2018 0515 with_animation_final_webinar_presentation_tc_heartland (1)

Potter Anderson & Corroon
LLP
Jonathan A. Choa
Partner
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Paul Hastings LLP
Philip Ou
Of Counsel
Harness Dickey
Glenn E. Forbis
Principal
Determining Patent Venue in the
Light of TC Heartland Decision
theknowledgegroup.orgKnow. Lead. Succeed.May 15, 2018 1
Partner Firms:
Hudnell Law Group PC
Lewis E. Hudnell, III
Founding Principal

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Potter Anderson & Corroon LLP is the firm of choice for clients — ranging from Fortune 500 companies to
some of the largest national law firms to individuals. It is the oldest Delaware law firm and one of the ten oldest
continuously-practicing law firms in the United States. Since its small beginnings in 1826, Potter Anderson has
become one of the largest and most recognized Delaware law firms, providing a full range of legal services to
its local, national and international clients.
Partner Firms:
Harness Dickey has obtained more than 60,000 patents for its clients since its founding in 1921 and currently
manages more than 17,000 trademark registrations for clients around the globe. Currently ranked seventh
among the nation’s top patent firms in a 2016 poll by IPWatchdog, Harness Dickey safeguards critical IP
assets on a global scale for Fortune 500 companies, private and public businesses, universities, inventors,
artists and entrepreneurs. Harness Dickey has offices in the metropolitan areas of Dallas, Detroit, St. Louis
and Washington, D.C. Visit www.hdp.com and follow @harnessdickey for more information.

In today’s world of transformative change, our purpose is clear — to help our clients and people navigate new
paths to growth. Our innovative approach and unmatched client service has helped guide our journey to
becoming one of the world’s leading global law firms in such a short time. Founded in 1951, Paul Hastings has
grown strategically to anticipate and respond to our clients' needs in markets across the globe. We have a
strong presence throughout Asia, Europe, Latin America, and the U.S. We offer a complete portfolio of services
to support our clients’ complex, often mission-critical needs—from structuring first-of-their-kind transactions to
resolving complicated disputes to providing the savvy legal counsel that keeps business moving forward.
Partner Firms:
Hudnell Law Group is a modern intellectual property law firm committed to innovating, adding value, and
delivering results for its clients. Hudnell Law Group offers a full spectrum of intellectual property legal services
and develops creative solutions tailored to suit its clients’ intellectual property needs. Hudnell Law Group
employs new and alternative practices designed to enhance the value of its offerings. Hudnell Law Group
demonstrates its value by the results it achieves for its clients and its commitment to providing outstanding
client service.

Jonathan A. Choa is a partner in Potter Anderson & Corroon LLP’s General Litigation Group. He has a wide
ranging practice focused on technology disputes. Jonathan has represented companies in patent infringement
actions, breach of contract suits, as well as in licensing disputes. He also has extensive experience
representing clients in complex commercial disputes, including securities claims and corporate disputes. He
has represented clients in federal and state court proceedings and has experience in appellate proceedings,
including preparing briefs for actions before the United States Courts of Appeal for the Federal and Second
Circuits.
His clients include Fortune 500 e-commerce companies, pharmaceutical companies, cell phone and
semiconductor manufacturers and large financial institutions.
Brief Speaker Bios:
Glenn Forbis is a Patent Litigator and Principal in the Troy office of Harness Dickey. He is known for being a
dynamic litigator and trial attorney who is valued for developing a deep understanding each client’s technology
and then presenting it to judges and juries in an understandable way as part of a compelling story. In practice
for more than twenty years, Glenn has appeared in more than 150 patent and trademark infringement cases in
most major Federal Court jurisdictions across the country. He has successfully defended multiple patent
infringement claims in excess of $75 million and, on the Plaintiff’s side, has twice achieved recoveries for his
clients in excess of $30 million. Glenn is routinely recognized by several publications for excellence in
intellectual property litigation, and was most recently named to Managing IP’s “Short List” of patent litigators in
Michigan.
Potter Anderson & Corroon LLP
Jonathan A. Choa
Partner
Harness Dickey
Glenn E. Forbis
Principal

Philip Ou is of counsel in the Intellectual Property practice of Paul Hastings in the firm’s Palo Alto office. He
focuses his practice on intellectual property litigation. Mr. Ou has represented clients in federal district courts
across the country, the United States International Trade Commission, and the Court of Appeals for the
Federal Circuit and managed cases in all stages of litigation, from pre-litigation counseling through trial and
appeal. In representing plaintiffs, he has helped clients successfully strategize the licensing of patent portfolios
in a number of industries. In representing defendants, he has frequently disposed of cases for his clients on
dispositive motions or through other defense strategy with no payments to plaintiff. In the past year, Law360
has twice recognized Mr. Ou as one of their Legal Lions in their Weekly Verdicts articles.
Brief Speaker Bios:
Mr. Hudnell is an intellectual property attorney specializing in patent litigation. He is committed to providing
outstanding client service and to helping clients achieve favorable results in complex patent disputes. Mr.
Hudnell has served as lead counsel on numerous patent lawsuits in federal court. Mr. Hudnell has
successfully represented clients at trial and obtained numerous settlements in his clients’ favor. He has also
successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board. Mr. Hudnell
earned a B.S. in Operations Research and Industrial Engineering from Cornell University and a J.D. from the
University of Pennsylvania.
Founding Principal
Paul Hastings LLP
Philip Ou
Of Counsel

In the later part of 2017, the U.S. Court of Appeals for the Federal Circuit made clear that the Supreme Court’s decision in TC Heartland v. Kraft Foods dramatically
changed the patent venue landscape. An alleged infringer may now argue improper venue “in a judicial district where it is subject to a court’s personal jurisdiction but where
it is not incorporated and has no regular and established place of business.” As a result of this Federal Circuit opinion and many other post-TC Heartland decisions, venue is
becoming a much more complicated issue.
Join a panel of key thought leaders and litigants assembled by The Knowledge Group as they bring the audience to a road beyond the basics of bringing or defending
against patent litigation and as they delve into an in-depth analysis of the current trends and recent court rulings involving determination of Patent Venue in light of the TC
Heartland decision. Speakers will also provide the audience with practical strategies in bringing out the best in these lawsuits in a rapidly evolving legal climate.
Key topics include:
• TC Heartland v. Kraft Foods – A Change of Law
• Impacts of TC Heartland to Patent Infringement Litigation
• Identification of Correct Venue
• Venue as to Foreign Defendants
• Improper Venue Defense - Recent Trends and Developments
• Productive Litigation Strategies

SEGMENT 1:
Jonathan A. Choa
Partner
► For more information about the speakers, you can visit: https://theknowledgegroup.org/event-homepage/?event_id=3533
SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
SEGMENT 4:
Founding Principal

SEGMENT 1:
Jonathan A. Choa
Partner
LLP
Talking Points
• Background and summary of the TC Heartland Decision
• Who has the burden of proof?
• Is venue discovery available?
• What is the proper venue in ANDA actions

TC Heartland – the origin story
• Kraft Foods sued TC Heartland in the United States District Court for the District of
Delaware
• TC Heartland moved to transfer, claiming that venue was not proper in Delaware
• The Magistrate Judge, in a report and recommendation, denied the request to transfer
• The District Court agreed, finding that under Section 1391(c) “venue is appropriate for a
defendant in a patent infringement case where personal jurisdiction exists.” Kraft Foods
Group Brands LLC v. TC Heartland, LLC, 2015 WL 5613160 (D. Del. 2015).
• District Court cites VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed.
Cir. 1990) for support
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

TC Heartland – the road of trials
• Undeterred, TC Heartland files a writ of mandamus petition with the Federal Circuit
• The Federal Circuit agrees with the District Court
• The Federal Circuit also cites to VE Holding, saying “this court held that the definition of
corporate residence in the general venue statute, § 1391(c), applied to the patent venue
statute, 28 U.S.C. § 1400.” In re TC Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016).
• TC Heartland presses on, filing a petition for writ of certiorari
• The Supreme Court grants the writ!
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

What was TC Heartland’s Argument?
• “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)
• What does reside mean?
• In 1957, the Supreme Court held that, for purposes of §1400(b), a domestic corporation
“resides” only in its State of incorporation. Fourco Glass Co. v. Transmirra Products
Corp., 353 U. S. 222 (1957)
• If it was so clear, how did the Delaware District Court and Federal Court miss it?
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

VE Holding Corp. v. Johnson Gas Appliance
• In 1988, Congress amended § 1391(c).
• As amended, it read:
• 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
at the time the action is commenced.
• The language at the time of Fourco indicated that § 1400(b) was meant to be read alone,
not in connection with § 1391(c)
• The Federal Circuit said this was the “Exact and classic language of incorporation.”
• After VE Holdings, § 1400(b) and § 1391(c) were read together
• Venue and personal jurisdiction became synonymous for corporations
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

• In 2011, Congress again amends the venue statute
• § 1391(a) – “Except as otherwise provided by law,” . . . “this section shall govern the
venue of all civil actions brought in district courts of the United States.”
• The change in language is TC Heartland’s hook to challenge VE Holdings
• If the 1988 Amendment used language of incorporation, the 2011 amendment changed
that and separated § 1400(b) and § 1391(c)
• The Supreme Court agrees with TC Heartland that § 1400(b) is the sole venue provision
for patent actions
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

• The Supreme Court goes back to Fourco and finds that § 1400(b) and § 1391(c) were
never meant to be read together
• VE Holdings was wrong
• The 2011 amendment is not entirely irrelevant
• The use of “except as otherwise provided by law” places the holding in Fourco on “even
firmer footing”
• The lower courts have been getting venue wrong for almost 20 years!
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

Who has the Burden of Proof?
• Does the law of the Federal Circuit or the regional circuit apply?
• Procedural issues look to regional circuit, substantive patent issues look to the Federal
Circuit
• General consensus appears to be coalescing around looking to the regional circuit
• Under Third Circuit law, the party challenging venue bears the burden of proof
• No Fifth Circuit decision, but district courts in Fifth Circuit place burden on plaintiff, if
venue challenged
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

Is Venue Related Discovery Possible?
• Courts generally treat a motion related to improper venue similarly to a personal
jurisdiction motion
• Courts will permit venue related discovery, but there must be some indication that venue
is proper
• Courts will not allow venue related discovery when it is perceived as a fishing expedition
• The focus is typically on regular and established place of business
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

ANDA Cases
• The focus is on where the acts of infringement were committed
• Use of past tense “creates an almost impenetrable problem in the particular context” of
ANDA litigation
• Bristol-Myers Squibb Company v. Mylan Pharmaceuticals Inc., 2017 WL 3980155, issued
by Chief Judge Stark of the District of Delaware.
• He found “that in the context of Hatch–Waxman litigation, the ‘acts of infringement’ an
ANDA filer ‘has committed’ includes all of the acts that would constitute ordinary patent
infringement if, upon FDA approval, the generic drug product is launched into the
market.”
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

Bristol-Myers Squibb Company v. Mylan Pharmaceuticals Inc.
• Chief Judge Stark relied heavily on the Federal Circuit’s decision in Acorda Therapeutics
Inc. v. Mylan Pharmaceuticals Inc., 817 F.3d 755 (Fed. Cir. 2016)
• He also rejected Mylan’s argument that venue should be where the ANDA submission is
made, where the submission is made from, or where the center of gravity of the work
associated with the preparation and submission of the ANDA took place
• Chief Judge Stark reasoned that those acts cannot be the “acts of infringement” inquiry
because they are preparatory activities that are explicitly not infringing
• Adopted by Celgene Corporation v. Hetero Labs Limited, 2018 WL 1135334 (D.N.J.
2018)
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

Galderma Laboratories, L.P. v. Teva Pharmaceuticals USA, Inc.
• In Galderma Laboratories, L.P. v. Teva Pharmaceuticals USA, Inc., 2017 WL 6505793,
Chief Judge Lynn of the Northern District of Texas rejected the reasoning of BMS
• Chief Judge Lynn held that “the submission of an ANDA constitutes an act of
infringement for purposes of bringing a lawsuit”
• She also held that “it is not necessary to recognize additional speculative acts of
infringement to give the statute effect.”
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

• Chief Judge Lynn also objected to BMS’s reliance on Acorda because the Federal Circuit
later held that when determining patent venue, courts should not conflate showings that
may be sufficient for other purposes, like personal jurisdiction
• Chief Judge Lynn found that it is appropriate to look to the forum where the ANDA
submission itself was prepared and submitted
• But rejected the argument that venue is proper where plaintiffs are resident just because
the paragraph IV letter challenges plaintiffs’ patents
SEGMENT 1:
Jonathan A. Choa
Partner
LLP

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
• The “Other Prong” of 28 U.S.C. 1400(b)
• What is “Regular and Established Place of Business?”
The Cray test:
• “physical place”;
• “regular and established”; and
• “of the defendant.”
• Filing considerations
• The change in patent litigation filings since TC Heartland.
Talking Points

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
28 U.S.C. 1400(b):
(i) “in the judicial district where the defendant resides,” or
(ii) where the defendant has:
(a) “committed acts of infringement,” and
(b) “a regular and established place of business.”
The “Other” Prong of 28 U.S.C. 1400(b)

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
Raytheon Co. v. Cray, Inc., No. 2:15-cv-01554-JRG, 2017 U.S. Dist. LEXIS 100887,
2017 WL 2813896 (E.D. Tex. June 29, 2017).
Four Factor Test of the E.D. Tex.:
• Any physical presence in the district (office, inventory, equipment, property, store, or
employee presence);
• Defendant’s representations;
• Benefits received; and
• Targeted interactions with the district.
What is a “Regular and Established
Place of Business?”

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
In re Cray, 871 F.3d 1355 (Fed. Cir. 2017)
“regular and established place of business”:
(i) “physical place”
(ii) which is “regular and established”, and
(iii) “of the defendant.”
• Requires more than “minimum contacts” required for establishing personal
jurisdiction and the “doing business” business standard required by the general
venue provision.
Id., at 1360-61.

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
What is a “Physical Place”?
• IS:
• A physical, geographical location in the district from which the business of the
defendant is carried out (though not necessarily a formal office or store).
• IS NOT:
• Merely a physical presence
• Virtual space or electronic communications from one person to another

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
What is “Regular and Established”?
• IS:
• “Steady”, “Uniform”, “Orderly”, “Methodical”, “Permanence”
• IS NOT:
• “Sporadic” or “Temporary”
• Examples:
• Semi-annual attendance at trade show insufficient
• Five year continuous (physical) presence in the district sufficient
• “[w]hile a business can certainly move its location, it must for a meaningful time period be stable,
established.”
• An employee can move his/her home out of the district without permission form the employer
would “cut against” the home being a place of business of the defendant.

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
What is “of the Defendant”?
• IS:
• A place “established” or “ratified” by the defendant (not only by the employee)
• Defendant must actually “engage in business from that location”
• IS NOT:
• Solely a place of the defendant’s employee
• Identified Considerations:
• Whether defendant owns or leases the place or exercises other attributes of possession or
control over the place
• Whether defendant conditioned employment on an employee’s continued residence in the district,
stores The nature and activity of the alleged place of business in comparison with that of other
places of business of the defendant in other venues.

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
• Unresolved Legal questions
• What relationship is required between infringement and place of business?
• Where is infringement of method claims “committed”?
• All steps performed in a single district?
• At least one step performed in a district (all steps performed in the US)?
• Blackbird Tech LLC v. Cloudflare, Inc., 2017 WL 4543783, at *4 (D. Del. Oct. 11, 2017).
• When must the defendant have a “regular and established place of business?”
• ParkerVision, Inc. v. Apple Inc. et al., No. 3:15-cv-01477 (M.D. Fla. January 9, 2018).
• Personal Audio, LLC v. Google, Inc., No. 1:15-cv-350, 2017 WL 5988868 (E.D. Tex. Dec.
1, 2017)
Open Questions…

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
• Unresolved Factual Questions
• “Physical Place”: Gap between “virtual spaces”/“electronic communications” and “formal
office or store”
• “Regular and Established”: Gap between a 5-year continuous presence and bi-annual trade
shows
Open Questions…

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
• Where is the case likely to be transferred after a venue challenge?
• Transfers for docket overcrowding
• MEC Resources v. Apple, No. 17-cv-00223, slip op. at 8-9 (D. Del. Sept. 15, 2017).
STRATEGIC CONSIDERATIONS

SEGMENT 2:
Glenn E. Forbis
Principal
Harness Dickey
Filings in ED TX Predictably Fall After TC Heartland
312 293
138 123 127
129 215
211 222 215
53
90
107 77 95
25
57
67 68 90
433
468
467 493 441
0
200
400
600
800
1000
1200
Q1 2017 Q2 2017 Q3 2017 Q4 2017 Q1 2018
CasesFiled
Quarter / Year
PATENT LITIGATION
2017-2018
ED TX D Del CD CA ND CA All Other
** Data from LexMachina

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Talking Points
• Venue as to foreign corporations – what, if any, venue statute applies?
• Has TC Heartland impacted Plaintiffs’ filing strategies against foreign defendants with
U.S. subsidiaries?
• Federal Circuit’s recent decision in In re HTC Corp.

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – TC Heartland’s Fn. 2

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – 28 U.S.C 1391(c)
Residency. For all venue purposes—
(1) a natural person, including an alien lawfully admitted for permanent residence in
the United States, shall be deemed to reside in the judicial district in which that person
is domiciled;
(2) an entity with the capacity to sue and be sued in its common name under
applicable law, whether or not incorporated, shall be deemed to reside, if a
defendant, in any judicial district in which such defendant is subject to the
court's personal jurisdiction with respect to the civil action in question and, if a
plaintiff, only in the judicial district in which it maintains its principal place of business;
and
(3) a defendant not resident in the United States may be sued in any judicial
district, and the joinder of such a defendant shall be disregarded in determining where
the action may be brought with respect to other defendants.

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – 28 U.S.C 1391(c)
• TC Heartland addressed whether 28 U.S.C § 1391(c), and specifically § 1391(c)(2),
applied to the patent venue statute 28 U.S.C. § 1400(b)
• The Supreme Court’s answer: NO
• Respondents and amici argued that if 28 U.S.C § 1391(c) did not apply to the patent
venue statute, then a loophole could be created for foreign corporations
• SCOTUS declined to address the impact of its TC Heartland decision on venue as
to foreign defendants or related arguments made by the parties

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations - Timeline

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – Brunette
Brunette: then 1391(d) codified long-standing rule that an alien may
be sued in any district; not a venue restriction at all
28 U.S.C. § 1391(d): “An alien may be sued in any district.”

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – Brunette

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – Impact of TC Heartland
• TC Heartland significantly reduced the number of available venues for many domestic
defendants (state of incorporation or REPB)
• But applying Brunette, foreign defendants may still be sued anywhere
• What happens to cases involving related domestic and foreign defendants?

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – Impact of TC Heartland
• 3G Licensing, S.A., et al. v. HTC Corporation, et al., 1:17-cv-83-LPS (D. Del.)
• 3G Licensing sued HTC Corp. (Taiwan corporation) and HTC America (U.S.
subsidiary incorporated and headquartered in Seattle, WA) in Jan. 2017
• Post-TC Heartland, HTC moves to dismiss for improper venue or in the alternative
to transfer to W.D. Wash. under either § 1404 or § 1406
• Plaintiffs urged the Court to simply dismiss HTC America and allow Plaintiffs to
proceed against HTC Corp. only instead of transferring the case to W.D. Wash.
• Judge Stark’s Dec. 19, 2017 order:
• Venue improper as to HTC America
• Venue proper as to HTC Corp., relying on Brunette and 28 U.S.C. §1391(c)
• Allowed Plaintiffs to file their Third Amended Complaint (against HTC Corp.
only)

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – In re HTC Corp.
• HTC Corp. filed a petition for writ of mandamus on the issue of proper venue for foreign
corporations:
• Does the general venue provision, 28 U.S.C. § 1391(c)(3), apply to patent cases?
• Is Brunette still applicable after TC Heartland recognized that it interpreted the “then
existing statutory regime”?
• Should § 1400(b) apply to foreign defendants in patent cases?

SEGMENT 3:
Philip Ou
Of Counsel
Paul Hastings LLP
Venue as to Foreign Corporations – In re HTC Corp.
• Federal Circuit issued a lengthy opinion last week denying the petition and reaffirming
Brunette:

SEGMENT 4:
Founding Principal
DISCLAIMER
• Any views expressed in this presentation are my own and do not reflect those of my firm
or others associated with my firm. These materials have been prepared solely for
educational purposes. These materials are not individualized legal advice and do not
establish any form of attorney-client relationship with myself or Hudnell Law Group.
Although the materials are believed to be accurate, to the extent that there are errors or
omissions, liability for such errors or omissions is expressly disclaimed.

SEGMENT 4:
Founding Principal
28 U.S.C. §1400(b)
• 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.

SEGMENT 4:
Founding Principal
TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct.
1514 (2017).
• TC Heartland, Indiana Co. with no principal place of business in Delaware, moved to
transfer or dismiss case to S.D. Ind.
• “We therefore hold that a domestic corporation ‘resides’ only in its State of incorporation
for purposes of the patent venue statute.” Id. at 1517.

SEGMENT 4:
Founding Principal
Realtime Data LLC v. Nexenta Systems, Inc., CV 2:17-07690 SJO
(C.D. Cal. Jan. 23, 2018).
• Nexenta, a California Co., with principal place of business in Santa Clara moved to
dismiss for improper venue. No regular and established place of business in CDCAL.
• Court reasoned that patent venue is a district-specific trait.
• Court determine that under 1400(b) a corporate defendant resides only in state of
incorporation and, within that state, only in the judicial district in which maintains it
principal place of business.
• Court rely on Stonite Prods. v. Melvin Lloyd Co. , 315 U.S. 561 (1942).

SEGMENT 4:
Founding Principal
28 U.S.C § 109 (predecessor to 28 U.S.C. § 1400(b))
• In suits brought for the infringement of letters patent the district courts of the United
States shall have jurisdiction, in law or in equity, [1 ] in the district of which the defendant
is an inhabitant, or [2] in any district in which the defendant, whether a person,
partnership, or corporation, shall have committed acts of infringement and have a
regular and established place of business.

SEGMENT 4:
Founding Principal
Stonite Prods. v. Melvin Lloyd Co. , 315 U.S. 561 (1942).
• Stonite Products Co. “an inhabitant of the Eastern District of Pennsylvania without a
regular and established place of business in the Western District” of Pennsylvania.
• Stonite sued jointly with Lowe Supply Co., an inhabitant of the WDPA.
• Supreme Court hold that patent venue statute is the exclusive provision controlling
venue is patent infringement actions, not general venue statute.

SEGMENT 4:
Founding Principal
Realtime Data LLC v. Nexenta Systems, Inc., CV 2:17-07690 SJO
(C.D. Cal. Jan. 23, 2018).
• Court persuaded by fact that Supreme Court referred to Stonite as inhabitant of EDPA.
• Section 109 was intended to limit broader venue statute. If the Supreme Court
understood inhabitance to be entire state of incorporation, then patent venue statute
would not be narrower than general venue statute.
• Court persuaded by the fact that Supreme Court reversed the Court of Appeal, instead
of remanding case to district court.

SEGMENT 4:
Founding Principal
Diem LLC v. BigCommerce, Inc., 6:17-CV-00186, 2017 U.S. Dist.
LEXIS 117602 (E.D. Tex. Jul. 26, 2017).
• BigCommerce moved to dismiss for improper venue arguing that venue was not proper
in EDTX because it had no place of business in EDTX.
• BigCommerce is a Texas corporation with a principal place of business in WDTX.
• “This Court holds that a domestic corporation resides in the state of its incorporation
and if that state contains more than one judicial district, the corporate defendant resides
in each such judicial district for venue purposes.” Id. at *4.

SEGMENT 4:
Founding Principal
Diem LLC v. BigCommerce, Inc., 6:17-CV-00186, 2017 U.S. Dist.
LEXIS 117602 (E.D. Tex. Jul. 26, 2017).
• EDTX reason that BigCommerce reliance on Stonite misplaced.
– Stonite did not consider domestic corporations inhabits every district in the state
• EDTX reason that Supreme has held twice that residence means state of incorporation.

SEGMENT 4:
Founding Principal
In re BigCommerce, Inc.,
Case No. 2018-1220 (Fed. Cir.).
• BigCommerce’s argument on mandamus:
• The statute says “the district.”
• Because Stonite determined that patent venue statute was exclusive provision for
venue, then it must mean that venue is where company has principal place of business
otherwise it would not conflict with general venue statute.
• Inhabitant means the same thing as resident and the Supreme Court has already
construed inhabitant to mean where principal place of business is.

SEGMENT 4:
Founding Principal
Case No. 2018-1220 (Fed. Cir.).
• Diem’s responsive argument on mandamus:
• The statute must cover situations where Co. has no physical presence in state.
– TC Heartland decided where domestic corporation resides for purpose of venue statute, therefore applicable to single district
states and multi-district states.
• BigCommerce misapplies Stonite.
– Stonite courts did not address first prong for patent venue, which is where Co. inhabitates. They only dealt with the second
test, whether the accused infringer had a regular and established place of business in the district.
• “Inhabitance” means the same thing as “residence” but only as to the pre-Fourco definition of
citizenship, which means domicile.

SEGMENT 4:
Founding Principal
Case No. 2018-1220 (Fed. Cir.).
• BigCommerce’s reply argument on mandamus:
• The statute says “the district.”
– TC Heartland merely limited “residence” to state of incorporation as opposed to wherever it could be found
• Galveston rejected notion that Co. inhabit every district of state where it is incorporated.
• Fourco intended to make clear that Co. cannot be resident or inhabitant of district other
than state where it is incorporated.
• Stonite courts did consider first prong of patent venue statute.

SEGMENT 4:
Founding Principal
Galveston v. Gonzales, 151 U.S. 496, 503-504 (1894).
• “These cases must be regarded as establishing the doctrine that a domestic corporation
is both a citizen and an inhabitant of the State in which it is incorporated; but in none of
them is there any intimation that, where a State is divided into two districts, a
corporation shall be treated as an inhabitant of every district of such State, or of every
district in which it does business, or, indeed, of any district other than that in which it has
its headquarters, or such offices as answer in the case of a corporation to the dwelling
of an individual.”

SEGMENT 4:
Founding Principal
FOURCO v. TRANSMIRRA, 353 U.S. 222, 226 (1957).
• Supreme Court consider whether 28 U.S.C. §1400(b) is sole provision for determining
patent venue or whether is it supplemented by 28 U.S.C. §1391 (c).
• “(2) "Words in subsection (b) 'where the defendant resides' were substituted for 'of
which the defendant is an inhabitant'" because the "Words 'inhabitant' and 'resident,' as
respects venue, are synonymous" [we pause here to observe that this treatment, and
the expressed reason for it, seems to negative any intention to make corporations
suable, in patent infringement cases, where they are merely "doing business," because
those synonymous words mean domicile, and, in respect of corporations, mean the
state of incorporation only. See Shaw v. Quincy Mining Co., 145 U.S. 444”

SEGMENT 4:
Founding Principal
Source: http://lrclaw.com/dbci-jim-green-revisits-tc-heartland-one-year-later/

SEGMENT 4:
Founding Principal
Practical Considerations in Improper Venue Cases
Post-Transfer
• Non patent local rules jurisdiction to patent rules jurisdiction.
• Update infringement and/or invalidity contentions.
• Scheduling Markman hearing / revisiting previous Markman order.

Q&A:
► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your
screen. Type your question in the box that appears and click send.
► Questions will be answered in the order they are received.
Jonathan A. Choa
Partner
jchoa@potteranderson.com
(302) 984-6189
Philip Ou
Of Counsel
Paul Hastings LLP
philipou@paulhastings.com
1(650) 320-1858
Glenn E. Forbis
Principal
Harness Dickey
gforbis@hdp.com
(248) 641-1249
Founding Principal
lewis@hudnelllaw.com
(650) 564-7720

Key Discussion Points:
► The speakers will summarize the key takeaways of their presentations.
Jonathan A. Choa
Partner
jchoa@potteranderson.com
(302) 984-6189
Philip Ou
Of Counsel
Paul Hastings LLP
philipou@paulhastings.com
1(650) 320-1858
Glenn E. Forbis
Principal
Harness Dickey
gforbis@hdp.com
(248) 641-1249
Founding Principal
lewis@hudnelllaw.com
(650) 564-7720

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