United States’ courts.

This Part will start by sketching out the Supreme Court’s major personal jurisdiction changes since World-Wide Volkswagen. It will then examine how the Federal Circuit has interpreted those decisions. And finally, it will look at how clever plaintiffs have exploited the vagaries around personal jurisdiction to haul foreign corporations into court in East Texas.

A. “Stream of Commerce” Debate at the Supreme Court

Following World-Wide Volkswagen v. Woodson in 1980, foreign defendants were subject to personal jurisdiction in U.S. courts under the “stream of commerce” doctrine.[31] Under the “stream of commerce” doctrine, a foreign manufacturer that delivers products into the United States through established distribution channels can be subject to personal jurisdiction in any state where those products are sold. In World-Wide Volkswagen, Volkswagen was sued for an allegedly defective gas cap that resulted in massive injuries to the plaintiff following a car accident in Oklahoma.[32] Among the defendants was a New York-based Volkswagen wholesale distributor, as well as the retailer that sold the allegedly defective vehicle. The Court held that an Oklahoma court could not exercise personal jurisdiction over the defendants because the defendants lacked the constitutionally required “minimum contacts.”[33]

Despite this holding of no personal jurisdiction, the Court in World-Wide Volkswagen noted that a defendant may be amenable to suit if it “delivers its products into the stream of commerce with the expectation that they will be purchased by consumers in the forum State.”[34] Thus, a defendant (foreign or domestic) placing products into the stream of commerce would be subject to the jurisdiction of the courts of the state into which that company’s products arrived.

The Supreme Court later split over the application of stream of commerce personal jurisdiction. In Asahi Metal Industry Co. v. Superior Court, the Supreme Court addressed whether California could exercise personal jurisdiction over a Japanese company (Asahi) that manufactured tire valve assemblies sold to a Taiwanese company (Cheng Shin), which then sold tires in California.[35] The case involved a product liability suit stemming from a motorcycle accident, where the plaintiff alleged the tire tube was defective. Cheng Shin, in turn, sought indemnification from Asahi. The key question was whether Asahi’s actions establish minimum contacts sufficient for personal jurisdiction.[36] The Asahi Court ultimately held that it was not. But although the ruling of no jurisdiction was unanimous, the Court fractured over the reason for the lack of personal jurisdiction. And importantly for this Article, the Court was divided about the application of the stream of commerce theory.[37]

The Justices in Asahi split over whether mere placement into the stream of commerce (with foreseeability of sales in the forum) suffices, or whether additional conduct purposefully targeting the forum is required. Justice Brennan joined by three other Justices argued that although subjecting Asahi to jurisdiction in the case would violate the Constitution’s requirements of substantial justice and fair play, Asahi would otherwise have been subject to jurisdiction under the stream of commerce theory. Justice Brennan argued that as long as a defendant is aware that the final product is being marketed in the forum state, no showing of additional conduct is required.[38] Justice O’Connor, on the other hand, joined by three different Justices, argued that “minimum contacts” must derive from an action purposely directed toward the forum state, and the mere placement of a product into the stream of commerce is not such an act, even if done with an awareness that the stream will sweep the product into the forum state absent additional conduct indicating an intent to serve the forum state market.[39]

While Asahi’s valve assemblies were ultimately in the stream of commerce and reached California, the Court emphasized that mere awareness of potential sales in a state was not enough to justify jurisdiction. The Court found that Asahi had not purposefully availed itself of the California market and that exercising jurisdiction would be unreasonable, especially considering the burden on Asahi to defend itself in California.[40] The Court’s decision highlighted the need for more than just a product entering the stream of commerce to establish personal jurisdiction over a foreign manufacturer.

An attempt to clarify what the stream of commerce theory required failed in J. McIntyre Machinery v. Nicastro.[41] Like Asahi, Nicastro too produced no clear majority, as the Court fractured again.[42] In Nicastro, the Supreme Court held 6–3 that a United Kingdom company that manufactured a recycling machine and sold it in the United States through its exclusive U.S. distributor was not subject to suit in New Jersey—the sight of the accident at issue.[43] Although six Justices signed off on the majority opinion, only four held that the stream of commerce theory did not apply to the case.[44] Justice Breyer, joined by Justice Alito, wrote separately that

I do not doubt that there have been many recent changes in commerce and communication, many of which are not anticipated by our precedents. But this case does not present any of those issues. So I think it unwise to announce a rule of broad applicability without full consideration of the modern-day consequences.[45]

The Supreme Court’s fractured decisions in Asahi and Nicastro provide ammunition to defendants arguing that more is required than just foreseeability of a product ending up in the forum. In Asahi, the Court split down the middle on whether knowingly placing a product into the stream of commerce was sufficient to create personal jurisdiction, or whether something more was required, some specific targeting of the state where the cause of action arises.[46] In Nicastro, six Justices (if one counts the concurrence by Justice Breyer) declined to endorse pure stream of commerce without specific targeting on the facts presented. Is a foreign manufacturer, which had a handful of products resold into New Jersey, subject to personal jurisdiction? Justice Breyer, in his concurring opinion in Nicastro, says no—a few isolated sales through a distributor do not satisfy the requirements for personal jurisdiction.[47] Under that view, the foreign defendant must deliberately cultivate the forum market and not merely have sales fortuitously arising from a national sales plan.[48] These (admittedly fractured) decisions provide foreign defendants with a way of arguing against personal jurisdiction in many cases.

In the wake of the U.S. Supreme Court’s relatively recent decisions in Walden v. Fiore,[49] Bristol-Myers Squibb Co. v. Superior Court,[50] and Ford Motor Co. v. Montana Eighth Judicial District Court,[51] it is unlikely that personal jurisdiction will shield global companies from being targeted in any judicial district in the United States. Multinational companies will always hope to sell their products in every conceivable corner of the United States by strategically deploying marketing, support, and sales resources.[52] This routine business activity, even independent of the harm alleged by a plaintiff, is sufficient to establish personal jurisdiction.[53]

B. The Federal Circuit’s Broad Application of “Stream of Commerce”

Despite the Supreme Court’s reluctance to embrace a full-throated stream of commerce personal jurisdiction theory, in patent cases, the Federal Circuit has consistently embraced a broad stream of commerce theory. For global, sophisticated manufacturers with thousands or millions of products sold in the United States, personal jurisdiction will be found in any forum state. Notably, in Beverly Hills Fan Co. v. Royal Sovereign Corp., the Federal Circuit held that where a Chinese manufacturer (Ultec) sold infringing ceiling fans through a U.S. distributor (Royal) that routinely shipped products into Virginia, the Virginia court could exercise specific jurisdiction.[54]

The Beverly Hills Fan test finds minimum contacts if a defendant “purposefully ship[s]” the accused product into the forum “through an established distribution channel,” and the patent infringement claim arises out of those activities.[55] As the Federal Circuit explained, when “defendants, acting in consort, placed the accused [product] in the stream of commerce, they knew the likely destination of the products, and their conduct and connections with the forum state were such that they should reasonably have anticipated being brought into court there.”[56] Under this approach, “[n]o more is usually required to establish specific jurisdiction,” other than knowingly placing the products into the stream of commerce. [57]

The Beverly Hills Fan test does not take a side in the Supreme Court’s stream of commerce debate. It does not require a judge to make the (seemingly intractable) decision of which Supreme Court stream of commerce theory to apply. The Federal Circuit does not require district court judges to decide what is required for personal jurisdiction: Is it the broad theory expressed by Justice Brennan in Asahi (knowingly placing a product in the stream is sufficient) or the narrow theory of Justice O’Connor in Asahi and at least four Justices (if not six) in Nicastro (specific targeting is additionally required)? Instead, Beverly Hills Fan assesses jurisdiction under either theory (broad or narrow) and upholds jurisdiction so long as the result would satisfy either standard.[58] For example, even if additional forum-targeted conduct were required, the existence of a continuing “established distribution channel” into the forum is strong evidence of purposeful availment.[59] Beverly Hills Fan appears to conflate the two stream of commerce views into one: Placing products in the stream of commerce is enough, so long as the stream is continuing.

Polar Electro Oy v. Suunto Oy provides a typical application of the Beverly Hills Fan test by the Federal Circuit. [60] In Polar, the Federal Circuit reaffirmed Beverly Hills Fan in the modern global supply chain context.[61] There, a Finnish manufacturer (Suunto) used its U.S. sister company to distribute products nationwide, resulting in dozens of sales in Delaware.[62] The Federal Circuit found that Suunto’s concerted actions with its U.S. affiliate (packing and shipping orders destined for Delaware) evinced an intent to serve the Delaware market specifically, satisfying even “the more stringent” view of stream of commerce requirements.[63] In patent law, at least, the stream of commerce confusion evinced by the Supreme Court’s fractured opinions has been resolved; a foreign corporation is subject to personal jurisdiction where it has placed a product in the stream of commerce and where that channel of commerce is a continuing, established distribution channel.[64]

C. The EDTX Easily Finds Personal Jurisdiction in Patent Cases

Although some jurists continue to debate the breadth of the Supreme Court’s stream of commerce theory,[65] that debate has not reached the EDTX. Following the Federal Circuit’s expansive view of personal jurisdiction, and the dictates of Beverly Hills Fan, the EDTX courts have been very willing to assert jurisdiction over foreign companies whose products can be found in their corner of Texas.

Universal Connectivity Technologies Inc. v. Lenovo Group Ltd. is a typical application of the stream of commerce test against a global manufacturer.[66] Lenovo Group Limited (LGL), a Chinese company, moved under Federal Rule of Civil Procedure 12 to dismiss Universal’s complaint on the basis that LGL had no activities in the United States, let alone Texas.[67] The patent-owner plaintiff argued that LGL was subject to specific jurisdiction in Texas because LGL’s U.S.-based subsidiaries (e.g., Lenovo (United States) Inc.) import and sell Lenovo products throughout the United States and in Texas.[68] The court denied Lenovo’s motion, holding that LGL had purposefully availed itself of the Texas market through its established distribution channel.[69] The court noted that LGL’s subsidiaries were acting “in concert” with LGL to deliver accused products into Texas, and that LGL “‘knew, or reasonably could have foreseen, that a termination point of the channel’ was Texas.”[70] In line with Beverly Hills Fan, the presence of this distribution network and ongoing sales of Lenovo-branded devices in Texas satisfied the minimum contacts requirement in the court’s view.[71] Notably, LGL attempted an interlocutory appeal by petitioning the Federal Circuit for a writ of mandamus, but the Federal Circuit declined to disturb the EDTX’s ruling.[72]

Blitzsafe Texas, LLC v. BMW AG is another typical example.[73] Germany’s Bayerische Motoren Werke AG (BMWAG) argued that it wasn’t subject to Texas jurisdiction, since it is not “at home” in Texas and did not itself sell cars into the state.[74] The court disagreed, again applying the stream of commerce rationale.[75] It was sufficient for the court that “BMWAG places the accused products into the stream of commerce with knowledge that, through [its affiliates] . . . , the accused vehicles will be sold [to consumers] in Texas.”[76] The court noted that requiring additional forum-specific targeting by the foreign parent would undermine accountability in cases where the parent benefits from U.S. sales through an affiliate.[77] Notably, as in Universal Connectivity, BMWAG attempted an interlocutory appeal by petitioning the Federal Circuit for a writ of mandamus, but the Federal Circuit declined to disturb the EDTX’s ruling.[78]

It’s also worth noting that the EDTX’s approach dovetails with Fifth Circuit precedent in some instances, even though the court is bound by Federal Circuit precedent rather than Fifth Circuit precedent in patent cases.[79] In re DePuy Orthopaedics, Inc. addressed a similar jurisdictional question in a products-liability context.[80] There, a foreign parent company argued it was not subject to Texas jurisdiction based on its subsidiary’s contacts with Texas.[81] The Fifth Circuit rejected a strict formalistic approach, holding that a parent’s status as a holding company does not shield it from jurisdiction if it purposefully directs its subsidiaries in the forum.[82]

The EDTX has applied the doctrines of personal jurisdiction with some latitude in patent cases in an effort to hear more patent cases there.[83] But the district has applied the doctrine faithfully, given the Supreme Court’s stuttering case law.[84] Thus, despite calls for the reform of personal jurisdiction doctrine, whatever is happening in East Texas with regards to foreign defendants is not an issue of a court failing to apply personal jurisdiction doctrine correctly. But the strategy of patent plaintiffs to avoid the patent venue statute has a more serious problem. The next Part will address the problem of the Federal Rule of Civil Procedure 19.

III. The Rule 19 Problem

There are two principal arguments, from a policy perspective, against the practice of bringing suit against just the international parent corporation, thereby invoking the general venue statute. First is the argument that subjecting a parent company that does nothing more than place a product into the stream of commerce should not subject the foreign parent to jurisdiction within the United States.[85] This argument has intuitive appeal. After all, the Constitution limits the types of defendants that U.S. courts can enforce a judgment against.[86] It would stand to reason that the Constitution therefore might bar suits against entirely foreign corporations that don’t sell, manufacture, advertise, or otherwise have operations in the United States.[87] And a close parsing of the personal jurisdiction case law from the Supreme Court gives foreign defendants a host of arguments as to why they should not be subject to the jurisdiction of U.S. courts.[88]

But that logic runs into the reality that the Supreme Court, while providing avenues for arguing against jurisdiction over foreign parent corporations, simultaneously provides arguments for jurisdiction based entirely on the stream of commerce theory. After all, World-Wide Volkswagen states plainly that placing an item into the stream of commerce subjects a corporation, foreign or domestic, to the jurisdiction of the state’s court in which the product appears.[89] And further attempts by the Supreme Court to clarify what is required for stream of commerce to apply have only resulted in confusing statements: the 4–4 tie in Asahi and the concurrence by Justice Breyer in Nicastro, which disclaimed a majority view on when and under what circumstances the stream of commerce theory applies; we only know that it was not applicable on the facts of Nicastro.[90] Thus, although one can find reasons to criticize the EDTX’s finding jurisdiction over foreign corporations in patent cases, one must acknowledge that the personal jurisdiction rulings from the Supreme Court have not given perfect guidance to lower courts.

But the second critique of the EDTX’s approach in these cases is, to our view, more cutting. This critique is on the EDTX’s approach to Rule 19. Rule 19 requires “[a] person [or corporation] who is subject to service of process and whose joinder will not deprive the court of subject-matter jurisdiction must be joined as a party if . . . in that person’s absence, the court cannot accord complete relief among existing parties.”[91] Rule 19 is meant to prevent situations where parties to a lawsuit are prejudiced by not having a party join a lawsuit (as plaintiff or defendant) that is indispensable to the judgment.[92]

In making this argument, this Part will highlight the purpose and history of Rule 19 as well as the modern meaning of the rule. Then it will analyze the EDTX’s approach to Rule 19.

A. The Rule 19 Framework

1. History and Purpose of Rule 19

The “indispensable party doctrine” was the predecessor to the modern required joinder rule and developed in the eighteenth century to ensure fairness and complete resolution of judicial disputes.[93] The Supreme Court first discussed the doctrine in Shields v. Barrow.[94] The Court highlighted three types of parties to a lawsuit: (1) “Formal parties”; (2) “necessary parties”; and (3) “indispensable parties.”[95] Formal parties were the named parties in a lawsuit.[96] Necessary parties had an interest in the suit, but those interests would not prevent judicial resolution and “complete and final justice” for the parties before the court.[97] Indispensable parties were described as having such an interest in the case that “a final decree cannot be made without either affecting that interest, or leaving the controversy in such a condition that its final termination may be wholly inconsistent with equity and good conscience.”[98]

The indispensable party doctrine was applied inconsistently among courts of law and equity following Shields because there was little guidance about how to determine if a party was actually necessary/indispensable or whether a case could ever proceed in the absence of those parties.[99] Nonetheless, Rule 19 was included in the Federal Rules of Civil Procedure when the rules were first adopted in 1938 and codified the indispensable party doctrine similarly to how it was described in Shields.[100] Scholars criticized the original rule for its rigid categorization of parties and the limited guidance about how to proceed if a party could not be joined to a case.[101] In 1966, Rule 19 was amended to include the factors that modern courts use to determine if a party is required to be joined to a case.[102] If it is feasible, parties must be joined if “in that person’s absence, the court cannot accord complete relief among existing parties,” or if proceeding without that party would “impair or impede the person’s ability to protect the[ir] interest” or risk multiple/inconsistent judgments against an existing party.[103]

The amended rule also provided guidance about assessing whether a case can proceed “in equity and good conscience” if joinder is not feasible.[104] To decide whether a case should proceed in the absence of a required party, the court considers prejudice to the absent or existing parties, mitigation of that prejudice when determining the relief to be granted, adequacy of a judgment without the absent party, and availability of an alternative forum where the party could be feasibly joined.[105] If the court determines that a case cannot fairly proceed absent the required party based on those factors, then the case may be dismissed.[106] Rule 19 also requires that a party asserting a claim “must state: (1) the name, if known, of any person who is required to be joined if feasible but is not joined; and (2) the reasons for not joining that person.”[107]

2. The Modern Rule 19

The modern rule requires that parties must be joined to a lawsuit if one of three conditions is met. First, a person is a “Required Party” if “in that person’s absence, the court cannot accord complete relief among existing parties.”[108] Alternatively, the person is a required party if excluding the person would “leave an existing party subject to a substantial risk of incurring double, multiple, or otherwise inconsistent obligations.”[109] Lastly, if the person claims an interest in the subject matter of the case and that person’s ability to protect the subject matter could be harmed, then that person is also a required party.[110]

In modern patent infringement cases, one (if not all) of the three conditions is likely to be met for domestic subsidiaries. Domestic corporations are often the source of the revenue from any allegedly infringing devices; thus, excluding domestic corporations from a case would deprive the plaintiff of “complete relief.” Furthermore, finding the foreign parent corporation (and it alone) liable for patent infringement may subject the domestic corporation to duplicate liability for the same infringement. And those domestic companies have an interest in gaining the rights to practice the invention that can be achieved by invalidating a patent in court.

Critically, Rule 19(a)(3) clarifies that if “a joined party objects to venue and the joinder would make venue improper, the court must dismiss that party.”[111] Thus, if in our hypothetical from earlier, ABC Co. (USA) was joined to a patent infringement suit under Rule 19, it would have to be immediately dismissed from the case because venue would be improper. And this is where this all gets interesting! Rule 19 also provides a list of factors for determining whether such a case (involving a joined party lacking venue) “the action should proceed among the existing parties or should be dismissed.”[112] Those factors are:

  1. the extent to which a judgment rendered in the person’s absence might prejudice that person or the existing parties;

  2. the extent to which any prejudice could be lessened or avoided by:

    (A) protective provisions in the judgment;

    (B) shaping the relief; or

    (C) other measures;

  3. whether a judgment rendered in the person’s absence would be adequate; and

  4. whether the plaintiff would have an adequate remedy if the action were dismissed for nonjoinder.[113]

3. General Approaches to Rule 19

The required party analysis is very fact-specific, but there are some patterns to the way that courts treat parties in common instances:

  • Joint tortfeasors are typically not necessary parties;[114]

  • Co-obligors may be necessary parties, but are generally not indispensable;[115]

  • Actions to set aside a contract requires the joinder of all parties to the contract;[116]

  • The principal and the agent are generally not required to both be joined;[117]

  • A parent corporation may not be a necessary party in an action against its subsidiary,[118] and a subsidiary may not be an indispensable party in an action against its parent,[119] but the subsidiary may be indispensable when the plaintiff sues the parent company on a theory imputing the conduct of the subsidiary to the parent;[120] and

  • A patent licensee is generally not a necessary party to an infringement action brought by the patentee-licensor, exclusive licensees are usually considered necessary parties; assignees are usually necessary parties, but partial assignees are not indispensable parties.[121]

Most relevant to this Article’s argument is the status of parent/subsidiary corporations in the indispensable party analysis. While subsidiaries are not de facto indispensable parties in suits against the parent corporation,[122] they are generally found to be indispensable parties when the subsidiaries’ actions or omissions are imputed to the parent corporation.[123]

Thus, in patent suits that feature allegations of patent infringement against a foreign parent company, typically the domestic distributor and/or domestic subsidiary will be a necessary party, at least when the parent does not make, sell, or distribute the product. In that scenario, the act of patent infringement must be the act of making, using, selling, or importing the infringing product into the United States. Without the domestic subsidiary/distributor, suits against a foreign parent with no actions in the United States would leave out an indispensable party: the party that directly commits infringement. The real work lies in determining whether the suit must be dismissed without the non-joinable domestic corporation.

B. The EDTX Approach to Rule 19

So, given that Rule 19 should, in most patent infringement cases, require a domestic actor to accompany the parent corporation to trial, why has the EDTX failed to require joinder in many patent cases? The answer is that the district takes conclusory allegations of control and aiding and abetting intermediaries at face value, rarely looking beyond what is alleged in the complaint.

1. Allegations in the Complaints

The complaints in many of these foreign-entity-only patent cases rarely attempt to pierce the corporate veil or make any detailed showing of contact with the parent corporation and the EDTX.[124] Instead, the complaints omitting subsidiaries tend to present agency theories of vicarious liability—a classic indispensable party situation.[125] Some complaints allege direct liability for domestic conduct, which may not require the domestic corporation to be joined, depending upon the facts.[126] Many of these complaints are entirely bare-boned parroting of the legal standards, likely on the hope that the defendant will waive the jurisdictional issues.

For example, InnoBrilliance LLC, which has been directly involved in a number of cases, names foreign companies in multiple suits without naming any domestic subsidiaries. The complaints passively describe the conduct of infringement and the defendants’ ties to the district. For example, in a complaint against Samsung, InnoBrilliance alleged that it “committed, aided, abetted, contributed to and/or participated in” acts of infringement in the Western District of Texas and recited the language of 28 U.S.C. § 1400 to establish venue.[127] In other complaints against Koninklike Philips LLC and TCL Technology Corporation, in the EDTX, the complaints are more generic, simply alleging that defendants “engaged in systematic and continuous business activities” and “committed acts of patent infringement in this District.”[128] InnoBrilliance voluntarily dismissed these cases before the defendants answered.[129]

WSOU Investments LLC, which filed most of its nearly 200 lawsuits in the Western District of Texas, often named foreign defendants without naming any U.S. affiliates. For example, in a complaint against ZTE Corporation, a Chinese company, WSOU alleged that ZTE Corporation did business in Texas “directly or through intermediaries.”[130] The case apparently settled before the court addressed a motion to dismiss for lack of personal jurisdiction.[131]

Similarly, Slyde Analytics sued Zepp Health Corporation for patent infringement and omitted Zepp’s U.S. subsidiary.[132] Zepp did file a motion to dismiss for failure to name a necessary party, and the patentee amended the complaint.[133] The court denied the motion, citing the sale to the subsidiary as the infringing conduct and concluded that the allegations in the complaint showed that Zepp “maintains control over the ‘transaction value and payment terms’ for the [Accused Products], demonstrating control and participation in the sales within the United States.”[134] The district court denied the motion, finding that “joint tortfeasors are not considered ‘required’ or indispensable parties,” and noting that if it was true, as Zepp argued, that it was “only a holding company and has not sold or imported the accused devices,” then summary judgment would be appropriate.[135] Citing two cases, also from East Texas, the court suggested that it would deny the motion under Rule 19(b) anyway, citing the alignment of interests of parent companies and their wholly-owned subsidiaries.[136]

These complaints were thorough in comparison to others. For example, complaints against NEC Corporation and Canon Inc., both Japanese companies, lacked any detail regarding the basis for personal jurisdiction and venue.[137] Settling, instead, for boilerplate language that NEC and Canon “engaged in systematic and continuous business activities” and “committed acts of patent infringement” in the Western District of Texas.[138]

Sometimes complaints allege that parents are responsible for the actions of subsidiaries. For example, Liberty Patents LLC sued Lenovo affiliates based in China, alleging that these defendants “and their affiliates are part of the same corporate structure and distribution chain for the making, importing, offering to sell, selling, and using of the accused devices in the United States” and that they “operate as a unitary business venture and are jointly and severally liable.”[139] Lenovo moved to dismiss for lack of personal jurisdiction, accusing Liberty of attempting to “create venue in this forum by only naming foreign entities as defendants.”[140]

In response, Liberty filed an amended complaint that still only named foreign counterparts, but alleged that all of the infringing activities were formed at the “direction or control” of Lenovo Group Ltd., a Chinese holding company.[141] The defendants filed another motion to dismiss, maintaining that “[n]on-party Lenovo U.S. is solely responsible for all importation, marketing, sales, and other activities relating to Lenovo products in the United States. However, Liberty could not join Lenovo U.S. to this action because venue would be improper.”[142] The parties settled before the issue was resolved.[143]

Another example: PANDA Interactive (Panda) sued Sportradar Group AG and its subsidiary Sportradar AG, both Swiss companies in Texas.[144] The domestic subsidiary, Sportradar US, filed a declaratory judgment action in Delaware four months later.[145] In the Texas complaint, Panda alleged that the Sportradar AG “directs” its US affiliates “to make, use, sell, offer to sell, or import into the United States the Accused Products.”[146] For personal jurisdiction purposes, Panda relied on a stream of commerce theory, citing Sportradar’s relationships with national sports leagues, and identified an online posting for a position in Texas as the basis for personal jurisdiction.[147] The EDTX denied a motion to dismiss for lack of personal jurisdiction or, in the alternative, to transfer to the District of Delaware.[148] A little over a year after the declaratory action was filed, the Delaware court transferred its case to the EDTX under the first-to-file rule, deferring to the Texas court’s finding that it had personal jurisdiction and declining to address concerns regarding improper venue as to the subsidiaries.[149] The Texas case has already had a Markman hearing since that time.[150]

Hanshow Technology Co. sued parent company VusionGroup S.A. and its subsidiaries, VusionGroup GmbH and Captana GmbH for infringement based on products sold by their domestic counterparts, Captana, Inc. and VusionGroup, Inc., and VusionGroup GMBH, alleging that they “directly or through intermediaries” have minimum contacts with the district, citing business locations and job postings in the United States.[151] The defendant moved to dismiss the subsidiaries, arguing that these entities were only included, and the U.S. counterparts excluded, “to manufacture venue” in the EDTX.[152] The defendant argued that one of the subsidiaries, VusionGroup GmbH, did not make any products at all and was only a research organization.[153] The parties engaged in jurisdictional discovery, and the patent owner filed a response that was mostly redacted.[154] Nearly a year after the motion to dismiss, the court denied the motion, citing allegations that the moving parties’ employees visited Texas to “support the sale” of products and train employees.[155] Despite jurisdictional discovery, the court evaluated the motion on a prima facie standard, acknowledging that “the question of whether Plaintiffs have proved, by a preponderance of evidence, the facts necessary to establish personal jurisdiction over Moving Defendants must be answered” at some point.[156] Since then, the court and parties have engaged in significant substantive work, including a Markman hearing, and jury selection is scheduled for early 2026.

Another patent owner, Flexiworld Technologies, has taken a similar approach. Suing only the Japanese Sony Corporation for acts of infringement it acknowledges are actually performed by U.S. subsidiaries, Flexiworld broadly alleged that Sony “in agency with” its U.S. counterparts “provides a distribution channel of infringing products within this District and the U.S. nationally, where Sony regularly imports and inserts into the stream of commerce” the accused products.[157] Sony simply denied allegations of infringement in its answer.[158]

Notably absent from many of these complaints are allegations of pre-suit knowledge of the patent, which is required for vicarious liability theories like induced and contributory infringement.[159] The complaints are bare on these facts. Indeed, one complaint indicated it was unlikely defendants were aware of the patents, let alone the infringement, given their practice of not reviewing patents to see if they might infringe them.[160]

In other words, the complaints lack the level of specificity needed to pierce corporate veils or plead vicarious liability. Instead, broad allegations of control and direction, regardless of pre-suit knowledge, are used to exclude the domestic partners from the complaints.

2. Implications of Excluding Necessary Parties

The failure of the EDTX to strictly enforce Rule 19 (and some defendants simply not challenging the issue), has led to procedural and substantive issues. First on the procedural side. Failure to strictly enforce Rule 19 leads to massive amounts of forum shopping, directly contrary to the goals set down from the Supreme Court in TC Heartland. In TC Heartland, the Court sought to limit the availability of the courts in patent cases to just those districts that were home to the defendant or where the defendant had a regular and established place of business.[161] And initially the opinion reduced the massive amount of patent litigation occurring in East Texas.[162]

But failure to police Rule 19 is merely another way to permit those cases that were excluded under TC Heartland to once again return to East Texas. Now, instead of bringing an action against a domestic company or subsidiary in the EDTX (which would almost assuredly be thrown out for lack of venue under TC Heartland), companies can bring an action against just the foreign parent corporation and avoid the patent venue statute altogether.[163] If courts fail to enforce Rule 19, requiring joinder of indispensable parties, this will allow the type of forum shopping disfavored under the venue statutes. Furthermore, forcing foreign corporations—that do not have significant ties in the United States—to litigate their claims in East Texas represents an undue burden for the corporations.[164] That burden is what TC Heartland, and the patent venue, were trying to eliminate.[165]

The effects of failing to enforce Rule 19 are greater on the substantive law than perhaps the procedural law. It is practically difficult, if not impossible, to litigate a patent infringement claim without having the party directly responsible for the infringement present. Numerous issues of discovery (what was sold, what are the features of the product, when were the items sold, how much did they sell for) are very hard to ascertain without the participation of the entity that sold the products.[166] One might respond that the parent corporation can get the information from the subsidiary responsible for selling the products. But, if that is the case, why not simply add the subsidiary as a party?

Additionally, there are practical concerns. Some parent corporations are holding companies for diverse industries and asking their employees to essentially act as litigation liaisons for the various subsidiaries across different and complex technological areas would be inefficient and burdensome. Discovery of an appropriate Federal Rule of Civil Procedure 36 employee also becomes confusing, both logistically for taking discovery of foreign nationals and substantively, where the subsidiary’s employees are the ones who know the most about the alleged infringement.[167] Meanwhile, the alternative—requiring the patentee to include the true accused infringer—puts no comparable burden on the plaintiff. Well, other than the limits on where they might file the complaint, but that burden is one that both the U.S. Congress and the Supreme Court have signed off on.[168]

Not requiring that a subsidiary join a lawsuit as a required party ignores the obvious fact that it is the party responsible for the action that led to the patent infringement allegation. Not joining it to the action only leads to confusion.

C. Appellate Approaches to Rule 19

1. “Active Participants”: The Fifth Circuit’s Approach

In most tort cases, joint tortfeasors are not necessary parties.[169] The Fifth Circuit’s “active participant” exception to this rule emerged in Haas v. Jefferson National Bank, where the court held that parties who are “active participants” in a particular controversy are indispensable to the case.[170] The plaintiff in Haas sought to have stocks issued to him, as he was owed half the value of shares he purchased with a partner.[171] The court held that the partner who owned the other half of the shares was not merely “a key witness whose testimony would be of inestimable value,” but instead was “an active participant in the alleged conversion of Haas’ stock,” without whom the case could not be decided in equity or good conscience.[172]

The active participant rule was applied in the business organization context in Freeman v. Northwest Acceptance Corp. Freeman brought suit against Northwest Acceptance Corporation, asserting that its subsidiary, First Commercial Credit Corporation, wrongfully took control of gravel that belonged to them but did not name First Commercial as a defendant.[173] The Fifth Circuit held that because First Commercial’s alleged conversion of the gravel was central to the claim, the subsidiary was an indispensable party that had to be joined in the case.[174] In like cases, if the subsidiary cannot be joined without destroying subject matter jurisdiction, then the case must be dismissed.[175] Even when, as in this case, the active participant is a joint tortfeasor. Freeman has been cited over 200 times in the Fifth Circuit, and the active participant rule still applies today.[176]

2. The Federal Circuit’s Approach

Because the Federal Circuit Court of Appeals has exclusive jurisdiction over appeals arising from patent law,[177] the court has necessarily grappled with the required joinder rule in patent disputes.[178] First, if raised, “the application of Rule 19 is mandatory, not discretionary,” and it applies whether a defendant invokes any of the Federal Rule of Civil Procedure 12 bases for dismissal or not.[179] Second, the court has established that judgments on Rule 19 are subject to the law and standard of review applied by the regional circuit (abuse of discretion, except for the Sixth Circuit[180]) if the district court analyzed issues arising under Rule 19.[181] If the district court did not address Rule 19 issues, then those issues are reviewed de novo.[182]

In the corporate context, Dainippon Screen Manufacturing v. CFMT is a key Federal Circuit case reversing dismissal where a plaintiff sued a parent company (CFM) in California without its subsidiary (CFMT), and the subsidiary could not be added because of lack of personal jurisdiction.[183] The Federal Circuit reasoned that even if the district court did not have personal jurisdiction over CFMT, the subsidiary was not a required party because any potential prejudice was mitigated by CFM’s complete ownership of CFMT and alignment of their interests.[184] The court also reasoned that the subsidiary “may intervene in the suit, and this ‘opportunity to intervene may be considered in calculating [any] prejudicial effect.’”[185]

The EDTX, for its part, has approached patent cases in a way that ignores Haas and Freeman.[186] Under the EDTX, the court merely asks whether or not the parent corporation is alleged to be an infringer.[187] It does not inquire into whether or not the parent entity is actually accused of having committed acts of infringement.[188] Instead, it either takes the statements of the plaintiffs at face value,[189] or, when challenged, it often hides behind the basic rule that a joint tortfeasor (patent infringement is a tort) is not a necessary party.[190]

This test is much less likely to find domestic parties indispensable than the active participant approach of the Fifth Circuit. But this approach is in contrast to the stated purposes of Rule 19. Rule 19 seeks to avoid the situation where one party (the domestic entity in this scenario) is at risk of multiple judgments or the court cannot give complete relief to a party (in this case, the parent corporation).[191] In the case of parent-only complaints in the EDTX, the court runs both risks: If the parent is found liable, failure to join the domestic entity would deny the court of the information (through discovery) necessary to fashion relief; similarly, the court might not be able to even grant relief, considering the parent corporation may not have been the literal infringer and cannot be liable for secondary liability because it lacks the requisite scienter.

IV. Solutions

A. The Fifth Circuit’s “Active Participant” Approach Should Be Adopted by the EDTX

The Fifth Circuit’s active participant test, requiring joinder of parties that are central to the events underlying the litigation, would require joinder of the domestic subsidiary in almost every case discussed above. And it is more correct under the text and purposes underlying Rule 19.

The primary purposes of Rule 19 are to ensure that a judgment has res judicata effect and “to protect the interests of absent parties.”[192] Here, a domestic subsidiary certainly has an interest in defending itself against liability and avoiding potentially duplicative patent infringement suits. The active participant test avoids forcing a parent to act as a stand-in when the true defendant is available. Then, the subsidiary, and not the parent, can directly decide on litigation strategy, negotiate the nuances of protective orders and respond to discovery requests that ultimately would have been directed to the subsidiary in any case.[193]

The four-factor test of Rule 19(b) also promotes judicial efficiency by respecting corporate formalities. “[T]he primary purpose of the corporate form is to prevent a company’s owners, whether they are persons or other corporations, from being liable for the activities of the company.”[194] Because affiliated companies are not treated as “a single corporate entity,” “the demand to respect corporate formalities” is required in assessing liability and damages.[195] Respect of corporate formalities is also required for jurisdictional purposes, even where the relationship between parent and subsidiary is “intimate.”[196] Where a parent defendant has observed corporate formalities, the owners “reasonably expect that they cannot be held liable for the faults” of their domestic affiliates and, therefore, “do not reasonably anticipate being hailed into a foreign forum to defend against liability” of the actions of those affiliates.[197] This is perhaps especially true in the case involving a foreign parent and domestic affiliate—the entire purpose of setting up the domestic affiliate is to handle the business abroad.

Respecting corporate formalities prevents duplicative litigation. In Dewberry Group, Inc. v. Dewberry Engineers Inc., the Supreme Court recently confirmed the principle that when assessing damages, a patent owner may only recover damages from the defendant they have named.[198] Therefore, when the patent owner only sues a holding company for patent infringement, they cannot obtain “full” recovery, even assuming they are successful. This is because a patent owner cannot obtain an injunction when the actual seller or importer is a domestic entity.[199] For the same reason, the damages outlook will be smaller if only suing against the holding company. This means that to fully recover for the accused infringing conduct, the patent owner will have to sue twice: once against the holding company in the EDTX, and then against the domestic affiliate where venue exists. Rule 19 was meant to prevent such a waste of judicial resources.

Of course, these inefficiencies may not matter to patent assertion entities, who are unlikely to qualify for injunctive relief and operate on a file-and-settle basis.[200] To such entities, venue is evaluated based on the low probability of stays and the high probability of demanding discovery rules. Usually, those discovery rules hurt defendants of patent suits much more so than plaintiffs.[201] Thus, the cost of discovery and low probability of staying or transferring the case are the primary drivers of settlement negotiation price, not the actual harm suffered. That is likely why the Texas complaints do not even attempt to pierce the corporate veil or construct a viable theory of divided infringement. There is no real intent to obtain a full recovery because any harm from infringement is just an abstraction.

Finally, the active participant approach proposed by the Fifth Circuit respects the “necessary” status of the subsidiary. In the first step of Rule 19, the court asks whether a party should be joined if feasible—if so, then it is, somewhat confusingly, a “necessary” party.[202] There is no reasonable dispute that the acting subsidiary is a required party under this first step, as it has substantial interests and should be joined in these patent infringement actions if feasible. The active participant test acknowledges that in cases such as these—where there is an equivalent venue that will apply the same laws to deliver the same relief—it would be arbitrary to continue without the subsidiary.[203]

It is perhaps for these reasons that others have followed the Fifth Circuit. For example, in Laker Airways, Inc. v. British Airways, PLC, the Eleventh Circuit adopted Haas’s active participant test, holding that a party is necessary if “either that complete relief cannot be granted with the present parties or the absent party has an interest in the disposition of the current proceedings.”[204] The Eighth Circuit agreed with this analysis in finding the United States an indispensable party in Two Shields v. Wilkinson.[205]

The First Circuit also applies a “primary actor” test in finding that it is prejudicial to the third party to name its affiliate as a defendant instead.[206] Much like the complaints above, in B. Fernandez & HNOS, Inc., the complaint alleged that the defendant committed fraudulent acts by “acting through their affiliate.”[207] The court concluded that it was proper to dismiss under Rule 19(b), observing that it was simply more practical “to proceed in a forum where the absentee may be joined.” In other words, where the claims were “grounded on actions taken by the absentee party,” Rule 19 requires that the absentee party should also be named in the complaint.[208]

Even circuits that have pushed back on the primary actor test acknowledge that it should be considered in stepping through Rule 19. For example, the D.C. Circuit criticized the primary actor test to the extent it assumed acting subsidiaries to be per se indispensable, noting that courts must work through “Rule 19’s checklist.”[209] The Seventh Circuit has gone even further, questioning whether wholly-owned subsidiaries could ever be considered indispensable.[210] But, importantly, even those circuits have acknowledged that the interests of the subsidiary at least weigh in favor of a finding of indispensability where an alternative forum exists.[211]

B. Although the “Active Participant” Test Is More Factual in Nature, Adopting the EDTX’s Approach Abrogates Rule 19 and Encourages Forum Shopping

The Fifth Circuit’s primary actor test would require a holistic analysis of the facts in a complaint on a case-by-case basis; however, this is simply the nature of Rule 19, which “can only be determined in the context of particular litigation.”[212]

The EDTX’s “interest alignment” approach—assuming no indispensability as long as the interests of the implicated nonparty are aligned with those of the named defendant—applies Rule 19 backwards, ignoring the absentee party’s undisputed status as a necessary party. By placing so much weight on the interest-alignment, the decisions gloss over other factors in Rule 19(b) and the admonition of Rule 19(a) to ensure that required parties are joined where feasible.[213] This framework ignores the easy solution for bringing a necessary party into the case—move the suit to another district that would enforce the exact same patent laws.

Further, the interest-alignment framework ignores corporate formalities. The interests of even distant affiliates may align in patent cases. But to adequately defend against an action, the defending parent who respects corporate lines is placed in a difficult position. For example, the defending parent may not have a Federal Rule of Civil Procedure 36 employee who can answer questions relevant to the lawsuit or the authority to direct the subsidiary to produce communications and documents without a subpoena. In allowing the patent owner to proceed with only the foreign parent, the case treats the domestic subsidiary as third-party witness for its own conduct. By giving some bite to factor four of Rule 19(b), whether an alternative forum is available that would not have the defect of excluding a necessary party, the Fifth Circuit’s approach respects these formalities and puts the onus on plaintiffs to file in a venue free of the Rule 19 conflict in the first place.[214]

The EDTX’s lax enforcement of Rule 19 has revitalized patent complaints in its jurisdictions after TC Heartland. However, venue and jurisdictional statutes serve the important purpose of preventing forum shopping.[215] Plaintiffs should not be able to get around the patent venue statute, or any venue statute for that matter, by simply omitting the true defendant from the case—such obvious gamesmanship is prejudicial to both the named and unnamed defendants and should be considered as much under factor one in the Rule 19 analysis. On the flip side, there is little harm in requiring patent holders to name the domestic party, the one actually responsible for alleged infringement in the United States. The only consequence is transfer to a permissible forum that will apply the exact same laws and rules.

V. Conclusion

The Fifth Circuit’s active participant test under Rule 19 provides a more equitable and consistent framework for resolving disputes involving global corporations accused of patent infringement. By emphasizing the need to join subsidiaries that are directly responsible for importing, selling, and distributing products accused of infringement, the test aligns with fundamental principles of corporate law and procedural fairness.

Conversely, the EDTX’s practice of focusing solely on the complaint enables plaintiffs to strategically omit necessary parties, imposing significant burdens on foreign affiliates with limited connections to the U.S. This approach not only undermines procedural safeguards but also distorts principles of liability, allowing plaintiffs to evade the protections established under TC Heartland.

Adopting the Fifth Circuit’s approach would ensure that domestic affiliates, as active participants in alleged infringement, are appropriately joined in litigation. This shift would prevent misuse of jurisdictional doctrines and foster more balanced and predictable outcomes in patent litigation. Ultimately, the legal system must discourage tactics that exploit procedural gaps to create undue burdens for foreign entities while protecting the substantive rights of all parties involved.

  1. See, e.g., J. Jonas Anderson, Court Competition for Patent Cases, 163 U. Pa. L. Rev. 631, 653–54 (2015) [hereinafter Court Competition] (highlighting the appeal of the EDTX for patent litigants).

  2. See id. at 671; Yan Leychkis, Of Fire Ants and Claim Construction: An Empirical Study of the Meteoric Rise of the Eastern District of Texas as a Preeminent Forum for Patent Litigation, 9 Yale J.L. & Tech. 193, 206 (2007); Jonas Anderson, Judge Shopping in the Eastern District of Texas, 48 Loy. U. Chi. L.J. 539, 547 (2016) [hereinafter Judge Shopping]; Ronen Avraham & John M. Golden, “From PI to IP”: Litigation Response to Tort Reform, 20 Am. L. & Econ. Rev. 168, 170 (2018); Julie Creswell, So Small a Town, So Many Patent Suits, N.Y. Times (Sep. 24, 2006), https://www.nytimes.com/2006/09/24/business/24ward.html [https://perma.cc/7UWT-DBCP].

  3. See Court Competition, supra note 1, at 651.

  4. See Leychkis, supra note 2, at 214.

  5. See Court Competition, supra note 1, at 667, 671.

  6. Id. at 672–73.

  7. See Judge Shopping, supra note 2, at 539, 542.

  8. See Daniel Kazhdan & Sanjiv P. Laud, TC Heartland: It’s Time to Take Stock, 8 IP Theory 55, 63 (2018); Robert G. Bone, Forum Shopping and Patent Law—A Comment on TC Heartland, 96 Tex. L. Rev. 141, 147–48 (2017); Colleen V. Chien & Michael Risch, Recalibrating Patent Venue, 77 Md. L. Rev. 47, 50–51 (2017); Ofer Eldar & Neel U. Sukhatme, Will Delaware Be Different? An Empirical Study of TC Heartland and the Shift to Defendant Choice of Venue, 104 Corn. L. Rev. 101, 104 (2019); Jonas Anderson, Reining in a “Renegade” Court: TC Heartland and the Eastern District of Texas, 39 Cardozo L. Rev. 1569, 1609 (2018) [hereinafter Reining in a “Renegade” Court].

  9. TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 265, 270 (2017) (holding that for purposes of the patent venue statute, 28 U.S.C. § 1400(b), a domestic corporation “resides” only in its state of incorporation).

  10. See Reining in a “Renegade” Court, supra note 8, at 1600–01.

  11. John G. Roberts, Jr., 2021 Year-End Report on the Federal Judiciary 5 (2021); see Reining in a “Renegade” Court, supra note 8, at 1609.

  12. We have spotted at least forty instances of plaintiffs suing only the foreign parent company in the EDTX. See, e.g., Complaint for Patent Infringement at 1–4, Longitude Licensing Ltd. v. Lenovo Grp. Ltd., No. 2:25-cv-00171 (E.D. Tex. Feb. 13, 2025); Complaint for Patent Infringement at 1–2, 5–8, VideoLabs, Inc. v. TCL Tech. Grp. Corp., No. 2:25-cv-00161 (E.D. Tex. Feb. 10, 2025); Complaint for Patent Infringement at 1, Pantech Corp. v. Lenovo Grp. Ltd., No. 5:25-cv-00093 (E.D. Tex. July 3, 2025); Complaint for Patent Infringement at 1, 5, BOE Tech. Grp. Co. v. Samsung Display Co., No. 2:25-cv-00587 (E.D. Tex. May 27, 2025); Complaint & Jury Demand at 1, Monument Peak Ventures, LLC v. Open Text Corp., No. 2:25-cv-00521 (E.D. Tex. May 12, 2025); Complaint for Patent Infringement Against Nintendo Co., at 1–2, Resonant Sys., Inc. v. Nintendo Co., No. 2:25-cv-00090 (E.D. Tex. Jan. 31, 2025); Complaint for Patent Infringement at 1, HyperQuery LLC v. D2L Inc., No. 2:25-cv-00039 (E.D. Tex. Jan. 15, 2025); Complaint for Patent Infringement at 1, Mimzi, LLC v. Hyundai Motor Co., No. 2:25-cv-00599 (E.D. Tex. June 4, 2025); Complaint for Patent Infringement at 1, Mimzi, LLC v. Mercedes-Benz AG, No. 2:25-cv-00603 (E.D. Tex. June 4, 2025); Complaint for Patent Infringement at 1, Mimzi, LLC v. Honda Motor Co., No. 2:25-cv-00600 (E.D. Tex. June 4, 2025); Complaint for Patent Infringement at 1, Mimzi, LLC v. Nissan Motor Co., No. 2:25-cv-00601 (E.D. Tex. June 4, 2025); Complaint for Patent Infringement at 1, Mimzi, LLC v. Subaru Corp., No. 2:25-cv-00602 (E.D. Tex. June 4, 2025); Complaint for Patent Infringement at 1, Modena Navigation LLC v. Honda Motor Co., No. 2:25-cv-00494 (E.D. Tex. May 6, 2025); Complaint for Patent Infringement at 1–2, Modena Navigation LLC v. Hyundai Motor Co., No. 2:25-cv-00496 (E.D. Tex. May 6, 2025); Complaint for Patent Infringement at 1, Modena Navigation LLC v. Nissan Motor Co., No. 2:25-cv-00495 (E.D. Tex. May 6, 2025); Complaint for Patent Infringement at 1, Modena Navigation LLC v. Toyota Motor Corp., No. 2:25-cv-00492 (E.D. Tex. May 6, 2025); Complaint for Patent Infringement at 1, Auto Injection Techs. LLC v. GSK plc, No. 2:25-cv-00373 (E.D. Tex. April 9, 2025); Complaint for Patent Infringement at 1, Auto Injection Techs. LLC v. Ypsomed AG, No. 2:25-cv-00377 (E.D. Tex. April 9, 2025); Complaint for Patent Infringement at 1–3, 5–11, Valtrus Innovations Ltd. v. Lenovo Grp. Ltd., No. 2:25-cv-00080 (E.D. Tex. Jan. 27, 2025); Complaint for Patent Infringement at 1–2, Array Cache Techs., LLC v. MediaTek Inc., No. 2:25-cv-00669 (E.D. Tex. June 30, 2025); Complaint for Patent Infringement at 1–3, Light Guide Innovations LLC v. Hisense Co., No. 2:25-cv-00051 (E.D. Tex. Jan. 17, 2025); Complaint for Patent Infringement at 1, ServStor Techs. LLC v. QNAP Sys., Inc., No. 2:25-cv-00649 (E.D. Tex. June 20, 2025); Complaint for Patent Infringement at 1–2, Nostromo LLC v. Fibar Grp. S.A., No. 2:25-cv-00636 (E.D. Tex. June 16, 2025); Original Complaint for Patent Infringement at 1, Encryptawave Techs. LLC v. Toshiba Corp., No. 4:25-cv-00171 (E.D. Tex. Feb. 20, 2025); Original Complaint for Patent Infringement at 1, Encryptawave Techs. LLC v. Nintendo Co., No. 4:25-cv-00330 (E.D. Tex. Mar. 31, 2025); Original Complaint for Patent Infringement at 1, TurboCode LLC v. Biotronik SE & Co. KG, No. 2:25-cv-00320 (E.D. Tex. Mar. 31, 2025); Complaint for Patent Infringement at 1–2, 4, 6–7, Velocity Commc’n Techs., LLC v. TP-Link Corp. PTE., No. 5:25-cv-00109 (E.D. Tex. July 9, 2025); Complaint for Patent Infringement at 1–5, Velocity Commc’n Techs., LLC v. Lenovo Grp. Ltd., No. 5:25-cv-00107 (E.D. Tex. July 9, 2025); Complaint for Patent Infringement at 1–2, Velocity Commc’n Techs., LLC v. OnePlus Tech. (Shenzhen) Co., No. 5:25-cv-00098 (E.D. Tex. July 9, 2025); Complaint for Patent Infringement at 1–2, Velocity Commc’n Techs., LLC v. Acer Inc., No. 5:25-cv-00099 (E.D. Tex. Jul7 9, 2025); Complaint for Patent Infringement at 1–2, Velocity Commc’n Techs., LLC v. ASUSTeK Comput., Inc., No. 5:25-cv-00100 (E.D. Tex. July 9, 2025); Complaint for Patent Infringement at 1, Pantech Corp. v. OnePlus Tech. (Shenzhen) Co., No. 5:25-cv-00089 (E.D. Tex. July 3, 2025); Complaint for Patent Infringement at 1–4, Pantech Corp. v. TCL Indus. Holdings Co., No. 5:25-cv-00091 (E.D. Tex. July 3, 2025); Complaint for Patent Infringement at 1–2, Vision Works IP Corp. v. Suzuki Motor Corp., No. 2:25-cv-00429 (E.D. Tex. Apr. 23, 2025); Original Complaint for Patent Infringement at 1–2, BT Wearables LLC v. Zepp Health Corp., No. 2:25-cv-00318 (E.D. Tex. Mar. 31, 2025); Complaint for Patent Infringement at 1–2, CommWorks Sols., LLC v. AVM GmbH, No. 2:25-cv-00026 (E.D. Tex. Jan. 13, 2025); Complaint for Patent Infringement at 1–2, Fleet Connect Sols. LLC v. UAB Xirgo Glob., No. 2:25-cv-00126 (E.D. Tex. Feb. 4, 2025); Complaint for Patent Infringement at 1–3, Alto Dynamics, LLC v. Century Fuxuan Tech. Dev. (Beijing) Co., No. 2:25-cv-00017 (E.D. Tex. Jan. 7, 2025); Complaint for Patent Infringement at 1, Freedom Pats. LLC v. MediaTek, Inc., No. 4:25-cv-00425 (E.D. Tex. Apr. 24, 2025); Complaint for Patent Infringement at 1, Freedom Pats. LLC v. Renesas Elecs. Corp., No. 4:25-cv-00428 (E.D. Tex. Apr. 24, 2025); Complaint for Patent Infringement at 1, Freedom Pats. LLC v. Realtek Semiconductor Corp., No. 4:25-cv-00426 (E.D. Tex. Apr. 24, 2025); Complaint for Patent Infringement at 1–2, CommWorks Sols., LLC v. DrayTek Corp., No. 2:25-cv-00024 (E.D. Tex. Jan. 13, 2025); Complaint for Patent Infringement at 1, 5–8, VideoLabs, Inc. v. Hisense Co., No. 2:24-cv-00904 (E.D. Tex. Nov. 6, 2024).

  13. See In re HTC Corp., 889 F.3d 1349, 1356–57 (Fed. Cir. 2018) (reaffirming rule that, if personal jurisdiction exists, venue is proper in any federal district court in a suit against a foreign corporation).

  14. Brunette Mach. Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706, 714 (1972).

  15. In re HTC Corp., 889 F.3d at 1351–52.

  16. Id. at 1357.

  17. Id. at 1354.

  18. 28 U.S.C. § 1391(c)(3); see TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 261 (2017) (holding that for purposes of the patent venue statute, 28 U.S.C. § 1400(b), a domestic corporation “resides” only in its state of incorporation).

  19. See In re HTC Corp., 889 F.3d at 1354, 1356–57. The Supreme Court’s personal jurisdiction decisions are very difficult to square. Linda S. Simard, Charles W. Rhodes & Cassandra Burke Robertson, Ford Motor Co.: The Murky Doctrine of Personal Jurisdiction, Am. Const. Soc’y Sup. Ct. Rev. 119, 122, 124–23 (2021) (pointing out that despite the Supreme Court’s trilogy of personal jurisdiction cases, significant questions remain unanswered); Scott Dodson, Rule 4 and Personal Jurisdiction, 99 Notre Dame L. Rev. 1, 16–17, 23 (2023) (proposing to change Rule 4(k) in light of the Supreme Court’s personal jurisdiction rulings). Contra Megan M. La Belle, Personal Jurisdiction and the Fairness Factor(s), 72 Emory L.J. 781, 787–88 (2023) (arguing that the Ford case revives the fairness aspects of the personal jurisdiction doctrine); Jonathan Hoffman, Jason Proctor & Michaela Cloutier, The Trilogy of Personal Jurisdiction and the Importance of Ford, 76 SMU L. Rev. 725, 732–33 (2023) (arguing that the recent trilogy of personal jurisdiction cases from the Supreme Court offers courts a pathway to resolve personal jurisdiction issues).

  20. See discussion infra Part III.

  21. See discussion infra Part III.

  22. See discussion supra Part I; infra Part II.

  23. See discussion infra Section III.A.

  24. See discussion infra Section III.B.

  25. See J. Jonas Anderson & Paul R. Gugliuzza, Federal Judge Seeks Patent Cases, 71 Duke L.J. 419, 438–39, 456 (2021) [hereinafter Federal Judge Seeks Patent Cases] (demonstrating how many patent cases settle); Paul R. Gugliuzza & J. Jonas Anderson, Why Do Judges Compete for Cases?, 104 B.U. L. Rev. 1981, 2002–03 (2024) [hereinafter Why Do Judges Compete for Cases?] (“[T]he litigation strategy for many NPEs is clear: file a case, spend as little as possible, avoid an early dismissal, obtain a settlement (often for an amount below what it would cost the defendant to actually litigate the case), and move on to the next defendant.”); Mark A. Lemley & A. Douglas Melamed, Missing the Forest for the Trolls, 113 Colum. L. Rev. 2117, 2127–28 (2013).

  26. Brian J. Love & James Yoon, Predictably Expensive: A Critical Look at Patent Litigation in the Eastern District of Texas, 20 Stan. Tech. L. Rev. 1, 24–25 (2017).

  27. Int’l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945).

  28. Gwynne L. Skinner, Expanding General Personal Jurisdiction over Transnational Corporations for Federal Causes of Action, 121 Penn. St. L. Rev. 617, 631–32 (2017).

  29. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 295, 297, 299 (1980) (announcing the “reasonable anticipation” test to govern personal jurisdiction over foreign defendants).

  30. See Daimler AG v. Bauman, 571 U.S. 117, 122, 137 (2014) (holding that a foreign corporation is typically only subject to general jurisdiction where it is “at home”—usually where it is incorporated or has its principal place of business); Bristol-Myers Squibb Co. v. Superior Court, 582 U.S. 255, 264–65 (2017) (holding that foreign and out-of-state corporations cannot be sued in a state by non-residents if the suit does not arise out of the corporation’s activities in that state); J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 886 (2011) (finding that a foreign company placing a product into the stream of commerce is not enough for personal jurisdiction unless it purposefully directed activities at the forum).

  31. World-Wide Volkswagen Corp., 444 U.S. at 286.

  32. Id. at 288, 297–98.

  33. Id. at 288–91, 295.

  34. Id. at 286, 297–98.

  35. See id. at 306–07 (Brennan, J., dissenting); Asahi Metal Indus. Co. v. Superior Ct., 480 U.S. 102, 105–06 (1987) (plurality opinion).

  36. Asahi, 480 U.S. at 105–06, 108–09, 112–13.

  37. Id. at 105, 110; id. at 116–17 (Brennan, J., concurring in part and concurring in the judgment); id. at 121–22 (Stevens, J. concurring in part and concurring in the judgment).

  38. Id. at 116–17 (Brennan, J., concurring in part and concurring in the judgment).

  39. Id. at 112 (plurality opinion).

  40. Id. at 112, 114.

  41. See J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 879, 881 (2011) (plurality opinion).

  42. Id.; Asahi, 480 U.S. at 104 (plurality opinion).

  43. Nicastro, 564 U.S. at 877–78, 887–88, 893 (plurality opinion).

  44. Id. at 877, 886–87.

  45. Id. at 887 (Breyer, J., concurring).

  46. Asahi, 480 U.S. at 102–04, 112 (plurality opinion).

  47. Nicastro, 564 U.S. at 887–88 (Breyer, J., concurring).

  48. Id. at 888–89.

  49. Walden v. Fiore, 571 U.S. 277, 277 (2014).

  50. Bristol-Myers Squibb Co. v. Superior Ct., 582 U.S. 255, 255 (2017).

  51. Ford Motor Co. v. Mont. Eighth Jud. Dist. Ct., 141 S. Ct. 1017, 1017 (2021).

  52. See id. at 1028.

  53. “To see why Ford is subject to jurisdiction in these cases . . . consider first the business that the company regularly conducts in Montana and Minnesota. . . . By every means imaginable—among them, billboards, TV and radio spots, print ads, and direct mail—Ford urges Montanans and Minnesotans to buy its vehicles, including (at all relevant times) Explorers and Crown Victorias.” Id. at 1028, 1032.

  54. Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1560, 1572 (Fed. Cir. 1994).

  55. Id. at 1565.

  56. Id. at 1566.

  57. Id. at 1565.

  58. Id. at 1566.

  59. Id. at 1565.

  60. Polar Electro Oy v. Suunto Oy, 829 F.3d 1343, 1349–50 (Fed. Cir. 2016).

  61. Id. at 1346, 1349.

  62. Id. at 1346.

  63. Id. at 1350.

  64. Id. at 1346, 1350.

  65. See Shuker v. Smith & Nephew, PLC, 885 F.3d 760, 780 (3d Cir. 2018) (finding no personal jurisdiction when the foreign company both placed products in the stream of commerce and sold its products to a distributor in the forum state); Montgomery v. Airbus Helicopters, Inc., 414 P.3d 824, 834 (Okla. 2018) (holding of the Oklahoma Supreme Court that merely placing an item into the stream of commerce, without more, does not establish personal jurisdiction).

  66. Complaint for Patent Infringement Against Lenovo Group Ltd. at 2, Universal Connectivity Techs. Inc. v. Lenovo Grp. Ltd., No. 2:23-CV-00449 (E.D. Tex. Sep. 28, 2023).

  67. Defendant Lenovo Grop Ltd.'s Motion to Dismiss for Lack of Personal Jurisdiction at 4–7, Universal Connectivity Techs. Inc. v. Lenovo Grp. Ltd., No. 2:23-CV-00449 (E.D. Tex. May 17, 2024).

  68. Complaint for Patent Infringement Against Lenovo Group Ltd., supra note 66, at 4–5.

  69. Memorandum Opinion & Order at 1, 8, Universal Connectivity Techs. Inc. v. Lenovo Grp. Ltd., No. 2:23-CV-00449 (E.D. Tex. Oct. 17, 2024).

  70. Id. at 6 (quoting Beverly Hills Fan Co. v. Royal Sovereign Corp., 21 F.3d 1558, 1564 (Fed. Cir. 1994)).

  71. Id. at 3, 5–6. However, as described in the Introduction, depending on the thoroughness of the plaintiff’s complaint, other courts in other districts have reached different conclusions. For example, in 3G Licensing, S.A. v. Lenovo Grp. Ltd., No. 17-84-LPS, 2019 WL 3974539, at *5–8 (D. Del. 2019), a Delaware district court found no personal jurisdiction over a Lenovo holding company, on the same facts as the Universal case discussed above, as the plaintiff’s bare recitation of Lenovo’s public securities filings was insufficient to show that the holding company did not intend for its products to find their way to Delaware.

  72. Order Denying Petition for Writ of Mandamus at 1–4, In re Lenovo Grp. Ltd., No. 25-111 (Fed. Cir. Mar. 4, 2025). The Federal Circuit has not been shy about granting writs of mandamus petitions in patent cases, but they usually do for the issue of proper venue. See J. Jonas Anderson, Paul R. Gugliuzza & Jason A. Rantanen, Extraordinary Writ or Ordinary Remedy? Mandamus at the Federal Circuit, 100 Wash. U. L. Rev. 327, 337, 371 (2022) (finding that the grant rate for mandamus petitions of venue coming from the Eastern and Western Districts of Texas was 37%).

  73. Blitzsafe Tex., LLC v. Bayerische Motoren Werke AG, No. 2:17-CV-00418, 2018 WL 4849345, at *1 (E.D. Tex. Sep. 6, 2018), vacated sub nom., Blitzsafe Tex., LLC v. Mitsubishi Elec. Corp., No. 2:17-CV-00430, 2019 WL 3494359 (E.D. Tex. Aug. 1, 2019).

  74. Id.

  75. Id. at *2.

  76. Id. at *3.

  77. Id. at *2–3.

  78. In re Bayerische Motoren Werke AG, No. 2019-108, 2018 WL 6304903, at *1 (Fed. Cir. Nov. 30, 2018).

  79. SnapPower v. Lighting Def. Grp., 100 F.4th 1371, 1374 (Fed. Cir. 2024).

  80. In re DePuy Orthopaedics, Inc., 888 F.3d 753, 774, 777–78 (5th Cir. 2018).

  81. Id. at 777, 779–80.

  82. Id. at 779.

  83. See Daniel Klerman, Rethinking Personal Jurisdiction, 6 J. Legal Analysis 245, 261, 285 (2014).

  84. For an example of the Supreme Court’s muddled jurisprudence and the district courts’ response in another area of patent law, see J. Jonas Anderson, Applying Patent-Eligible Subject Matter Restrictions, 17 Vand. J. Ent. & Tech. L. 267, 269, 271–72 (2015) (“The Supreme Court’s interest in, and difficulty with, promulgating a consistent standard for determining which inventions are patent-eligible has not gone unnoticed in the academy. . . . Yet the proper scope of patent-eligibility remains elusive.”).

  85. See supra Section II.A.

  86. Pennoyer v. Neff, 95 U.S. 714, 733 (1878).

  87. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 297–98 (1980).

  88. Linda S. Mullenix, Personal Jurisdiction Stops Here: Cabining the Extraterritorial Reach of American Courts, 45 U. Tol. L. Rev. 705, 719 (2014).

  89. Id. at 295, 297–98.

  90. Asahi Metal Indus. Co. v. Superior Ct., 480 U.S. 102, 116 (1987); J. McIntyre Mach., Ltd. v. Nicastro, 564 U.S. 873, 881 (2011).

  91. Fed. R. Civ. P. 19(a)(1)(A).

  92. Fed. R. Civ. P. 19 advisory committee’s note to 1966 amendment.

  93. See Note, Federal Rules of Civil Procedure-Rule 19 and Indispensable Parties, 65 Mich. L. Rev. 968, 968–69, 972–74 (1967).

  94. See Shields v. Barrow, 58 U.S. (17 How.) 130, 139 (1855).

  95. Id.

  96. Party, Black’s Law Dictionary (12th ed. 2024) (defining “formal party” as “nominal party” which is a party joined in the lawsuit to avoid procedural defects but having no real interest in the outcome).

  97. Shields, 58 U.S. (17 How.) at 139.

  98. Id.

  99. Brandon R. Coyle, The Proper Standard of Review for Required Party Determinations Under Federal Rule of Civil Procedure 19, 84 Fordham L. Rev. 1117, 1122 (2015).

  100. Id.

  101. See, e.g., Howard P. Fink, Indispensable Parties and the Proposed Amendment to Federal Rule 19, 74 Yale L.J. 403, 407 (1965); Geoffrey C. Hazard, Jr., Indispensable Party: The Historical Origin of a Procedural Phantom, 61 Colum. L. Rev. 1254, 1271 (1961); John W. Reed, Compulsory Joinder of Parties in Civil Actions, 55 Mich. L. Rev. 327, 345 (1957).

  102. Fed. R. Civ. P. 19 advisory committee’s note to 1966 amendment.

  103. . Fed. R. Civ. P. 19(a)(1)(A)–(B).

  104. . Fed. R. Civ. P. 19 advisory committee’s note to 1966 amendment.

  105. Fed. R. Civ. P. 19(b)(1)–(4).

  106. Fed. R. Civ. P. 19 advisory committee’s note to 1966 amendment.

  107. Fed. R. Civ. P. 19(c).

  108. Id. at 19(a)(1)(A).

  109. Id. at 19(a)(1)(B)(ii).

  110. Id. at 19(a)(1)(B)(i).

  111. Id. at 19(a)(3).

  112. Id. at 19(b).

  113. Id.

  114. 4 Richard D. Freer, Moore’s Federal Practice - Civil § 19.06 (3d ed. 2025).

  115. Camp v. Gress, 250 U.S. 308, 316–17 (1919).

  116. Burger King Corp. v. Am. Nat’l Bank & Tr. Co., 119 F.R.D. 672, 675 (N.D. Ill. 1988).

  117. Bausch v. Philatelic Leasing, Ltd., 728 F. Supp. 1201, 1209 (D. Md. 1989); Nottingham v. Gen. Am. Commc’ns Corp., 811 F.2d 873, 880 (5th Cir. 1987); Heredia v. Intuitive Surgical, Inc., No. 5:15-cv-02662-EJD, 2016 WL 6947590, at *10 (N.D. Cal. Nov. 28, 2016).

  118. Janney Montgomery Scott, Inc. v. Shepard Niles, Inc., 11 F.3d 399, 402 (3d Cir. 1993) (holding that the parent company was not a necessary party in a breach of contract suit against its subsidiary).

  119. Merrill Lynch & Co. v. Allegheny Energy, Inc., 500 F.3d 171, 180 (2d Cir. 2007) (holding that a subsidiary was not indispensable because its absence was not prejudicial to the subsidiary, parent corporation, or any other parties).

  120. Carnero v. Bos. Sci. Corp., 433 F.3d 1, 2–3, 18–19 (1st Cir. 2006) (holding that a subsidiary was indispensable when an employee sued their employer’s parent corporation, because they were directly employed by the subsidiary); Polanco v. H.B. Fuller Co., 941 F. Supp. 1512, 1514–15, 1521, 1523 (D. Minn. 1996) (holding that a subsidiary was indispensable in a suit against a parent corporation and dismissing the case when joining the subsidiary would have destroyed diversity jurisdiction).

  121. Novacolor, Inc. v. Am. Film Techs., Inc., No. 91 C 6213, 1992 WL 170564, at *9– 10 (N.D. Ill. July 16, 1992); Nat’l Am. Corp. v. Fed. Republic of Nigeria, 420 F. Supp. 954, 957 (S.D.N.Y 1976).

  122. Merrill Lynch & Co., 500 F.3d at 180.

  123. Carnero, 443 F.3d at 2–3, 18; Polanco, 941 F. Supp. at 1514–15, 1521.

  124. See supra notes 125–38 and infra notes 159–61 and accompanying text.

  125. Carnero, 443 F.3d at 2–3, 18; Polanco, 941 F. Supp. at 1514–15, 1521.

  126. See infra notes 139–58 and accompanying text.

  127. Complaint for Patent Infringement at paras. 5–6, InnoBrilliance, LLC v. Samsung Elecs. Co., No. 6:21-cv-00227 (W.D. Tex. Mar. 9, 2021).

  128. Complaint for Patent Infringement at paras. 6–7, InnoBrilliance, LLC v. Koninklijke Philips N.V., No. 2:24-cv-00483 (E.D. Tex. July 3, 2024); Complaint for Patent Infringement at paras. 6–7, InnoBrilliance, LLC v. TCL Tech. Grp. Corp., No 2:24-cv-00491 (E.D. Tex. July 5, 2024). Patent infringement is generally defined as when someone unauthorized makes use of a patent invention. See, e.g., J. Jonas Anderson, Hiding Behind Nationality: The Temporary Presence Exception and Patent Infringement Avoidance, 15 Mich. Telecomms. & Tech. L. Rev. 1, 5 (2008).

  129. Joint Notice of Voluntary Dismissal with Prejudice Pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(i) at paras. 1–2, InnoBrilliance, LLC v. Samsung Elecs. Co., No. 6:21-cv-00227 (W.D. Tex. Sep. 7, 2021); Plaintiff’s Notice of Voluntary Dismissal Without Prejudice at 1, InnoBrilliance, LLC v. Koninklijke Philips N.V., No. 24-cv-00483 (E.D. Tex. July 7, 2024); Plaintiff’s Notice of Voluntary Dismissal with Prejudice at paras. 6–7, InnoBrilliance, LLC v. TCL Tech. Grp. Corp., No. 2:24-cv-00491 (E.D. Tex. Sep. 12, 2024).

  130. Complaint for Patent Infringement at para. 2, WSOU Invs., LLC v. ZTE Corp., No. 6:22-cv-00136 (W.D. Tex. Feb. 8, 2022).

  131. Joint Stipulation of Dismissal at 1, WSOU Invs., LLC v. ZTE Corp., No. 6:22-cv-00136 (W.D. Tex. Dec. 7, 2023).

  132. Complaint for Patent Infringement, Slyde Analytics LLC v. Zepp Health Corp., No. 23-cv-00172-RWS-RSP (E.D. Tex. Apr. 14, 2023).

  133. Order at 1, Slyde Analytics LLC v. Zepp Health Corp. at 1, No. 2:23-cv-00172-RWS-RSP (E.D. Tex. Sep. 9, 2024) (order denying first motion to dismiss as moot); Order at 4, Slyde Analytics LLC v. Zepp Health Corp., No. 2:23-cv-00172-RWS-RSP (E.D. Tex. Sep. 24, 2024) [hereinafter Sep. 24 Order].

  134. Sep. 24 Order, supra note 133, at 4–6 (alteration in original) (citing opposition to motion to dismiss).

  135. Id. at 4 & n.3 (quoting Bowman v. W. Rim Prop. Servs., Inc., 4:14-cv-672, 2016 WL 7799625, at *2 (E.D. Tex. Feb. 9, 2016)).

  136. Id. at 4–5.

  137. Complaint for Patent Infringement at paras. 2, 5–6, WSOU Invs., LLC v. NEC Corp., No. 6:20-cv-00927 (W.D. Tex. Oct. 7, 2020) [hereinafter NEC Corp. Complaint]; Complaint for Patent Infringement at paras. 2, 5–6, WSOU Invs., LLC v. Canon, Inc., No. 6:20-cv-00984 (W.D. Tex. Oct. 19, 2020) [hereinafter Canon, Inc. Complaint].

  138. NEC Corp. Complaint, supra note 137, at paras. 5–6; Canon, Inc. Complaint, supra note 137, at paras. 5–6.

  139. Original Complaint for Patent Infringement at paras. 2, 11–13, Liberty Pats., LLC v. Lenovo Grp. Ltd., No. 2:20-cv-00314-JRG (E.D. Tex. Sep. 28, 2020).

  140. Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction & Insufficient Service of Process at 1, Liberty Patents, LLC. v. Lenovo Grp., Ltd., No. 20-cv-00314-JRG-RSP (E.D. Tex. Jan. 5, 2021) (first motion to dismiss).

  141. First Amended Complaint for Patent Infringement at paras. 2–3, 5–6, 8, 10, 12, 14, 22, 24, 34, Liberty Pats. LLC v. Lenovo Grp. Ltd., No. 2:20-cv-00314-JRG-RSP (E.D. Tex. Jan. 18, 2021).

  142. Defendants’ Motion to Dismiss for Lack of Personal Jurisdiction & Insufficient Service of Process at 1, Liberty Pats., LLC v. Lenovo Grp. Ltd., No. 2:20-cv-00314-JRG-RSP (E.D. Tex. Feb. 18, 2021).

  143. Joint Motion to Dismiss Lenovo at 1, Liberty Pats., LLC v. Lenovo Grp. Ltd., No. 2:20-cv-00314-JRG-RSP (E.D. Tex. July 6, 2021); Order at 1, Liberty Pats., LLC v. Lenovo Grp. Ltd., No. 2:20-cv-00314-JRG-RSP (E.D. Tex. Aug. 17, 2021).

  144. First Amended Complaint for Patent Infringement at paras. 18, 23–25, 33, SportsCastr Inc. v. Sportradar Grp. AG, No. 2:23-cv-00472-JRG (E.D. Tex. Mar. 8, 2024).

  145. Complaint for Declaratory Judgment at 1–4, Sportradar US LLC v. Sportscastr, Inc., No. 1-24-cv-00170-UNA (D. Del. Feb. 8, 2024).

  146. See First Amended Complaint for Patent Infringement, supra note 144, at paras. 27–28.

  147. Id. at paras. 32–35.

  148. Memorandum Opinion & Order at 5–6, 20, SportsCastr Inc. v. Sportradar Grp. AG, No. 2:23-cv-00472-JRG (E.D. Tex. Sep. 17, 2024).

  149. Opinion & Order at 1–2, 9–10, 12–14, Sportradar US LLC v. Sportscastr, Inc., No. 1-24-cv-00170-JCB (D. Del. Mar. 26, 2025).

  150. Markman Hearing at 1, SportsCastr Inc. v. Sportradar, Inc., No. 2-23-cv-00472-JRG (E.D. Tex. May 16, 2025) (notice of filing of official transcript).

  151. Complaint at paras. 1–2, 13–14, Hanshow Tech. Co. v. SES-Imagotag SA, No. 2:23-cv-00617 (E.D. Tex. Dec. 19, 2023); Defendants’ Unopposed Motion to Revise Case Caption to Reflect Defendants’ Corporate Name Change at paras. 1–4, Hanshow Tech. Co. v. SES-Imagotag SA, 2:23-cv-00617-RWS-RSP (E.D. Tex. Apr. 29, 2024).

  152. Defendants’ Motion to Dismiss Plaintiffs’ Complaint Pursuant to Fed. R. Civ. P. 12(B)(2) and Brief in Support at 1, 3, Hanshow Tech. Co. v. SES-Imagotag SA, No 2:23-cv-00617-RWS-RSP (E.D. Tex. Apr. 25, 2024).

  153. Id. at 1.

  154. Plaintiff’s Opposition to SES-Imagotag GmbH & Captana GmbH’s Motion to Dismiss Complaint Pursuant to Fed. R. Civ. P. 12(B)(2) at 2, 9, 16, Hanshow Tech. Co. v. SES-Imagotag SA, No. 2:23-cv-00617-RWS-RSP (E.D. Tex. Aug. 6, 2024).

  155. Order at 4–6, Hanshow Tech. Co. v. SES-Imagotag SA, No. 2:23-cv-00617-RWS-RSP (E.D. Tex. Mar. 31, 2025).

  156. Id. at 2.

  157. First Amended Complaint for Patent Infringement at paras. 12–17, 19, Flexiworld Techs., Inc. v. Sony Corp., No. 23-cv-00616-JRG (E.D. Tex. June 6, 2024).

  158. Answer of Sony Corp. to Flexiworld’s First Amended Complaint at paras. 105–67, Flexiworld Techs., Inc. v. Sony Corp., No. 23-cv-00616-JRG (E.D. Tex. July 19, 2024).

  159. Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 759, 762–64 (2011).

  160. Original Complaint for Patent Infringement supra note 139, at para. 122

  161. TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 261–62 (2017).

  162. See J. Jonas Anderson, Court Capture, 59 B.C. L. Rev. 1543, 1590 (2018) (“TC Heartland will likely make it more difficult for the Eastern District of Texas to compete for patent cases.”); Debra Cassens Weiss, Patent Lawsuits Drop 21 Percent in the Eastern District of Texas as SCOTUS Ruling Brings New Era, ABA J. (July 19, 2017, at 07:45 CT) https://www.abajournal.com/news/article/patent_lawsuits_drop_21_percent_in_the_eastern_district_of_texas_as_scotus [https://perma.cc/T562-YQEM].

  163. See supra Section III.B.1 for examples of just such a practice.

  164. See World-Wide Volkswagen Corp. v. Woodson, 444 U.S. 286, 291–92 (1980) (citing to “the burden on the defendant” as a consideration in establishing venue).

  165. Id.

  166. See Fed. R. Civ. P. 45 (providing protection against undue burdens of discovery for nonparty subpoenas).

  167. See, e.g., Pinnacle Packaging Co. v. Constantia Flexibles GmbH, No. 12-CV-537-JED-TLW, 2015 WL 9216845, at *3, *7 (N.D. Okla. Dec. 17, 2015) (stepping through multi-factor test regarding the appropriate location of depositions for foreign witnesses).

  168. See Pennoyer v. Neff, 95 U.S. 714 (1878) (imposing restrictions on personal jurisdiction); see also J. Jonas Anderson, Patent Dialogue, 92 N.C. L. Rev. 1049, 1058–59 (2014) (using dialogic theory to suggest that all branches of government interact constantly to shape the laws); Jonas Anderson, Congress as a Catalyst of Patent Reform at the Federal Circuit, 63 Am. U. L. Rev. 961, 969–74 (2014) (illustrating Congress’s role in patent policy); 28 U.S.C. § 1400(b) (civil patent infringement action may only “be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business”); TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 581 U.S. 258, 261 (2017) (explaining the patent venue statute).

  169. Temple v. Synthes Corp., 498 U.S. 5, 7 (1990).

  170. Haas v. Jefferson Nat’l Bank, 442 F.2d 394, 398–400 (5th Cir. 1971).

  171. Id. at 395.

  172. Id. at 398, 400.

  173. Freeman v. Nw. Acceptance Corp., 754 F.2d 553, 559 (5th Cir. 1985).

  174. Id. at 559. The court cited cases in several circuits with similar analyses about whether a parent and/or subsidiary were indispensable parties such as, Glenny v. Am. Metal Climax, Inc., 494 F.2d 651, 654 (10th Cir. 1974); Amarillo Oil Co. v. Mapco, Inc., 99 F.R.D. 602, 607 (N.D. Tex. 1983); Soanes v. Balt. & Ohio R.R. Co., 89 F.R.D. 430, 432 (E.D.N.Y. 1981); Barnett v. Borg-Warner Acceptance Corp., 488 F. Supp. 786, 789–90; E.H. Crump & Co. v. Gatewood, 497 F. Supp. 549, 552–53 (E.D. Ark. 1980); Japan Petroleum Co. v. Ashland Oil Co., 456 F. Supp. 831, 836, 847 (D. Del. 1978); Acton Co. v. Bachman Foods, Inc., 668 F.2d 76, 78, 81 (1st Cir. 1982); Armco Steel Corp. v. United States, 490 F.2d 688, 690–91 (8th Cir. 1974); Hanna Mining Co. v. Minn. Power & Light Co., 573 F. Supp. 1395, 1399 (D. Minn. 1983); Heinrich v. Goodyear Tire & Rubber Co., 532 F. Supp. 1348, 1359 (D. Md. 1982).

  175. Fed. R. Civ. P. 19(b).

  176. See, e.g., Thibodeaux v. Red Frog Events, LLC, No. 17-00695-BAJ-EWD, 2018 WL 2324346, at *24 n.2 (M.D. La. May 22, 2018) (citing Haas, 442 F.2d at 598); SAP Am., Inc. v. InvestPic, LLC, No. 3:16-CV-02689-K, 2021 WL 1102085, at *8 (N.D. Tex. Mar. 23, 2021) (citing Freeman, 754 F.2d at 559); Tigi Linea Corp. v. Prof’l Prods. Grp. LLC, No. 4:19-cv-00840-RWS-KPJ, 2020 WL 7346741, at *10 (E.D. Tex. Nov. 16, 2020) (citing Freeman, 754 F.2d at 559)).

  177. 28 U.S.C. § 1295(a)(1). For more on the creation of the Federal Circuit, see J. Jonas Anderson, Judicial Lobbying, 91 Wash. L. Rev. 401, 432 (2016).

  178. The Federal Circuit has grappled with Rule 19 in the bankruptcy context as well. See Institut Pasteur & Genetic Sys. Corp. v. Cambridge Biotech Corp. (In re Cambridge Biotech Corp.), 186 F.3d 1356, 1372 (Fed. Cir. 1999). Note here that the Federal Circuit gave deference to the bankruptcy’s court balance of the equities under Rule 19(b) and ultimately upheld the determination that litigation should proceed in the absence of the signatory entity. Id. at 1373–74.

  179. Lone Star Silicon Innovations v. Nanya Tech. Corp., 925 F.3d 1225, 1238 (Fed. Cir. 2019).

  180. Coyle, supra note 99, at 1139–40.

  181. See, e.g., Univ. of Utah v. Max-Planck-Gesellschaft Zur Forderung Der Wissenschaften E.V., 734 F.3d 1315, 1320 (Fed. Cir. 2013).

  182. See, e.g., United States v. Bowen, 172 F.3d 682, 688 (9th Cir. 1999).

  183. Dainippon Screen Mfg. Co. v. CFMT, Inc., 142 F.3d 1266, 1268–71 (Fed. Cir. 1998).

  184. Id. at 1272 (explaining that the parent and subsidiary “share the common goal of assuring that the '761 patent not be held invalid or be infringed”).

  185. Id. (alteration in original) (quoting Takeda v. Nw. Nat’l Life Ins. Co., 765 F.2d 815, 820 n.5 (9th Cir. 1985)). Importantly, though, in Dainippon, the plaintiff was seeking a declaratory judgment on the invalidity and noninfringement of the patent. Thus, the Federal Circuit stated, “it is relevant that a declaratory judgment suit is not one in which ‘the plaintiff seeks relief that will require an affirmative act by the absentee,’ therefore making the case ‘essentially hollow’ if it were to proceed in [the subsidiary]’s absence.” (quoting Moore’s Federal Practice § 19.05[4]). Id. at 1273.

  186. See, e.g., Sep. 24 Order, supra note 133, at 4.

  187. Id.; see supra Section III.B.1.

  188. Sep. 24 Order, supra note 133, at 4.

  189. Id.

  190. See Truesight Commc’ns LLC v. TCL Tech. Grp. Corp., No. 2:24-CV-00032-JRG, 2025 WL 2380452, at *5–6 (E.D. Tex. Aug. 15, 2025).

  191. See, e.g., Gensetix Inc. v. Bd. of Regents of Univ. Tex. Sys., 966 F.3d 1316, 1327 (Fed. Cir. 2020) (finding abuse of discretion not to proceed in patentee’s absence where exclusive licensee and patentee had “identical” interests and a contractual agreement between them prohibited multiple suits against any defendant).

  192. ICON Grp., Inc. v. Mahogany Run Dev. Corp., 829 F.2d 473, 478 (3d Cir. 1987).

  193. See, e.g., Freeman v. Nw. Acceptance Corp., 754 F.2d 553, 559 (5th Cir. 1985).

  194. Cent. States, Se. & Sw. Areas Pension Fund v. Reimer Express World Corp., 230 F.3d 934, 944 (7th Cir. 2000).

  195. Dewberry Grp., Inc. v. Dewberry Eng’rs Inc., 145 S. Ct. 681, 687–88 (2025).

  196. Cannon Mfg. v. Cudahy Packing Co., 267 U.S. 333, 336–37 (1925).

  197. Cent. States, Se & Sw. Areas Pension Fund, 230 F.3d at 944 (“[W]here corporate formalities are substantially observed and the parent does not dominate the subsidiary, a parent and a subsidiary are two separate entities and the acts of one cannot be attributed to the other.”).

  198. Dewberry Grp., Inc., 145 S. Ct. at 688.

  199. See, e.g., Amgen, Inc. v. F. Hoffman-La Roche, Ltd., 581 F. Supp. 2d 160, 210 (D. Mass. 2008) (“While eBay has allowed courts to decline requests for injunctive relief where the plaintiff is a ‘patent troll,’ eBay has changed little where a prevailing plaintiff seeks an injunction to keep an infringing competitor out of the market.”).

  200. See Federal Judge Seeks Patent Cases, supra note 25, at 455–56; see, e.g., Nicolas Douglas, Non-Practicing Entities & Patent Reform, 38 Pace L. Rev. 608, 618 (2018).

  201. Federal Judge Seeks Patent Cases, supra note 25, at 458, 465; see, e.g., Why Do Judges Compete for Cases?, supra note 25, at 2001–02.

  202. See supra Section III.A.1.

  203. See, e.g., Freeman v. Nw. Acceptance Corp., 754 F.2d 553, 559 (5th Cir. 1985).

  204. Laker Airways, Inc. v. Brit. Airways, PLC, 182 F.3d 843, 847–48 (11th Cir. 1999).

  205. Two Shields v. Wilkinson, 790 F.3d 791, 797 (8th Cir. 2015).

  206. B. Fernández & HNOS, Inc. v. Kellogg USA, Inc., 516 F.3d 18, 27 (1st Cir. 2008).

  207. Id.

  208. Id. at 26–27.

  209. Pyramid Sec. Ltd. v. IB Resol., Inc., 924 F.2d 1114, 1121 (D.C. Cir. 1991).

  210. Extra Equipamentos E Exportação Ltda. v. Case Corp., 361 F.3d 359, 364 (7th Cir. 2004) (“[W]e have great difficulty seeing how a 100 percent subsidiary could ever be an indispensable party.”). It is worth noting that in Extra Equipamentos E Exportação Ltda., the court made the distinction that the domestic parent was accused of alleged fraud, while the foreign subsidiary was an intended beneficiary of that fraud. Id. at 363.

  211. E.g., id. at 364; see also Pyramid, 924 F.2d at 1122 (noting that there were other forums, but the statute of limitations had run in the other jurisdictions where Pyramid could have reached Washington International).

  212. Provident Tradesmens Bank & Tr. Co. v. Patterson, 390 U.S. 102, 118–19 (1968).

  213. See supra text accompanying note 136. To the D.C. Circuit’s credit, they did not suggest that the primary actor test was irrelevant, only that the court must step through Rule 19(b)'s checklist. Pyramid, 924 F.2d at 1121.

  214. Fed. R. Civ. P. 19(b)(4). Dainippon acknowledges the availability of an alternative forum as a factor favoring dismissal. Dainippon Screen Mfg. Co. v. CFMP, Inc., 142 F.3d 1266, 1273 (Fed. Cir. 1998).

  215. Hanna v. Plumer, 380 U.S. 460, 467–68 (1965) (identifying “discouragement of forum-shopping and avoidance of inequitable administration of the laws” as twin aims of diversity jurisdiction rules); see also Rumsfeld v. Padilla, 542 U.S. 426, 442–43 (2004) (interpreting 28 U.S.C. § 2242).