Patent Venue February 2017 By: Patrice Jean

Patent Venue Where can you bring suit for patent infringement? 1897-1990: District in which the defendant [i] resides, or [ii] has committed infringement and has a regular and established place of business Since 1990: Any district in which infringement occurs and the infringer can be served Can bring suit where defendant does not have a place of business (office/store front/etc.) Forum-shopping Patent Assertion Entities/NPEs

Venue Statutes Patent venue statute, 28 U.S.C. § 1400(b) patent infringement actions “may be brought in the judicial district where the defendant resides . . .”  General venue statute, 28 U.S.C. § 1391(c) corporate entity can “reside” in multiple judicial districts

Does General Venue Control Patent Venue? 28 U.S.C. § 1391 General Venue Statute § 1391(a)(1) (2012) : Except as otherwise provided by law . . . (1) this section shall govern the venue of all civil actions brought in district courts of the United States . . . . § 1391(c) For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced. 28 U.S.C. § 1400(b) Patent Venue statute § 1400(b): Any civil action for patent infringement may 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. Is patent venue “otherwise provided by law?” and separate from general venue?

Conflict in Judicial Interpretation: Supreme Court Limits Venue U.S. Supreme Court (1957): § 1400(b) is not supplemented by § 1391(c) as applied to corporate entities, the phrase “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only.” Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957)

Conflict in Judicial Interpretation: Federal Circuit Expands Venue Federal Circuit, Court of Appeals (1990): “the general venue statute, § 1391(c), expressly reads itself into the specific statute” and “supplement[s] § 1400(b).” VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) Since 1990: forum shopping/NPEs

Forum Shopping 2015: 43% of all patent infringement cases were brought in a single district (E.D. Tex.) districts chosen for remoteness and local practices that favor patent plaintiffs

Patent Venue Heads Back to The Supreme Court TC Heartland LLC v. Kraft Foods Group Brands LLC Is 28 U.S.C. § 1400(b) the sole and exclusive provision governing venue in patent infringement actions, or is it supplemented by 28 U.S.C. § 1391(c)? Kraft Foods sued Heartland in Delaware Dist. Court TC Heartland- Incorporated in Indiana No regular/established place of business in Delaware Oral arguments this Spring