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No Clear Consensus on Patent Venue During TC Heartland Oral Argument

On March 27, the US Supreme Court heard arguments in TC Heartland LLC v. Kraft Foods Group Brands LLC to decide whether 28 U.S.C. § 1400(b) (“patent venue statute”) is the sole and exclusive provision controlling venue in patent infringement actions or whether the patent venue statute is supplemented by provisions of 28 U.S.C. § 1391(c) (Venue Clarification Act of 2011).  The patent venue statute states that “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.”  This case focuses on the interpretation of “resides.”

TC Heartland LLC (“TC Heartland”) is headquartered in Carmel, Indiana and “produces and supplies liquid water enhancers and zero calorie sweeteners for the retail market.” Kraft Foods Group Brands LLC (“Kraft”) sued TC Heartland for patent infringement in US District Court for the District of Delaware.  TC Heartland is appealing from its unsuccessful attempts to transfer this case to the US District Court for the District of Indiana.  Kraft argues that the Venue Clarification Act of 2011 clarified the definition of residence for all venue purposes as any judicial district in which a defendant is subject to the court’s personal jurisdiction.  In contrast, TC Heartland argues that the Supreme Court’s interpretation of the patent venue statute in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957)—construing “where a defendant resides” to mean the state of incorporation only—is still good law.

Questioning during oral argument suggests that the justices remain unsettled on how to address the issue.  Justice Kagan, for example, appeared concerned about the tension between precedent and established practice, observing that “for 30 years the Federal Circuit has been ignoring our decision” in Fourco, but adding that “for more than 30 years the practice has been the other way.”  Justice Ginsburg’s questioning reflected skepticism of the Fourco decision, suggesting that the idea of limiting venue against a company to a single location—i.e., the place of incorporation—is an anachronism.  Chief Justice Roberts’ questioning proceeded from a textual approach, noting that the general venue statute applies “except as otherwise provided by law,” which he thought indicated Congress’ intention not to overturn the Fourco decision. Without a clear consensus, it is likely that the Supreme Court may not issue its decision until the end of the term in June.

This case is extremely important for patent litigation as it could determine where new patent cases are filed and may open the door to a wave of venue transfer motions.

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About this Author

Jeremy W Dutra Lawyer Squire Patton Boggs
Of Counsel

Jeremy Dutra is a member of the Intellectual Property & Technology Practice Group. His practice focuses on intellectual property litigation, antitrust litigation and complex commercial business disputes.

Jeremy represents clients before federal district courts throughout the country and the International Trade Commission, as well as courts of appeals and numerous state courts. He has litigated cases involving a diverse array of technologies, including automation, stainless steel processing, software, automotive products and consumer electronics. He has also litigated cases...

Christopher W. Adams, Squire Patton, Patent Litigation Lawyer, information technology Attorney
Of Counsel

Christopher Adams combines more than a decade of certified information technology industry experience with his legal training and skills to assist clients in a broad range of industries with patent prosecution, intellectual property licensing and litigation, technology transfer and related matters. He brings to clients the rare ability to translate information gained in communication with hardware, software and internet developers into a legal context.  

Christopher’s clients include companies in the gaming and e-sports, software development, medical device, telecom, chemical engineering, airline, satellite television, metals and mining industries as well as universities. He represents them in matters related to intellectual property portfolio development and management, patent opinions, patent strategies, freedom to operate analyses and other intellectual property due diligence. 

He advises clients on all facets of the Internet Corporation for Assigned Names and Numbers (ICANN)'s new generic top-level domain (gTLD) program. In his work in this area, Christopher counsels clients on ICANN’s new gTLD program dispute resolutions before the World Intellectual Property Organization (WIPO), the International Centre for Dispute Resolution (ICDR), and the International Center of Expertise of the International Chamber of Commerce (ICC). He litigates for and advises international clients on strategies to combat Internet/email fraud. 

Before joining the firm, Christopher worked for more than 10 years in the information technology field, where he holds numerous industry certifications, including the following active certifications, Microsoft Certified Systems Engineer, Microsoft Certified Solution Developer and Microsoft Certified Database Administrator. Christopher has experience with all phases of the software development lifecycle, as well as other computer related technology areas. Christopher’s technical experience also includes a broad chemical understanding and laboratory research in the area of polymer chemistry.