Patent Venue Statute Does Not Apply to Foreign Corporations Sued for Infringement

Federal CircuitIn re HTC Corp., No. 2018-130, 2018 (Fed. Cir. May 9, 2018) (Before Prost, C.J., Wallach, and Taranto, J.) (Opinion for the court, Prost, C.J.)

HTC Corp., a Taiwanese corporation, and its subsidiary HTC America, Inc., based out of Washington, were sued for patent infringement in the District of Delaware. HTC Corp. and HTC America moved to dismiss for improper venue. The district court found that venue was improper with respect to HTC America, but was proper for HTC Corp. HTC Corp. then petitioned the Federal Circuit for a writ of mandamus directing the district court to vacate its order denying HTC Corp.’s motion to dismiss. The Federal Circuit denied HTC Corp.’s petition for a writ of mandamus seeking dismissal for improper venue.

The Federal Circuit noted that a writ of mandamus is a “drastic remedy” available only when a party has no other adequate means to obtain relief; it is not meant to serve as a substitute for the appeals process. Defendants who want to challenge the denial of an improper venue motion have an adequate remedy on appeal, which makes mandamus review inappropriate. Although HTC Corp. might be forced to litigate the case to final judgment before it could contest venue on appeal, these circumstances were not so drastic or severe as to warrant mandamus review.

Additionally, HTC Corp. asserted that the district court erred by not applying the patent venue statute, 28 U.S.C. § 1400(b), when determining venue. In response, the Federal Circuit restated the “long-established rule that suits against aliens are wholly outside the operation of all federal venue laws, general and special.” Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706, 714 (1972). Foreign defendants are subject to suit in any judicial district where they are subject to personal jurisdiction, and the patent venue statute could not overcome this. If the patent venue statute applied to foreign corporations, it could create a “venue gap” for certain foreign defendants wherein the federal courts would have jurisdiction over the case, but no proper venue to exercise it.

Ultimately, HTC Corp. failed to satisfy the high standard required to issue a writ of mandamus, and the Federal Circuit denied its petition.

Take Away

The patent venue statute does not apply to foreign corporations sued for patent infringement. These foreign defendants may be sued in any judicial district where they are subject to personal jurisdiction.



The Author

Robert Schaffer

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Robert Schaffer

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

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There are currently 1 Comment comments.

  1. Jeff Lindsay May 20, 2018 9:23 pm

    That sounds positive for domestic patent holders. But then there is the reality: suing a Chinese company may take two years just to serve process. See