Posts Tagged: "venue"

Google Wins Mandamus at Federal Circuit in EDTX Venue Dispute

The Court believed the time was now appropriate to address this issue through a writ of mandamus noting that several similar cases had now been heard in various district courts with conflicting results. The Court identified two issues that should be addressed: (1) whether a server rack, a shelf, or analogous space can be a “place of business,” and (2) whether a “regular and established place of business” requires the regular presence of an employee or agent of the defendant conducting business. Finding that a defendant must have regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged “place of business,” the Court concluded that the Eastern District of Texas was not a proper venue for this case because Google does not have an employee or agent regularly conducting its business within the District.

CAFC Finds Columbia Patent Claims Invalid, Reverses Infringement Verdict

On November 13, the Court of Appeals for the Federal Circuit (CAFC) heard an appeal from the U.S. District Court for the Southern District of California in the case of Columbia Sportswear North America, Inc. v. Seirus Innovative Accessories, Inc. (Seirus). Columbia appealed the judgment from a jury trial holding claims 2 and 23 of U.S. Patent 8,453,270 (the ‘270 patent) invalid as anticipated and obvious. Seirus cross-appealed from a grant of summary judgment by the U.S. District Court for the District of Oregon, holding tSeirushat Seirus infringed U.S. Design Patent No. D657,093 (the ‘093 patent). The CAFC affirmed that claims 2 and 23 of the ‘270 patent were invalid, reversed the summary judgment decision against Seirus for infringement of the ‘093 patent and remanded for further proceedings on the design patent.

How Foreign Patent Infringers Are Subject to Jurisdiction in the United States

The Federal Circuit’s decision in In re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018), considered whether the TC Heartland decision extended to foreign defendants to afford them the protections of the special patent venue statute, 28 U.S.C. § 1400(b). By finding that no such protections existed, the Federal Circuit reaffirmed the longstanding rule that suits against foreign (alien) defendants “are wholly outside the operation of all the federal venue laws, general and special.” HTC, 889 F.3d at 1354 (citing Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706, 714 (1972)). While foreign defendants can still try to persuade a district court judge to transfer a case to a new venue on the basis of the parties’ convenience, the venue laws otherwise offer no protection for foreign defendants.

CAFC Reiterates Sovereign Immunity Is a Shield, Not a Sword

On September 5,  the U.S. Court of Appeals for the Federal Circuit (CAFC) held that state sovereignty principles asserted by the Board of Regents of the University of Texas System (UT) do not give UT the right to bring suit in an improper venue. The appeal clarifies once again that sovereign immunity may be used only as a shield, not a sword. UT argued that Boston Scientific Corporation’s request that the case be transferred to the District of Delaware should be reversed because venue was proper in the Western District of Texas since a state has the right to sue a nonresident in a forum of its choosing where personal jurisdiction is satisfied. It argued that the federal patent venue statute cannot override this sovereign right. UT also argued that the District of Delaware lacks jurisdiction because UT never consented to suit in Delaware, nor did it waive its sovereignty in Delaware or abrogate its sovereignty by statute. The CAFC disagreed with the above, holding that state sovereignty does not allow states to bring patent infringement suits in an improper venue, as is the case where BSC does not have a place of business in Texas. It also held in Regents of University of Cal. V. Eli Lilly & Co. that sovereign immunity does not apply where the state acts only as the plaintiff, and therefore the right of UT to choose the forum does not apply because the Eleventh Amendment only applies to suits against a state, not by a state.

Cray Wins Summary Judgment Against Raytheon Following Successful Venue Transfer Post-TC Heartland

On April 15, U.S. District Judge William Conley of the Western District of Wisconsin issued an opinion and order in Raytheon Company v. Cray, Inc. granting summary judgment of non-infringement to defendant Cray on two supercomputer patents that had been asserted by Raytheon. The order is the likely conclusion to a case that became an important part of the debate on proper venue in patent cases after the U.S. Supreme Court’s decision in TC Heartland, and aspects of how this case played out after venue was transferred point to the importance of that particular decision on U.S. patent litigation.

TC Heartland Two Years On: Waiting for Federal Circuit Panels to Get on the Same Page

In May of 2017, the United States Supreme Court delivered a unanimous decision in TC Heartland LLC v. Kraft Food Group Brands LLC that reversed the Federal Circuit and said that 28 U.S.C. 1400(b) remains the only applicable patent venue statute, that 28 U.S.C. 1391(c) did not modify or amend 1400(b) or the Court’s 1957 ruling in Fourco Glass Co. v. Transmirra Products Corp., and that the term “residence” in 28 U.S.C. 1400(b) means only the state in which a company is incorporated. Since TC Heartland, courts and plaintiffs have struggled to understand the real world application of this decision; most recently, the Federal Circuit in In re Google allowed a case to remain in the Eastern District of Texas because Google had servers there. Thus, while the decision has undoubtedly resulted in a shift away from the heyday of the Eastern District of Texas, the precise parameters of a “physical presence” sufficient to satisfy venue remain murky. To examine the effect TC Heartland has had so far, I recently sat down with Mike Oropallo of Barclay Damon, who has been out there litigating patent cases around the country. Among other observations, Oropallo says that—as usual—it all comes down to the Federal Circuit. Read on for more.

Mandamus Relief Denied: Federal Circuit Avoids Clarifying TC Heartland in In re Google LLC

The Federal Circuit recently elected not to decide en banc “whether servers are a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). In re: Google LLC, No. 2018-152 (Fed. Cir. Feb. 5, 2019) (Before Prost, Chief Judge, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll, Circuit Judges) (Dissent by Reyna, Circuit Judge, joined by Newman and Lourie, Circuit Judges). SEVEN Networks, LLC’s (SEVEN) patent infringement suit against Google arose in the Eastern District of Texas. SEVEN alleged Google’s servers, stored in a third-party ISP’s facility, where the allegedly infringing activities occurred, were a regular and established place of business, such that venue is proper under 35 U.S.C. § 1400(b). The district court denied Google’s motion to dismiss for improper venue. As a result, Google petitioned the Federal Circuit for a writ of mandamus directing the district court to dismiss or transfer the case for improper venue. On appeal, the panel majority found mandamus relief inappropriate because “it is not known if the district court’s ruling involves the kind of broad and fundamental legal questions relevant to § 1400(b),” and “it would be appropriate to allow the issue to percolate in the district courts so as to more clearly define the importance, scope, and nature of the issue for us to review.”

Sending Infringement Notice Letters May Create Personal Jurisdiction

The United States Court of Appeals for the Federal Circuit recently reversed a district court’s grant of motion to dismiss a declaratory judge action against Plano Encryption Technologies LLC (PET). The district court, which is situated in the Northern District of Texas, held that PET’s contacts with the Northern district did not subject it to personal jurisdiction and venue was thus improper. On appeal, the Federal Circuit reversed and remanded for further proceedings… While personal jurisdiction and venue are fact-dependent inquiries, sending patent enforcement letters to a recipient located and doing business in a forum can be enough to establish personal jurisdiction over the sending party in the forum such that venue is proper in the forum. Such a finding may be particularly true when the sending party’s “sole business is to enforce its intellectual property.”

Federal Circuit Continues to Develop Patent Venue Law with Recent Trio of Decisions

The Federal Circuit’s recent venue decisions represent important developments in the interpretation of the patent venue statute. The application of these decisions will have immediate effects on defendants in patent infringement cases, and particularly those who are often subject to suit in popular districts like the Eastern District of Texas and the District of Delaware. While many open questions remain—perhaps most notably the treatment of domestic unincorporated associations—the Federal Circuit continues to delineate the scope of the patent venue statute.

EDTX says leased retail space can be a regular and established place of business for patent venue

The recent Tinnus opinion further defines the meaning of “regular and established place of business.” See Tinnus Enters. v. Telebrands Corp., Case No. 6:17-CV-00170-RWS (E.D. Tex. May 1, 2018). The opinion provides additional guidance to practitioners defining “residence” under TC Heartland, Micron, and Cray: teleworking employees are not enough, but leased retail space in brick-and-mortar stores might be.

TC Heartland Update: Federal Circuit decides ZTE and Bigcommerce

Of the many lingering issues left in TC Heartland’s wake for domestic corporations, a Federal Circuit panel resolved several of them recently. In In re ZTE (USA), No. 2018-113, the court addressed two of the most common issues dogging appeals over the application of § 1400(b): whose law governs burden, and where does that burden lie. In In re Bigcommerce, No. 2018-120, the court addressed the territorial bounds mapped by the phrase “judicial district” in § 1400(b). Judge Linn authored both. 

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

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.

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

The Federal Circuit denied HTC Corp.’s petition for a writ of mandamus seeking dismissal for improper venue… 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.

2017 Saw Fewest Patent Lawsuits Filed Since 2011

Q4 2017 saw a total of 981 patent infringement cases filed in district courts, the second-lowest total for any quarter in 2017 and the third-lowest total for any quarter dating to the third quarter of 2011. The 4,057 patent suits filed in district court through 2017 was the lowest total for an entire year since 2011… A week-by-week graph of patent filings shows that, while Eastern Texas saw a much greater share of patent filings than Delaware in the months leading up to the TC Heartland decision, Delaware filings have topped Eastern Texas filings in almost every week since the SCOTUS decision.

The Year in Patents: The Top 10 Patent Stories from 2017

It is that time once again when we look back on the previous year in preparation to close the final chapter of 2017 in order move fresh into the year ahead. 2017 was a busy year in the patent world, although change was not as cataclysmic as it had been in past years, such as 2012 when the PTAB and post grant challenges began, in 2013 when AIA first to file rules went into effect, or in 2014 when the Supreme Court decided Alice v. CLS Bank. It was, nevertheless, still an interesting year… To come up with the list below I’ve reviewed all of our patent articles, and have come up with these top 10 patent stories for 2017. They appear in chronological order as they happened throughout the year.