“ 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.” 28 U.S.C. § 1400(b).
“ For purposes of venue under this chapter , a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction .” 28 U.S.C. § 1391(c) (emphasis added).
VE Holding Corp. v. Johnson Gas Appliance Co ., 917 F.2d 1574 (Fed. Cir. 1990), cert. den. 499 U.S. 922 (1990): patent infringement venue is proper v. a corporation wherever it is subject to personal jurisdiction.
PERSONAL JURISDICTION OVER OUT-OF-STATE DEFENDANT
Fed. Cir law controls
Test: Satisfy forum state's long-arm statute + satisfy federal due process.
Most states interpret long-arm statutes to be co-extensive with due process, so test collapses down to familiar “minimum contacts” test under Int’l Shoe, Burger King :
“ The Federal Circuit applies a three prong test to determine if specific jurisdiction exists: (1) whether the defendant purposefully directed activities at residents of the forum; (2) whether the claim arises out of or relates to those activities; and (3) whether assertion of personal jurisdiction is reasonable and fair.”
Nuance Comm. v. Abbyy Software House , 626 F.3d 1222 (Fed. Cir. 2010)
Minimum contacts shown: multiple attendance/exhibition at trade shows in forum state
Jurisdiction not unreasonable: no compelling burden on defendants; “their admitted presence at numerous trade shows in Nevada indicates that, despite their arguments to the contrary, neither company faces a particularly onerous burden in defending itself in Nevada.”
Patent Rights Protection Group, LLC v. Video Gaming Technologies, Inc., 603 F.3d 1364 (Fed. Cir. 2010).
Table 1: Number of Patent Cases Litigated in Districts with 25 or More Outcomes
Source: Lemley, Where to File 519 Southern District of California 584 District of Massachusetts 600 District of Minnesota 987 District of New Jersey 1017 District of Delaware 1018 Southern District of New York 1024 Eastern District of Texas 1233 Northern District of Illinois 1424 Northern District of California 2289 Central District of California Total District
Source: IPO, The IP Record 2011 69 Eastern District of Virginia 78 District of Massachusetts 80 Northern District of Ohio 132 Southern District of New York 164 District of New Jersey 184 Northern District of California 231 Central District of California 249 Northern District of Illinois 273 District of Delaware 446 Eastern District of Texas Total District
MOST POPULAR VENUES 2000-2010 – PATENTEE WIN RATE
Table 3: Patentee Win Rate in Districts with 25 or More Outcomes
Source: Lemley, Where to File 36.3% Central District of California 37.0% Southern District of New York 38.4% District of Massachusetts 40.0% Eastern District of Missouri 40.3% Eastern District of Texas 45.2% District of Oregon 45.3% District of Delaware 46.2% District of Nevada 46.3% Middle District of Florida 55.1% Northern District of Texas Claimant Win Percentage District
Table 4: Percentage of Patent Cases that Result in Trial in Districts with 25 or More Outcomes
Source: Lemley, Where to File 3.5% Southern District of Texas 4.0% Middle District of Florida 4.0% Western District of Texas 4.1% Eastern District of Missouri 4.4% Southern District of Florida 6.2% District of Massachusetts 6.4% Eastern District of Virginia 7.4% Western District of Wisconsin 8.0% Eastern District of Texas 11.8% District of Delaware Percentage to Trial District
Table 5: Districts with 25 or More Outcomes, Sorted by Time to Trial
Source: Lemley, Where to File 2.26 Northern District of Texas 2.22 District of Maryland 2.19 Western District of Washington 2.13 Eastern District of Texas 2.07 District of Oregon 2.03 District of Delaware 2.00 Middle District of Florida 1.66 Southern District of Florida 0.96 Eastern District of Virginia 0.67 Western District of Wisconsin Time to Trial (years) District
Source: Lemley, Where to File 7 5 11 6 1 28 18 4 14 2 Claimant Win Percentage Ranking 7 11 8 2 17 3 6 1 4 9 Percent to Trial Ranking 18 25 11 28 10 1 4 15 2 6 Time to Resolution Ranking 15 6 16 7 10 1 3 5 2 4 Time to Trial Ranking 47 Eastern District of Missouri 47 District of Oregon 46 Western District of Texas 43 Eastern District of Texas 38 Northern District of Texas 33 Western District of Wisconsin 31 Southern District of Florida 25 District of Delaware 22 Eastern District of Virginia 21 Middle District of Florida Aggregate Ranking District
Table 7: Distribution of 25 Highest Awards, 2005 – 4/11/2011
Source: Patstats.org 1 District of Rhode Island 1 District of Oregon 1 Northern District of New York 1 District of Kansas 1 District of Arizona 2 District of Massachusetts 2 District of Delaware 2 Southern District of California 2 Northern District of California 12 Eastern District of Texas No. of Top 25 Damage Awards District
“ BEST” VENUES v. BIG MONEY “ Best” Venues M. D. Fla. E. D. Va. S.D. Fla. W. D. Wis. N. D. Tex. W. D. Tex. E. D. Tex (12) D. Del. (2) D. Ore. (1) Most Big $ Awards N. D. Cal. (2) S. D. Cal. (2) D. Mass. (2) D. Ariz. (1) D. Kan. (1) N. D. N. Y. (1) D. R. I. (1)
Table 8: Grants v. Denials in Top Plaintiffs’ Districts, Post-eBay (ending 4/11/2011)
Source: Patstats.org 0 3 2 19 2 1 3 11 1 3 Grants 0 0 0 9 0 1 0 7 2 2 Denials Eastern District of Missouri District of Oregon Western District of Texas Eastern District of Texas Northern District of Texas Western District of Wisconsin Southern District of Florida District of Delaware Eastern District of Virginia Middle District of Florida District
28 U.S.C. § 1404(a) – court may transfer to any other district in which the case could have been brought “for the convenience of the parties, in the interests of justice”
28 U.S.C. § 1406(a) – if venue is improper, the district court “shall dismiss, or if it be in the interest of justice, transfer such case to any district or division in which it could have been brought”
Common law forum non conveniens – case can be dismissed if there is another, more convenient forum in another jurisdiction. Bonzel v. Pfizer, Inc. , 439 F.3d 1358 (Fed. Cir. 2006) (affirming dismissal in favor of action in Germany enforcing a German license agreement with a German doctor).