August 15, 2018

August 15, 2018

Subscribe to Latest Legal News and Analysis

August 14, 2018

Subscribe to Latest Legal News and Analysis

August 13, 2018

Subscribe to Latest Legal News and Analysis

Federal Circuit clarifies that patent venue is proper only in a single judicial district within a multi-district state

In our continuing coverage of the post-TC Heartland landscape, the Federal Circuit recently clarified that venue is proper in only one district per state in In re BigCommerce, Inc., 2018-122 (Fed. Cir. May 15, 2018) (slip op.).  Last year, the Supreme Court held in TC Heartland that a company resides where it is incorporated.  Among the many unresolved questions flowing from that decision involved the treatment of patent venue in states with multiple districts.  Specifically, no appellate court had determined whether a domestic corporation incorporated in a multi-district state “resides” only in the single judicial district where it maintains a principal place of business or registered office, or whether venue could be proper in all judicial districts within that state.

The Federal Circuit answered this question and determined that, for purposes of 28 U.S.C. § 1400(b), a company “resides” in only one district in a state with multiple districts.

In this case, Plaintiffs Diem LLC and Express Mobile, Inc. each filed separate patent infringement suits against BigCommerce in the Eastern District of Texas.  BigCommerce is incorporated in Texas and lists its registered office and headquarters as located in Austin, Texas. However, the parties all agreed that BigCommerce has no place of business in the Eastern District. On these facts, the Federal Circuit relied on the plain language of § 1400(b), which states:

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.

(Emphasis added).  The court noted that a plain-language reading of “the judicial district” speaks to venue in only one particular judicial district in a multi-district state.  In particular, the term “the judicial district” is singular, which indicates that venue must be in a single district, not in all districts.  Accordingly, the Federal Circuit concluded that for states having multiple judicial districts, a corporate defendant shall be considered to “reside” only in the single judicial district within that state where it maintains a principal place of business or a registered office.  Given the clear language of the statute, this result was not surprising—but it provides litigants welcome clarity on yet another previously unresolved question in the wake of TC Heartland.

©1994-2018 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.

TRENDING LEGAL ANALYSIS


About this Author

Andrew H. DeVoogd, Mintz Levin, Intellectual Property Litigation Lawyer, International Trade Commission Investigations attorney
Associate

Drew focuses his intellectual property practice in patent litigation specifically in International Trade Commission Section 337 investigations. He has participated in all phases of high-stakes patent litigation in the ITC, including as part of the strategy and trial team at multiple ITC evidentiary hearings, and also has significant experience in patent litigation in the federal district courts. In addition, Drew helps clients protect and leverage IP rights to maximize their value through strategic counseling, and has participated in negotiating and drafting numerous...

617.348.1611
Anthony E. Faillaci, intellectual property Attorney, Mintz Levin Law Firm
Associate

Tony is an Associate in the firm’s Boston office. He has worked with a wide range of technologies including manufacturing, telecommunications, and software development.

Tony’s experience includes assisting in the preparation of patent applications and pre-suit diligence, including patent portfolio analysis; drafting infringement/non-infringement and validity/invalidity analyses; and providing technical and scientific advice to legal practitioners in ITC-337 investigations and US District Court matters. During law school, Tony served as the production editor of the Journal of Health & Biomedical Law.

617-348-1778