Today, the Supreme Court issued its much anticipated opinion in TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341, 581 U.S. ___ (2017). In an 8-0 decision authored by Justice Thomas, the Court reversed the Federal Circuit’s denial of a petition for a writ of mandamus on a transfer motion from the District of Delaware and held that the definition of a domestic corporation’s “reside[nce]” for the purposes of patent venue under 28 U.S.C. §1400(b) refers only to the state of incorporation. Prior to today’s decision, courts had been applying a broader definition of “residence” for patent venue purposes which encompassed any judicial district in which a defendant is subject to the court’s personal jurisdiction.
The patent venue statute, 28 U.S.C. §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” However, the general venue statute, 28 U.S.C. §1391, currently provides that “[f]or all venue purposes,” a corporation “shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court’s personal jurisdiction.” The Court rejected the Federal Circuit’s interpretation of §1400(b) that incorporates the broader definition of corporate “residence” contained in §1391(c). Slip Op. at 1.
The Court relied heavily on Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 229 (1957) where the Court held that §1400(b) “is the sole and exclusive provision controlling venue in patent infringement actions, and … is not to be supplanted by … §1391(c).” In reaffirming Fourco’s holding, the Court overruled the Federal Circuit’s 1990 decision in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1578 (Fed. Cir. 1990), which held that 1988 amendments to § 1391(c) rendered the broader venue provision applicable to patent cases.
The Court, in finding that neither the 1988 amendment nor a subsequent 2011 amendment to § 1391(c) affected the exclusivity of § 1400(b) for determining venue in patent cases, held that Congress “ordinarily provides a relatively clear indication of its intent” in the text of the amended provision when Congress intends to alter the meaning of a provision. Slip Op. at 8. The Court found that the current version of §1391 “does not contain any indication that Congress intended to alter the meaning of §1400(b) as interpreted by Fourco.” Id. Accordingly, the Court reversed and remanded for further proceedings consistent with its opinion. Id. at 10.
*Stephanie Kato, a Baker Botts law clerk, assisted in the preparation of this article.
The Founders' Room, located in Baker Botts' Houston office, was initially conceived in 2015 during the firm's 175th Anniversary celebration. It will serve as a living museum and chronicles the history of the firm since its founding in 1840.
"The early history of Baker Botts in many ways reflects the history of Houston, the State of Texas and the United States. Our firm has seen a civil war, a depression, two world wars, the invention of the computer, the discovery of oil in Texas and the rise of Houston as one of the great cities of the world," said Andrew M. Baker, Managing Partner of Baker Botts.
The official opening and ribbon cutting will take place at 5:30 pm CST.
Secretary James A. Baker III, a Senior Partner and the nation's 61st Secretary of State, along with firm Managing Partner, Andrew M. Baker will attend and participate in the ribbon cutting.
The Court of Appeals for the Federal Circuit has recently announced that it will hear en banc the question of whether certain decisions of the Patent Trial and Appeal Board (PTAB) that are entered at the beginning of America Invents Act (AIA) trials (e.g. at the outset of an Inter Partes Review) are reviewable on appeal. This has the potential to reshape the conduct of PTAB Trial proceedings and may alter the relationship between PTAB Trials and parallel District Court proceedings. Click here to read more from Baker Botts IP lawyers.
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Baker Botts’ international trade and renewable energy lawyers have been closely monitoring the Suniva U.S. International Trade Commission (ITC) case, and its potential impact on the global solar industry. Baker Botts’ Washington lawyers are available to discuss the likely short and long-term impact.
On May 5, 2017, the U.S. Court of Appeals for the Ninth Circuit jettisoned its precedent for pleading the falsity of statements of opinion challenged in private securities litigation, instead embracing the more demanding standard compelled by the U.S. Supreme Court’s 2015 Omnicare decision.
On May 1, 2017, Royal Dutch Shell plc (“Shell”) announced the completion of the transaction to separate the assets, liabilities and businesses of Motiva Enterprises LLC, a 50/50 joint venture with a U.S. subsidiary of Shell and a U.S. subsidiary of Saudi Aramco.
On May 1, 2017, the Federal Circuit issued its opinion in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Nos. 2016-1284 and 2016-1787 (Fed. Cir. May 1, 2017). Click to read more from Baker Botts lawyers.
Baker Botts L.L.P., an international law firm, and the Association of Corporate Counsel (ACC) Middle East, is co-hosting a panel session, “Cyber Security and the looming impact of the General Data Protection Regulation (GDPR),” at Baker Botts’ offices in Dubai on Monday, 29 May, 2017.
Baker Botts L.L.P., an international law firm, and the Association of Corporate Counsel (ACC) is co-hosting "Antitrust Fundamentals for In-House Counsel," in San Francisco on Wednesday, May 24, and in Palo Alto on Thursday, May 25. Members of the media are invited to attend.