Patent Law Practice Center

Selecting Forum And Venue For Your Patent Litigation

Trevor Carter, Partner at Baker & Daniels and Practice Center Contributor, and Dorothy R. Auth, Ph.D., Partner at Cadwalader, Wickersham & Taft, sent in this article reviewing the legal homework of determining jurisdiction and proper venue, and discussing considerations parties must make to select the proper forum and how to keep their patent case there through resolution.  Trevor Carter will be speaking at PLI’s 5th Annual Patent Law Institute in San Francisco on Monday, March 21st.  Here is an excerpt from the article….

Venue

Chapter 87 of the Judicial Code addresses venue for various types of civil actions.  There are general venue provisions[1] and special venue provisions.

Venue Statutes – Patent cases: 28 U.S.C. § 1400(b)

Venue for patent infringement cases and copyright cases is addressed under a special venue statute, 28 U.S.C. §1400.  In particular, the venue statute for patent cases is §1400(b), which reads:

Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.  § 1400(b). (more…)

Top 10 Issues for Patent Litigators in 2011

Written by Brandon Baum (Partner at Mayer Brown and Practice Center Contributor).

The end of the year is the time for top 10 lists.  Here, in no particular order, are my top 10 issues for patent litigators in 2011.

10.  Microsoft Corp v. i4i Ltd. Partnership., and the clear and convincing evidence standard where the defendant relies on uncited art.  Will the Supreme Court decide that a lesser burden of proof is required to show invalidity when art was never considered by the USPTO?  If so, this will profoundly change both litigation and prosecution practice.  My favorite possible implication – what presumption applies to a mongrel 103(a) combination of cited and uncited art?  And will the PTO experience a data dump of prior art, if Microsoft prevails?

9.  Global-Tech Appliances v. SEB S.A., and the standard for proving the mental state required for induced infringement.  Whatever language the Supreme Court uses to describe the mental state required to show inducement will send everyone scrambling to prove or disprove the existence of that mental state. (more…)

Federal Circuit Issues Writ of Mandamus to Transfer Patent Suit

Michael J. Sacksteder, Partner at Fenwick & West, sent along this alert he wrote with colleagues Ryan J.  Marton and Guinevere Jobson.

The Federal Circuit has taken away another tool used by patent plaintiffs to keep lawsuits in the Eastern District of Texas in spite of motions to transfer by defendants. “Non-practicing entities” (known as NPEs or sometimes by a more disparaging term) often attempt to make their lawsuits “stick” in the Eastern District by incorporating in Texas and/or by establishing a “headquarters” in that district. (One of the authors has considered performing an empirical study of how many NPEs list their address as 104 E. Houston Street in Marshall, Texas. 104 E. Houston Street is located next door to the Federal courthouse in Marshall). When considering venue transfer motions, Eastern District judges had previously declined to examine whether such tactics were motivated by litigation strategy or by other considerations. A recent Federal Circuit ruling changes that.

On November 8, 2010, the Federal Circuit in In re Microsoft Corp., No. 944 (Fed. Cir. Nov. 8, 2010) granted Microsoft’s petition for a writ of mandamus finding the District Court’s denial of Microsoft’s motion to transfer pursuant to 28 U.S.C. §1404(a). The Federal Circuit determined that the denial was a clear abuse of discretion and ordered the case to be transferred to the Western District of Washington as the more convenient forum. (more…)