Developments in patent venue law in the aftermath of TC Heartland
Three years ago, the Supreme Court’s opinion in TC Heartland v Kraft Foods Group (2017) almost literally redrew the map for patent infringement litigation, shifting the permissible venues in which plaintiffs can file their suits.
The decision has led courts and litigants to focus on a provision of the patent venue statute set forth in 28 USC §1400(b) that allows venue “where the defendant has committed acts of infringement and has a regular and established place of business”.
In the three years since TC Heartland, including the past year, the latter requirement of a regular and established place of business has garnered much attention. But year three of the post-TC Heartland era also saw increasing challenges to the “acts of infringement” requirement from creative defendants looking to get out of forums where they maintain a place of business.
Three years ago, the landscape of patent litigation looked much different. Even last year, it has continued to shift. According to statistics from Lex Machina, in the year leading up to TC Heartland, the US District Court for the Eastern District of Texas (EDTX) led the county in new patent case filings, with 1,627 cases filed. The US District Court for the District of Delaware was a distant second with 550, and the US District Court for the Central District of California came third with 290.
A changing landscape
Consistent with the trends in the first two years following TC Heartland, EDTX continued its freefall from the top, with only 348 cases filed there in year three. Meanwhile, Delaware continued to fill this vacuum as the country’s busiest patent court with 868 cases, and was also home to three of the country’s four busiest patent judges.
The busiest patent judge in the country was Judge Alan Albright in the Waco division of the Western District of Texas, who alone saw 432 patent cases filed in his court last year—a 390% increase from the year before.
Texas—between the western district’s 512 total cases, EDTX’s fourth-ranked caseload, and sizable contributions from the tenth-ranked Northern District (64 cases) and the 12th-ranked Southern District (57 cases)—was the busiest state in the country for patent litigation.
Many of the year’s substantive developments in patent venue law occurred in applications of what constitutes a “regular and established place of business”.
At the US Court of Appeals for the Federal Circuit, the year’s blockbuster case was In re Google (2020), where the court held that Google’s global cache servers, located within the EDTX but installed, maintained, and hosted by third-party internet service providers, were not Google’s “regular and established place of business”.
In a holding that may have far-reaching implications, the court indicated that “a ‘regular and established place of business’ requires the regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged ‘place of business’”.
X head New questions
Several district courts, some guided by Google, faced new questions in assessing whether unique locations in a district could satisfy the statute.
In Uni-Sys v United States Tennis Ass’n Nat’l Tennis Ctr (2020), the US District Court for the Eastern District of New York found that an architectural firm, which worked on a retractable roof for the National Tennis Center’s Arthur Ashe Stadium, did not have a “regular and established place of business” at the site despite sending employees there as often as every two weeks.
Similarly, the court also held that an engineering firm involved in the project did not have a regular and established place of business at the site, for which it designed and manufactured parts for the installation, and to which it sent personnel to observe the installation and provide maintenance.
