Improper Venue

  • [Not Covered, Generally] “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). See TC Heartland (U.S. 05/22/2017) (“a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute”); Andra (Fed. Cir. 08/03/21) (Victoria Secret store employees in District not agents of brand corporate entities); In re Cray (Fed. Cir. 09/21/17) (no “regular and established place of business” in EDTX where sales executive worked from home in District but had no products or sales literature in home; “three general requirements relevant to the inquiry: (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.”); In re Micron Tech. (Fed. Cir. 11/15/17) (TC Heartland was a change in the law such that the venue objection previously was not “available to” the defendant and its failure to include venue in its motion to dismiss did not waive that defense, but remanding for trial court to determine if otherwise waived). ; In re ZTE (Fed. Cir. 05/14/18) (holding that when a defendant moves to challenge venue in a patent case, the plaintiff bears the burden of establishing proper venue); In re HTC Corp. (Fed. Cir. 05/09/18) (order denying writ of mandamus; determining 1400(b) does not apply to aliens); Celgene (Fed. Cir. 11/05/21) (clear description of Hatch-Waxman process; aff’g no venue for Hatch-Waxman Act lawsuit because defendants did not commit acts of infringement in the forum or have a regular and established place of business there; notice letter is not part of the “infringing” ANDA submission); Valeant Pharma. (Fed. Cir. 11/05/20) (“in cases brought under 35 U.S.C. § 271(e)(2)(A) [Hatch-Waxman Act], infringement occurs for venue purposes only in districts where actions related to the submission of an Abbreviated New Drug Application (“ANDA”) occur, not in all locations where future distribution of the generic products specified in the ANDA is contemplated”). Section 1400(b) does not apply to third-party counterclaim defendant as it is not a “defendant.” BASF (Fed. Cir. 03/15/22) (aff’g venue proper as to third-party counterclaim defendant). See Patently O (11/06/20) (discussing Valeant).

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