Late last week, the Federal Circuit granted a writ of mandamus in In re Cray, 2017-129 (Fed. Cir. Sept. 21, 2017), overturning Judge Gilstrap’s four-factor test for determining whether a defendant possesses “a regular and established place of business” in a district such that the defendant could be sued for patent infringement in that district. In re Cray provides useful guidance because it is the first time since the Supreme Court’s TC Heartland decision that the Federal Circuit has weighed in on what constitutes a “regular and established place of business.” The patent venue statute, 28 U.S.C. § 1400(b), provides that venue is proper in a patent infringement lawsuit only where the defendant (1) resides or (2) has “committed acts of infringement and has a regular and established place of business.” TC Heartland clarified that a defendant “resides” only in the state in which it is incorporated. It did not address the second prong, however, which is an alternative way of establishing venue. More frequently patent owners are looking to the second prong to determine the locus of an appropriate venue now that the first prong of the statute has been interpreted narrowly.
Peter Snell is a Member in the firm and is based in the New York office. He litigates patent infringement, patent invalidity, and other intellectual property disputes in courts all across the country, including US district courts and the US Court of Appeals for the Federal Circuit. The areas of technology in which Peter has particular experience include communications systems and networking, packet switching, integrated circuits, semiconductor technology, power-line networks, RFID, electronics components, broadband applications for cable and satellite television systems, Internet and e-commerce applications, machine learning, software, business methods, and medical devices.
The Innovation Act introduced in the House on February 5, 2015 is designed to curb patent abuse, but as currently drafted it doesn’t address the worst forms of the problem. For analysis of the bill’s controversial fee-shifting provisions, read our alert here.