Venue in Patent Infringement

Venue typically relates to whether a particular court is the appropriate place to bring a lawsuit.  In most litigation, venue is almost an afterthought and is easily obtained—if you can get personal jurisdiction over the defendant, then you likely have enough to establish venue.  However, it is not so easy in the world of patent litigation.

By statute, Congress has established a stricter standard to establish venue in a patent infringement case.  Specifically, the statute only allows the patent infringement suit to be brought in one of two places:  (1) “in the judicial district where the defendant resides,” or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.”[1]  If the case is not brought in the proper venue, it could result in the case being dismissed entirely.

It is easy, under the definition provided by the courts, to determine where a business “resides.”  When the defendant is a corporation, the courts have defined the term “resides” to mean only the state where the business is incorporated.[2]  However, the other possible way to get venue (acts of infringement + place of business) is less clear.  Particularly, what counts as a “regular and established place of business” has left room to argue. 

In the case of In re Cray, the court has enumerated three requirements:  “(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant.”[3]  Requirements numbers (1) and (3) are fairly clear, but requirement number (2) is not much help as it seems to merely reiterate what the statute says and does not provide much guidance.

While the courts have not provided a set definition for what amounts to a “regular and established place of business,” the courts have made clear that there is a distinction between a “place of business” and simply owning property.[4]  If a business owns property in a judicial district, but subleases that property out to another, that is not sufficient to establish venue in a patent infringement case.[5]  Even having a storage facility, used to house product for your business, does not necessarily amount to a “place of business” if no business is being conducted at that site.[6] 

Though it is typically an afterthought in most litigation, in a patent infringement case choosing the right venue could be the difference from being able to proceed with your case and having your case dismissed by the judge before it even truly begins.

If you think someone is infringing your patent, or someone has accused you of infringing their patent, contact the experienced trial lawyers at Goosmann Law Firm, PLC, today in our Omaha, Sioux City, or Sioux Falls offices.

[1] 28 U.S.C. § 1400(b) (emphasis added)

[2] TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).

[3] In re Cray, 871 F.3d 1355, 1360 (Fed. Cir. 2017). 

[4] Personal Audio LLC v. Google, Inc., 280 F. Supp. 3d, 922 (E.D. Tex. 2017).

[5] Id. 

[6] CDx Diagnostics Inc. v. United States Endoscopy Group, inc., 2018 WL 2388534, C.A. No. 13-cv-5669 (NSR) (S.D.N.Y. May 24, 2018)