January 23, 2019

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Federal Circuit Rules That Plaintiff Bears Burden Of Proving Proper Patent Venue

In another important patent venue decision (In re: ZTE (USA) Inc., No. 2018-113 (May 14, 2018)), the Federal Circuit has determined that who bears the burden of establishing proper venue is a question of Federal Circuit law and that it is the plaintiff who bears that burden.  According to the Court, although the Federal Circuit itself has never ruled on where to place the burden in its 37-year history, its conclusion is supported by authority among the other circuit courts and by the venue statute’s “intentional narrowness” as “compared with the broad general venue provision.”  The Court therefore granted the defendant’s mandamus petition, vacated the district court’s order denying defendant’s motion to dismiss for improper venue, and instructed the district court to place the burden of proof on the plaintiff and to reconsider defendant’s motion, and specifically, whether the nature of the defendant’s relationship to a call center it had contracted with “warrant[s] [the] call center being deemed a regular and established place of business [of the defendant].”

Takeaway:  The Court’s decision plugs still another hole left open after the Supreme Court’s landmark patent venue opinion in TC Heartland LLC v. Kraft Foods Grp. Brands LLC , 137 S. Ct. 1514 (2017) and creates a not insignificant, new hurdle for patent plaintiffs.  Still more decisions are expected in this area from mandamus petitions that remain pending at the Federal Circuit (see our prior post).

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About this Author

Bryan Schwartz, Squire Patton Boggs, intellectual property attorney, litigation lawyer, patent law, US International Trade Commission legal counsel

Bryan brings nearly 25 years of intellectual property litigation experience to the Squire Patton Boggs Intellectual Property & Technology Practice Group’s US litigation practice, including numerous representations of parties in Section 337 investigations at the US International Trade Commission.

Bryan has also appeared in numerous US district courts and before arbitration panels in IP disputes. His litigation experience extends to a diverse array of technologies, including semiconductors, lasers, wireless communications, batteries,...