Brian Kwok in BNA Patent, Trademark & Copyright Journal: New Focus on Where to File Patent Suits After Major Supreme Court Venue Ruling


Patent owners that want to sue in a friendly forum now have a new standard to meet: instead of suing where their products are sold, which could be virtually anywhere, they must sue where an alleged infringer has a place of business.

Patent attorneys, reacting to the U.S. Supreme Court decision’s limiting of where infringement complaints can be filed, still saw considerable leeway for a patentee to weigh venue options and pick one that might be friendlier to its case. It will require detailed research into the defendant’s business locations, though, one commenter said, and a multi-factor strategy for comparing the courts in those locations.

The high court’s ruling in TC Heartland LLC v. Kraft Foods Group Brands LLC was directed only to the first venue choice option under the patent-specific venue statute, 28 U.S.C. § 1400(b)—the judicial district where the defendant resides’’ (TC Heartland LLC v. Kraft Foods Group Brands LLC, U.S., No. 16-341, 5/22/17). The court held that ‘‘resides’’ is limited to the alleged infringer’s state of incorporation. It overturned U.S. Court of Appeals for the Federal Circuit law that for 27 years, allowed ‘‘resides’’ to mean anywhere the defendant makes a sale of an infringing product or service.

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