Mar 19, 2020

Federal Circuit Provides Clarity on the Question of Whether Computer Equipment Can Serve as a Basis for Venue in Patent Infringement Actions

intellectual property law

Last year, we published an article concerning whether the presence of computer servers satisfies the “regular and established place of business” requirement for establishing proper venue in patent cases Establishing Proper Venue in Patent Cases.  In that article, we discussed the Federal Circuit’s refusal to grant a writ of mandamus filed by Google in patent litigation initiated by SEVEN Networks, LLC in U.S. District Court for the Eastern District of Texas.  In that litigation, Judge Rodney Gilstrap denied a motion by Google to transfer venue, finding that Google’s provision of Google Global Cache (GGC) servers that were owned by Google but… Read more

Jan 10, 2018

For 2017, The Supreme Court Flips the Two Busiest Patent Venues

Courtroom: Patent Venue

For years, the U.S. District Courts for the Eastern District of Texas and the District of Delaware have seen the most patent infringement cases filed by far over the several other courts spread throughout the United States.  Texas led Delaware for years, based in part on a perceived bias in favor of plaintiffs, particularly small ones – including those disparagingly referred to as “trolls” –  when going against large, multi-national defendants.  It was also generally accepted as true that the judges in Texas were reluctant to grant motions to transfer.  This led to tensions, which boiled over into angry resentment… Read more

Jul 19, 2017

Willful Patent Infringement and Enhanced Damages


Stryker and Zimmer are competitors selling devices which are a combination spray gun and suction tube for cleaning tissue during surgery. In 2010, Stryker sued Zimmer for patent infringement and a jury found that Zimmer willful infringed Stryker’s patents. The district court trebled damages and awarded $228 million based on evidence that Zimmer copied Stryker’s products and accepted the risk of legal consequences given its high-risk/high reward competition strategy. On appeal, the Federal Circuit affirmed the jury’s finding of infringement but, applying its 2007 Seagate (497 F.3d 1360 (2007)) test, vacated the enhanced damages award because Zimmer had asserted “reasonable… Read more

Jun 8, 2017

SCOTUS Clarifies Long Established Patent Exhaustion Doctrine

Printer Cartridges

On Tuesday, May 30th, in its decision in Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court provided clarity to the long-established patent exhaustion doctrine in connection with the resale of patented products, stating that a patent owner can no longer control its patented product under patent law after the authorized sale regardless of post-sale restrictions, but may restrict further sales of the product through other areas of law such as contract law. Patent exhaustion is a U.S. common law patent doctrine that limits the extent to which patent holders can control an individual article of a patented… Read more

May 25, 2017

Supreme Court Clarifies the Meaning of the Patent Venue Statute

Court Order

On May 22, 2017 the U.S. Supreme Court issued its unanimous decision in TC Heartland, LLC v. Kraft Foods Group Brands, LLC. The Court reaffirmed its 1957 decision in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957) and held that under the patent venue statute, 28 U.S.C. §1400(b), a domestic corporation “resides” only in its State of incorporation. In so ruling, the Court rejected the broader interpretation of the patent venue statute that the Federal Circuit has been applying for more than 25 years. 28 U.S.C. §1400(b) provides: “Any civil action for patent infringement may be… Read more

Dec 8, 2016

Supreme Court Rules on Design Patent Infringement Damages

Smart Phone

Supreme Court Rules on Design Patent Infringement Damages By: Joyce B. Klemmer It has been 120 years since the Supreme Court has ruled on a design patent case. On December 6, 2016, it ruled in favor of Samsung in the case Samsung Electronics Co., v. Apple Inc., No. 15-777. Apple Inc. released its first-generation iPhone in 2007. Apple secured many design patents in connection with the release. Among those patents were the D618,677 patent, covering a black rectangular front face with rounded corners, the D593,087 patent, covering a rectangular front face with rounded corners and a raised rim, and the… Read more

Jan 13, 2016

Will the Patent Venue Statute be Reinterpreted?

Heartland is an Indiana limited liability company that is not registered to do business in Delaware and does not have any regular or established place of business in Delaware. It was sued for patent infringement in the District of Delaware and its motion to dismiss or transfer the action under 28 U.S.C. §1406 was denied. In the pending Federal Circuit mandamus action it filed,  In re TC Heartland, Heartland has asked the court to reconsider its interpretation of the patent venue statute 28 U.S.C. §1400(b). For a court to adjudicate a case, it has to have jurisdiction, both personal jurisdiction… Read more