Patent Litigation: Coming to a Court Near You
Under either the residence or place of business theory of venue,, the result is that more patent cases are expected to be filed in Georgia in the long term, and the nature of the patent cases filed here will change, with more defendants being incorporated in Georgia or having a physical location here.
January 16, 2018 at 10:46 AM
5 minute read
In May 2017, the U.S. Supreme Court issued an opinion in TC Heartland LLC v. Kraft Foods Grp. Brands, LLC that set the stage for patent litigation to increase in Georgia. The Supreme Court held that the term “resides” in the venue statute for patent infringement cases refers only to the defendant's state of incorporation. This ruling eliminated the most common way of asserting patent venue in district court litigation—for the last few decades, proper patent infringement venue was satisfied by the term “resides” because that term had been coextensive with personal jurisdiction. Now, plaintiffs may be turning to the other test for statutory patent venue, i.e., district courts in the state where the defendant has committed acts of infringement and has a “regular and established place of business.”
Under either the residence or place of business theory of venue, the result is that more patent cases are expected to be filed in Georgia in the long term, and the nature of the patent cases filed here will change, with more defendants being incorporated in Georgia or having a physical location here.
Before TC Heartland, patent cases flourished in district courts perceived by plaintiffs as having fast-moving dockets and patent-friendly juries. For example, in 2016 about a third of the approximately 4,500 patent cases were filed in the Eastern District of Texas. The defendants in many of those cases were not incorporated in Texas, and they did not have a physical business location there. Thus, had those cases been filed under the new law, the district court may not have had proper venue. This was true for many of the patent infringement cases filed in district courts all over the country—indeed, before TC Heartland, patent venue was merely a single sentence at the end of the explanation about the court's personal jurisdiction. But with a stricter test for venue than for personal jurisdiction, more cases will likely return to defendants' home states.
Have patent infringement case filings increased so far in 2017 in the Northern District of Georgia? Not yet. Year over year, starting at the end of May (when the Supreme Court decided TC Heartland), there has not been much of a change in patent infringement filings in the Northern District of Georgia, even though over the same period newly filed cases have significantly dropped in the Eastern District of Texas. One reason filings may not have increased yet in Georgia is because of the uncertainty in the law after TC Heartland—that opinion only interpreted the residence theory of venue, but that theory had been so commonly used that little precedent had developed for the “regular and established place of business” theory. Since May, plaintiffs who wanted a sure venue may have relied on the “residence” theory, which would explain the increased patent case volume in the District of Delaware.
That will almost certainly change as the case law normalizes on patent venue, which is beginning to happen. In September, the Federal Circuit in In re Cray resolved one major question about the “regular and established place of business” test for venue, clarifying that the test required a “physical” location, perhaps paving the way for more assertions of venue under this theory in 2018. Before Cray, in the several months after TC Heartland, the best precedent for the “regular and established place of business” theory had been a denied petition for a writ of mandamus from 1985 in the case In re Cordis. Not only was that case more than 30 years old, it also was issued when the Federal Circuit itself was literally less than three years old, having only recently been “ordain[ed] and establish[ed]” by Congress with exclusive patent appellate jurisdiction. See 28 U.S.C. § 1295; Art. III, § 1 of the Constitution.
With precedent like this, who could blame plaintiffs for filing under a residence theory of venue in Delaware? However, many plaintiffs still reasonably took the approach that under the dated Cordis ruling they could proffer some evidence of the defendant's business in the venue. After all, the risk of being wrong was only a transfer. But with the Federal Circuit's contemporary and clear precedent from Cray, plaintiffs will be far more confident about where proper venue lies.
As a result, patent infringement filings will likely increase in Georgia in 2018, driven by cases against defendants incorporated here, as well as those with a strong physical presence here. A contrarian view is that most midsized or large companies have a physical location in another state. While this may be true, corporate formalities should still reign because, under Cray, it is the physical place of a defendant—not any of its subsidiary entities—that matters. For that reason, the cases that would have previously been filed in non-Georgia districts against Georgia-based companies must now be filed here.
Notwithstanding such an increase, at the very least, we can expect a change in the nature of patent infringement cases in Georgia federal district courts, trending toward defendants that are physically located or incorporated in Georgia.
Sharad K. Bijanki is an intellectual property attorney at Parker Poe. His practice focuses on patent litigation and post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office.
This content has been archived. It is available through our partners, LexisNexis® and Bloomberg Law.
To view this content, please continue to their sites.
Not a Lexis Subscriber?
Subscribe Now
Not a Bloomberg Law Subscriber?
Subscribe Now
NOT FOR REPRINT
© 2024 ALM Global, LLC, All Rights Reserved. Request academic re-use from www.copyright.com. All other uses, submit a request to [email protected]. For more information visit Asset & Logo Licensing.
You Might Like
View AllGa. Appellate Judges Mull Landlord Responsibility in Premises Liability Case Involving Child Shooting
Corporate Lawyer Accused of Extortion Pushes Back Against $3.7M Judgment
6 minute readMetLife Attorney's Switch to Nelson Mullins Continues String of In-House Moves to Law Firms
3 minute readTrending Stories
- 1The Growing PFAS Morass: Why Insurance Should Cover These Products Liability Claims
- 2Dallas Jury Awards $98.65M in Botham Jean Killing by Dallas Officer
- 3In Talc Bankruptcy, Andy Birchfield Skipped His Deposition. Could He Face Sanctions?
- 4Pharmaceutical Patents: Benefits and Challenges
- 5Where Do Web-Tracking Class Actions Belong? 8th Circuit Weighs the Issue
Who Got The Work
Michael G. Bongiorno, Andrew Scott Dulberg and Elizabeth E. Driscoll from Wilmer Cutler Pickering Hale and Dorr have stepped in to represent Symbotic Inc., an A.I.-enabled technology platform that focuses on increasing supply chain efficiency, and other defendants in a pending shareholder derivative lawsuit. The case, filed Oct. 2 in Massachusetts District Court by the Brown Law Firm on behalf of Stephen Austen, accuses certain officers and directors of misleading investors in regard to Symbotic's potential for margin growth by failing to disclose that the company was not equipped to timely deploy its systems or manage expenses through project delays. The case, assigned to U.S. District Judge Nathaniel M. Gorton, is 1:24-cv-12522, Austen v. Cohen et al.
Who Got The Work
Edmund Polubinski and Marie Killmond of Davis Polk & Wardwell have entered appearances for data platform software development company MongoDB and other defendants in a pending shareholder derivative lawsuit. The action, filed Oct. 7 in New York Southern District Court by the Brown Law Firm, accuses the company's directors and/or officers of falsely expressing confidence in the company’s restructuring of its sales incentive plan and downplaying the severity of decreases in its upfront commitments. The case is 1:24-cv-07594, Roy v. Ittycheria et al.
Who Got The Work
Amy O. Bruchs and Kurt F. Ellison of Michael Best & Friedrich have entered appearances for Epic Systems Corp. in a pending employment discrimination lawsuit. The suit was filed Sept. 7 in Wisconsin Western District Court by Levine Eisberner LLC and Siri & Glimstad on behalf of a project manager who claims that he was wrongfully terminated after applying for a religious exemption to the defendant's COVID-19 vaccine mandate. The case, assigned to U.S. Magistrate Judge Anita Marie Boor, is 3:24-cv-00630, Secker, Nathan v. Epic Systems Corporation.
Who Got The Work
David X. Sullivan, Thomas J. Finn and Gregory A. Hall from McCarter & English have entered appearances for Sunrun Installation Services in a pending civil rights lawsuit. The complaint was filed Sept. 4 in Connecticut District Court by attorney Robert M. Berke on behalf of former employee George Edward Steins, who was arrested and charged with employing an unregistered home improvement salesperson. The complaint alleges that had Sunrun informed the Connecticut Department of Consumer Protection that the plaintiff's employment had ended in 2017 and that he no longer held Sunrun's home improvement contractor license, he would not have been hit with charges, which were dismissed in May 2024. The case, assigned to U.S. District Judge Jeffrey A. Meyer, is 3:24-cv-01423, Steins v. Sunrun, Inc. et al.
Who Got The Work
Greenberg Traurig shareholder Joshua L. Raskin has entered an appearance for boohoo.com UK Ltd. in a pending patent infringement lawsuit. The suit, filed Sept. 3 in Texas Eastern District Court by Rozier Hardt McDonough on behalf of Alto Dynamics, asserts five patents related to an online shopping platform. The case, assigned to U.S. District Judge Rodney Gilstrap, is 2:24-cv-00719, Alto Dynamics, LLC v. boohoo.com UK Limited.
Featured Firms
Law Offices of Gary Martin Hays & Associates, P.C.
(470) 294-1674
Law Offices of Mark E. Salomone
(857) 444-6468
Smith & Hassler
(713) 739-1250