The Catholic University of America

CUA Law Professor Megan M. La Belle is a guest blogger at PrawfsBlawg this month. Her second post is titled "Forum Shopping in Patent Cases"  See below. 

Forum Shopping in Patent Cases

Megan M. La Belle
May 18, 2016

For more than a decade now, patent reform has been on Congress's agenda. Congress passed the America Invents Act (AIA) in 2011, the most comprehensive patent legislation in fifty years. Still, many believe the AIA didn't go far enough, particularly with respect to patent litigation, and have continued to push for further reform. The Venue Equity and Non-Uniformity Elimination Act--co-sponsored by Senators Flake (R-AZ), Lee (R-UT), and Gardner (R-CO)--is the latest development in this patent reform effort.

Currently, patent owners can file infringement suits against corporate defendants in just about any federal court. The patent venue statute, 28 U.S.C. section 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." (emphasis added) Because section 1400 doesn't define "resides," the definition set out in the general venue provision--i.e., that defendants "reside" where they are subject to personal jurisdiction--applies. 28 U.S.C. section 1391(c). This means that corporate defendants can be sued for patent infringement wherever they are subject to personal jurisdiction, which is virtually every judicial district in the country as long as the allegedly infringing product is sold nationwide. As a result of these liberal venue provisions, patent owners forum shop and file a disproportionate number of patent suits in certain judicial districts, such as the Eastern District of Texas where almost 44% of patent suits were filed in 2015.

The VENUE Act, which is supported by many technology companies and public interest groups, would significantly curtail where patent infringement suits may be filed. At the same time, the Act would expand venue in patent declaratory judgment actions, a topic I've addressed in my scholarship and a recent amicus brief. While a thorough discussion of the costs and benefits of the VENUE Act is beyond the scope of this post, I would like to raise two questions. First, is forum shopping (or forum selection) really that bad or is it just part of litigation strategy? Second, why should defendants in patent cases be treated differently than in other civil suits? In other words, why should we have special venue rules for patent cases?

Click here to view the entire blog.

Lisa Lerman  

Professor Megan M. La Belle's
Areas of Expertise

Intellectual Property

Civil Procedure

Federal Courts

For additional information about our professors' areas of speciality, see the Catholic University Experts page.