TC HEARTLAND TRANSFERS TROLLS
Intellectual Property Section
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The ultimate test
regarding proper
venue in patent cases
is still being litigated.
O
n May 22, 2017,
the United States
Supreme Court
changed the
landscape of patent litigation.
Under 28 U.S.C. § 1400(b), the
venue statute for patent cases,
patent infringement actions may
only be brought in the district
(1) where the defendant resides;
or (2) where the defendant
infringed the plaintiff ’s patent if
the defendant has a regular and
established place of business there.
Sixty years ago, in Fourco Glass Co.
v. Transmirra Products Corp., 353
U.S. 222 (1957), the U.S. Supreme
Court interpreted the first venue
prong and held that “resides,”
for purposes of the patent venue
statute, meant the state where
the defendant was incorporated.
In 1990, however, the Federal
Circuit held, in VE Holding v.
Johnson Gas Appliance Co., 917
F.2d 1574 (Fed. Cir. 1990), that
changes to the general venue
statute (28 U.S.C. § 1391) that
expanded the definition of
“resides” to include any district
where the defendant would be
subject to personal jurisdiction
were incorporated into the specific
patent venue statute. So for nearly
30 years, courts following VE
Holding have interpreted the patent
venue statute expansively.
But in an 8-0 decision in TC
Heartland, LLC v. Kraft Foods Group
Brands, LLC, Justice Thomas
explained that the Supreme Court’s
decision 60 years ago in Fourco was
still the appropriate test for venue
in patent cases. 137 S. Ct. 1514
(2017). While Justice Thomas
recognized that the general venue
statute was amended two years
before VE Holding to provide a
default rule “[f]or all venue
purposes,” he noted the general
venue statute in effect at the time
of Fourco included similar language.
Besides, the current general venue
statute has a savings clause that
states the general venue statute does
not apply when “otherwise provided
by law.” Under TC Heartland,
plaintiffs seeking to enforce their
rights now have two, and only
two, choices of where to bring
their claim: where the defendant
is incorporated or where the
defendant has “committed acts
of infringement and has a regular
and established place of business.”
TC Heartland, 137 S. Ct. at 1520.
Since TC Heartland was decided,
a number of defendants have
attempted to transfer cases filed in
a district other than in the
Continued on page 45
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