So your patent is being infringed. What can you do about it?
Sue the bastards, of course.
But where? U.S. Federal courts have jurisdiction over patent infringement, so the lawsuit must be filed in Federal, as opposed to state, court. But which one? There are Federal courts in each U.S. state and each U.S. territory. Can you just go down the street and file suit in your local Federal court? What if your local Federal court is in Pennsylvania and the infringer is located in, say, Alaska with no local business in Pennsylvania? Patent litigation in Pennsylvania could be convenient for you but very inconvenient (read, expensive) for the infringer.
There are rules and you can’t just file suit anywhere. ‘Venue’ (that is, where a lawsuit can be filed) for patent infringement is set out in 28 USC 1400(b), which says:
Any 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.
So you, the infringed-upon patent owner, must sue the infringer where the infringer ‘resides’ or where the infringer has a ‘regular and established place of business’ and the infringer committed the infringement.
If the infringer is a human being, then where the infringer ‘resides’ has the usual meaning; that is, where the infringer is domiciled. More than likely, your infringer is not a human being and is instead a corporation or other business entity. Where does that business entity ‘reside’? The Supreme Court helped us out with that one, in TC Heartland LLC v Kraft Foods (2017). The corporation ’resides’ only where it was incorporated. So for the Alaska corporation, you must go to Federal court in Alaska to file suit.
But that’s not your only option. You can also file suit where the infringer has a ‘regular and established place of business’ and committed the infringement. This means that the infringer must have an actual business location in the district that is used for the infringer’s actual business purposes. It’s not enough that the infringer ships mail order products to the district or delivers online services to the district. It’s not enough that an employee telecommutes from the district. If the infringer has a business location in Pennsylvania and infringed in Pennsylvania, then you can file suit in Pennsylvania.
The question of where infringement occurred is murky for inventions like distributed telecommunications systems where some steps of a patent claim occur at one location and other steps occur at distant locations. In a recent case, a U.S. district court considered whether all of the steps of the infringement must occur in the same district to support venue. The district court concluded that performing any step of a patented method in a district was adequate to support venue in the district.
Venue is a crucial consideration in patent enforcement, both to manage transactional costs and for litigation strategy.
— Robert Yarbrough, Esq.