Forum Shopping in Patent Litigation

by Fish & Richardson

This month, both the Federal Circuit and the Senate Judiciary Committee took up the issue of “forum shopping” in patent infringement suits.  Right now, a patent plaintiff can essentially file suit in the district court of its choosing.  Consequently, patent suits (especially those filed by so-called “patent trolls”) are heavily concentrated in jurisdictions considered “plaintiff-friendly.”  The most popular of these is the Eastern District of Texas.  Nearly half of all patent suits filed in 2015 were filed in the Eastern District of Texas.  The court has been called a “haven” for patent trolls because of its reluctance to make early determinations of patent invalidity and non-infringement or even to stay suits pending review of the asserted patents by the U.S. Patent and Trademark Office.

Venue in patent infringement cases is governed by 28 U.S.C. § 1400(b), which states 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.”  In 1957, the Supreme Court explained that, in patent infringement actions, a corporation “resides” where it is incorporated and held that “§ 1400 is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not supplemented by the provisions of 28 U.S.C. § 1391(c),” the general venue statute.[1]  After a 1988 amendment of § 1391(c), however, the Federal Circuit held the opposite.  Namely, in VE Holding v. Johnson Gas Appliance Co., it said that §§ 1400(b) and 1391(c) should be read together, so that a corporation accused of patent infringement is deemed to reside in every district in which it is subject to personal jurisdiction.[2]  VE Holding thus greatly expanded the venue options for patent cases.  According to its critics, it also fostered forum shopping, resulting in the current concentration of patent suits in the Eastern District of Texas.

In 2011, § 1391 was again amended (as part of the Federal Courts Jurisdiction and Clarification Act).  Not surprisingly, perhaps, the Federal Circuit is now being asked to clarify the test for venue in patent cases in light of the 2011 amendment.  TC Heartland LLC filed a mandamus petition to the Federal Circuit after the District Court of Delaware denied Heartland’s motion to transfer the suit against it to the Southern District of Indiana (Heartland’s state of incorporation and principal place of business).  On March 11, 2016, a panel of Federal Circuit judges (Moore, Linn, and Wallach) heard oral arguments on the subject.  Heartland argued that the 2011 amendment “specifically repealed” the statutory language on which the VE Holding decision relied.[3]  According to Heartland, for patent cases, the venue rules once again restrict a corporation’s residence to the state in which it is incorporated.  Federal Circuit Judge Bryson recently rejected a similar argument while sitting by designation in the Eastern District of Texas.[4]  More than two dozen companies and interest groups filed amicus briefs in support of Heartland’s petition, urging the Federal Circuit to overturn VE Holding.  Virtually all of them pointed to the Eastern District of Texas as exemplifying the negative consequences of that decision.

Respondent Kraft Foods Group Brands LLC stated that it “concurs with much of the criticism that Heartland and the amici direct to the adverse effects of forum shopping in the Eastern District of Texas by nonpracticing entities,” but stressed that its case originated in Delaware, not the Eastern District of Texas.[5]  Kraft also argued that reforming patent venue rules is a job for Congress, not the Federal Circuit (a point that seemed to resonate with the judges).

Indeed, less than a week after the hearing, a new bill was introduced in the Senate that would effectively overturn VE Holding.  The bill, called the Venue Equity and Non-Uniformity Elimination (VENUE) Act (S. 2733), proposes to do away with § 1400(b) and replace it with a series of restrictions that emphasize the presence of physical facilities related to either the development of the claimed invention or the alleged infringement.  The bill would exclude facilities maintained by plaintiffs “primarily for the purpose of creating venue.”  In the vast majority of cases, venue would not be proper in the Eastern District of Texas.  The success of the bill, of course, is uncertain, but it likely has better prospects than broader proposals to curb abusive patent litigation, as embodied by the Innovation Act (H.R. 9) and the PATENT Act (S. 1137).

[1] Fourco Glass v. Transmirra Products Corp, 353 U.S. 222, 229 (1957).

[2] See VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed. Cir. 1990).

[3] Petition for Writ of Mandamus, In re TC Heartland, 16-105, Dkt. No. 2 (Fed. Cir. Oct. 23, 2015).

[4] Script Security Solutions, L.L.C. v., LLC, 2:15-cv-1030, 2016 WL 1055827 (E.D. Tex. Mar. 17, 2016).

[5] Response, In re TC Heartland, 16-105, Dkt. No. 27 (Fed. Cir. Nov. 9, 2015).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Fish & Richardson | Attorney Advertising

Written by:

Fish & Richardson

Fish & Richardson on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.