Venue in Patent Suits

//Venue in Patent Suits

Venue in Patent Suits

Venue in Patent Suits

RESOLVED, that IPO confirms its support for legislation to limit venue in patent suits in order to curb forum shopping by patent owners and, specifically, IPO supports an amendment to 28 U.S.C. § 1400(b) to limit venue to a judicial district as follows:

(A) In a patent infringement action brought by a patent owner against an accused infringing defendant, venue should be limited to a judicial district:

  1. where the defendant has its principal place of business or is incorporated, or if the defendant is an individual, where the defendant resides;
  2. where the defendant has committed acts of infringement and has a regular and established physical facility where defendant’s acts of infringement have occurred;
  3. where technological activities relating to the invention that led to the application for the patent(s)-in-suit – such as inventing, substantial research and development, or manufacturing – have taken place;
  4. where a plaintiff or a subsidiary has a regular place of business, not operated primarily for the purpose of creating venue, that is engaged in substantial: (a) management of research and development or manufacturing activities for a product or process related to the patent or patents in dispute; (b) research and development of a product or process related to the patent(s) in dispute; or (c) manufacturing activities of a product or process related to the patent(s) in dispute;
  5. where the defendant has agreed or consented to be sued in the instant action; or
  6. where, for foreign defendants that do not meet any of the above, venue would be proper according to 28 U.S.C. § 1391(c)(3).

(B) In a declaratory judgment action brought against a patent owner, venue should be determined according to 28 U.S.C. § 1391.

(C) In considering a motion to transfer venue involving a retailer that sells consumer products alleged to infringe the patent(s)-in-suit, the location of such retail sales should be afforded no weight in deciding the transfer motion if they occur in all of the judicial districts under consideration.