New Limitation on Patent Infringement Venue Selection
§1400(b) of 28 U. S. C. establishes, among other things, where any civil action for a patent infringement claim may be brought, and in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, the Court held that as “applied to domestic corporations, residence in §1400(b) refers only to the State of Incorporation;” effectively rejecting the argument that §1400(b) incorporates the broader definition of corporate residence contained in the general venue statute.
Earlier, Congress updated the definition of residence in §1391, which addressed general venue concerns creating an uncertainty as to whether or not that change also impacted the definition of venue for patent infringement cases, apparently it did not. The Court found that had Congress intended the modified definition to apply to both statutes that they would have amended both and thus the earlier definition established in Fourco Glass Co. v. Transmirra Products Corp. prevailed.
Here the petitioner, TC Heartland, LLC, is headquartered in Indiana and manufactures flavored drink mixes and the respondent, Kraft Foods Group Brands, LLC is headquartered in Illinois and is a competitor of the petitioner. The respondent sued the petitioner for patent infringement in the state of Delaware to which the petitioner moved to dismiss or transfer the case to Indiana arguing improper venue since the petitioner did not reside in Delaware as defined in §1400(b). The Court agreed with the petitioner establishing a defining moment for future patent infringement venue decisions.
Historically, the Eastern District of Texas has been the preferred venue for plaintiffs filing patent infringement cases as it has a long-history of being a patent-friendly jurisdiction. This ruling however, will bar many patent owners from filing cases in this district and rather will be subject to the residence of the defendant as defined by §1400(b).
While the opinion of the Court made no reference to the Eastern District of Texas, the number of patent cases that the Eastern District of Texas was hearing compared to the lack of business entities in that district has consistently raised concerns that now have been addressed.
This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.