On August 1st, Fort Myers, FL-based over-the-top (OTT) Internet television provider WhereverTV filed a suit alleging patent infringement against Philadephia, PA-based telecommunications conglomerate Comcast Corporation. Despite the fact that Comcast is headquartered in Pennsylvania and the inventor listed on WhereverTV’s patent resides in Pennsylvania, the complaint was filed in the Middle District of Florida, a district which has been growing more attractive for parties filing patent infringement suits.
The patent-in-suit in this case is U.S. Patent No. 8656431, titled Global Interactive Program Guide Application and Device. It claims a content manager device including a server resident on a network containing descriptive program data about video content available from multiple cable system operators (MSOs) and non-MSOs, a device that maintains a connection with the network through a communications link, and an interactive program guide (IPG) application installed on the device that provides a user-configurable IPG listing content available from the MSOs and non-MSOs. The resulting invention provides an IPG application and device for accessing and viewing digital entertainment services such as live television or pre-recorded programming from one or more content sources anywhere in the world via an Internet-enabled device.
In the complaint, WhereverTV accuses Comcast and a trio of subsidiary corporations of infringing the ‘431 patent through its sale and distribution of Xfinity branded products either alone or in combination with the IPG application. Specifically, the Xfinity X1 Platform provides an IPG that can be controlled via multiple devices including televisions, computers or smartphones and combines search results from multiple content services like live television, on-demand programming, DVR, Netflix, YouTube and others. As WhereverTV alleges in the complaint, these features constitute a content manager device providing access to video content from an MSO and a non-MSO and thus infringe upon claim 1 of the ‘431 patent.
WhereverTV’s complaint argues that the Middle District of Florida has personal jurisdiction over all the defendants, including the Pennsylvania-based Comcast, in large part because defendants do business at an Xfinity retail store located in Fort Myers, FL. Although Middle Florida doesn’t have local rules specific to patent cases such as exist in other districts, there are a few reasons why this particular district would be attractive to patent infringement plaintiffs, according to Stephen Leahu, an attorney at Brinks Gilson & Lione. Citing to the 2018 Patent Litigation Study released this May by PricewaterhouseCoopers, Leahu noted that Middle Florida was ranked as the 5th-most popular venue for patent litigation, a slight uptick from the district’s 2017 ranking as the 6th-most popular venue. Middle Florida is also ranked 3rd for overall plaintiff success rate at 49 percent and third for having a 1.9-year median time-to-trial. “The district is highly ranked in some very important categories for plaintiffs who want to get a trial resolution as soon as possible as well as a high success rate,” Leahu said. He added that Middle Florida judges are able to achieve a relatively quick time-to-trial despite having a caseload of about 600 cases per judge, about twice the average caseload for federal judges.
On September 18th, the defendants in this case filed a motion to dismiss Comcast for lack of personal jurisdiction and improper venue, along with a motion to dismiss WhereverTV’s suit for failure to state a claim. Comcast’s claim of improper venue relies on the U.S. Supreme Court standard set out in 2017’s TC Heartland v. Kraft Foods Group Brands. Comcast argued that it is not incorporated in Florida nor does it have a regular and established place of business within the state, and thus doesn’t reside in the state for the purposes of the patent venue statute. As Leahu points out, this motion is specifically limited to the parent Comcast Corporation entity and not the other three defendants in the case. “The other three defendants are all registered in the State of Florida to transact business in Florida,” Leahu said, noting that Comcast filed an application in 2001 to withdraw from transacting business in Florida. “If a company files the appropriate paperwork to do business in the State of Florida and claims the benefit of doing business in the state, that’s one of the factors going towards the argument that they can be hauled into court in Florida in most cases.”
Leahu noted that, under patent venue law, a defendant must have “a regular and established place of business” in the judicial district if the defendant is not incorporated in the State. \ While Comcast may not maintain its principal place of business in Florida, venue is not necessarily improper in the Middle District of Florida. Leahu also said that the Federal Circuit recently noted that the ‘principal place of business’ requirement, which relates to the ‘resides’ prong the patent venue statute, is to be distinguished from the ‘regular and established place of business’ prong of the statute—referencing In re BigCommerce, which was decided in May.
While the motion might be successful in getting Comcast out of the suit, it’s possible that WhereverTV could refile suit against Comcast in Pennsylvania. Leahu also noted that most of the recent motion filed by the defendants focused on the motion to dismiss for failure to state a claim with only a few paragraphs dedicated to the improper venue motion, indicating that the legal team may not see this as a very strong argument. “Typically, you’re going to want to start off your motion with the stronger arguments,” Leahu said. “The fact that they threw it in at the very end and gave it one paragraph of arguments probably indicates that it’s not a very strong argument for them.”