In a Multi-District State, venue proper where defendant maintains a principal place of business

In a Multi-District State, venue proper where defendant maintains a principal place of businessIn re BigCommerce, Inc., Nos. 2018-120, 2018-122, 2018 (Fed. Cir. May 15, 2018) (Before Reyna, Linn, and Hughes, J.) (Opinion for the court, Linn, J.)

Diem LLC and Express Mobile each brought patent infringement suits against BigCommerce in the Eastern District of Texas. BigCommerce moved to dismiss Diem’s case and to transfer Express Mobile’s case for lack of venue. The district court found that venue was proper in both cases. BigCommerce petitioned the Federal Circuit for a writ of mandamus, which the Court granted.

Fourco and TC Heartland settled that, for venue purposes, a domestic corporation resides only in its state of incorporation. It remained unsettled whether the corporate defendant resides in every juridical district, when its state of incorporation has multiple districts.

The Court found that a corporation resides only in one judicial district, not all dsitricts within the state where it is incorporated. First, the plain reading of “the judicial district” indicated that Congress had in mind one particular judicial district where the defendant had committed acts of infringement and had a regular and established place of business. Additionally, other venue rules promulgated near the same time as § 1400(b) included a clear statement that venue could lie in multiple districts when Congress intended that result. Although Fourco established that incorporation within the state is necessary for venue purposes and sufficient for venue in single-district cases, it did not imply that venue was proper in every district within the state.

The Court further held that venue is typically proper in the district where the principal place of business is located – usually the corporation’s headquarters. If the headquarters was merely a meeting place and not where business was directed and controlled, venue is proper in the district where the registered office is located. Here, BigCommerce was incorporated in Texas, and its registered office was in the Western District of Texas. Thus, the Eastern District of Texas was not the proper venue for the suits against BigCommerce.

Take Away

In patent infringement suits brought against a corporate defendant in a state with multiple judicial districts, venue is only proper in the single district where the defendant maintains a principal place of business. If the principal place of business is not in the state of incorporation, venue is proper in the single judicial district where the office registered in its corporate filings is located.



The Author

Joseph Robinson

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.

Joseph Robinson

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.

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There are currently 1 Comment comments.

  1. Paul Morgan May 27, 2018 10:40 am

    For a corporation registered in the state, how difficult is it to change its registered office to a different district in that state?