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IPO Daily News™

Wednesday, 16 May 2018 8:10 am

Federal Circuit Summaries Logo

* * DISTRICT COURT ERRED IN DISMISSING PATENT SUIT FOR LACK OF PERSONAL JURISDICTION

M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., 16-1771 — On Monday in an opinion by Judge HUGHES, the Federal Circuit overturned a district court’s dismissal of M-I Drilling’s suit. The patents claimed “methods, systems, and apparatuses used in the collection, conveyance, transportation, and storage of drilling waste created around undersea oil wells.” The district court found that DAL’s contract with a Brazilian company to install and operate pneumatic conveyance systems aboard ships was insufficient to show that it had “purposefully avail[ed] itself of the privilege of conducting activities within the United States” to establish personal jurisdiction under the federal long-arm statute.

The Federal Circuit said the district court erred by focusing on the contract rather than on the “nature and extent of the commercialization of the accused products or services.” DAL had installed and continued to operate its systems on U.S.-flagged ships after M-I Drilling had notified it about the alleged infringement. This was sufficient to establish that DAL had “purposefully directed its activities at the United States,” and DAL had failed to show that subjecting it to personal jurisdiction would offend due process considerations.
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* * VENUE PROPER IN ONLY ONE JUDICIAL DISTRICT IN PATENT SUITS AGAINST CORPORATIONS

In re: BigCommerce, Inc., 18-120 — Yesterday in an opinion by Judge LINN, the Federal Circuit vacated a district court’s denials of BigCommerce’s motions to dismiss one patent infringement suit and transfer another. Diem LLC and Express Mobile, Inc. each sued BigCommerce for infringement in the Eastern District of Texas. BigCommerce argued that venue was improper because it was headquartered in the Western District and had no place of business in the Eastern District. The district court denied both motions, explaining that under 28 U.S.C. § 1400(b), a corporation “resides” in “every judicial district within its state of incorporation.”

The Federal Circuit disagreed. “[T]he statute’s language, history, purpose, and precedent” supported the conclusion that venue is proper in only one judicial district in the state of incorporation. “[F]or purposes of determining venue under § 1400(b) in a state having multiple judicial districts, a corporate defendant shall be considered to ‘reside’ only in the single judicial district within that state where it maintains a principal place of business, or failing that, the judicial district in which its registered office is located.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

SPONSOR OR EXHIBIT AT THE IPO ANNUAL MEETING

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HOUSE JUDICIARY TO HOLD USPTO OVERSIGHT HEARING

The House Judiciary Committee will hold a hearing on “Oversight of the United States Patent and Trademark Office” next Tuesday, 22 May at 10:00a.m. ET. USPTO Director ANDREI IANCU will testify. The meeting will be held in 2141 Rayburn House Office Building. It will be webcast.