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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.

© Copyright 2020 Squire Patton Boggs (US) LLPNational Law Review, Volume VII, Number 93


About this Author

Jeremy W Dutra International Trade Attorney Squire Patton Boggs Washington DC
Of Counsel

Jeremy Dutra is a member of the International Trade Practice Group. His practice focuses on all aspects of international trade proceedings (including antidumping, countervailing duty and other import-related proceedings) and US government contracts law.

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...

Christopher W. Adams Intellectual Property & Technology Attorney Squire Patton Boggs Washington DC
Of Counsel

Chris Adams’ combination of more than 10 years of information technology (IT) industry work with more than 12 years of intellectual property (IP) experience provides him with the rare ability to help both emerging growth and global companies negotiate the thicket of legal issues related to IT and computer internet technology (CIT). That is why technology innovators and service providers, software developers, and universities – across a gamut of security and internet areas – seek Chris’ counsel to help them thoroughly exploit their IP assets. He guides clients in creating and protecting patents and other forms of IP through commercialization, licensing and, when needed, enforcement.

Before joining the firm, Chris gained hands-on IT and CIT industry experience at several Northern Virginia federal government IT solutions providers. His experience extends to all phases of the software development lifecycle, as well as other IT and CIT areas, and he holds many industry certifications.

Although Chris has vast experience in the IT and CIT areas, his chemistry background has often come into play in his legal work. As a result, Chris has a substantial amount of IP experience in the life and health sciences.

Christopher is a member of the Advisory Committee of the Squire Patton Boggs Foundation, which promotes the role of public service and pro bono work in the practice of law and the development of public policy.

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