2017 3Q Patent Filings Analysis: About Those Delaware Filings …

There’s a scene towards the end of 2010 where Dr. Floyd (Roy Scheider) looks out the window of the Leonov and sees that the colors of the planet Jupiter are … fading.  He doesn’t know why, but he knows it’s really, really significant.

I was reminded of the look on Roy Scheider’s face last night when I began looking at two reports that are now out analyzing the patent case filings for the third quarter of 2017.

You won’t believe who edged out Delaware in new patent filings the last three weeks of September.  And I think I know why.

Time is what prevents everything from happening at once. Lately it doesn’t seem to be working

My calendar knew that I am speaking at three events in the upcoming week on the effect of TC Heartland, but somehow it didn’t see fit to tell me.  So let me flag a couple in case you’re in the neighborhood, as well as mention a fourth presentation at the upcoming ILT IP conference in Plano in November:

Midwest IP Institute – Friday, Sept. 29 – 1:15 pm – I am on a panel at the Midwest IP Institute in Minneapolis.  As our panel follows CAFC Judge Jimmie Reyna, who was on the panel in In re Cray, we might have more insights than we’re currently aware of.

If you haven’t been to this event, the Minnesota Bar’s CLE conference facilities in the City Center Mall are the best I’ve ever seen.  I spoke there a few years back and am really looking forward to returning – with I could be there for both days, but there are claims that must be construed …

EDTX Bench/Bar – Thursday, October 5 – I’ve already posted on this one, but we have a great panel on the effect of TCH (and now In re Cray) to kick off the bench bar Thursday morning.  I’ll be moderating a panel consisting of

  • Judge Leonard Davis, Fish Richardson;
  • Dean Brad Toben, Baylor Law School;
  • Ted Stevenson, McKool Smith;
  • Wesley Hill, Ward, Smith & Hill, PLLC; and
  • Thomas J. Meloro, Willkie, Farr & Gallagher, LLP

We are hard at work making sure we have all the best analysis for attendees.

I’m also presenting on the same topic at the Institute for Law & Technology’s 55th Annual Conference on Intellectual Property Law in Plano, which I am co-chairing with Brian Gaffney of AT&T this year.  The conference will be November 13-14, and I’ll post more when – well, when next week is over.

Walking Back Cordis: Federal Circuit Grants Petition for Writ of Mandamus in Raytheon v. Cray

This morning the Federal Circuit granted the petition for mandamus in the Cray v. Raytheon case.  First of all, congratulations to my cocounsel at Fenwick & West for obtaining that great result for our client Cray.

I have a brief analysis of the opinion and a copy for readers below, with some analysis on the decision’s “physical” analysis that may be of interest.

Motion to Dismiss Alleging Improper Venue Denied; Motion to Transfer Granted

The issue of whether venue is proper in a patent case post-TC Heartland turns most often on the court’s analysis of whether the defendant has a “regular and established place of business” in the district.  A recent opinion by Judge Gilstrap, applied his four-factor test set forth in Raytheon v. Cray before considering the defendant’s alternative motion to transfer based on convenience.

But the Court’s analysis in this case underscores something I say a lot, which is that it’s shortsighted to view venue statutes in isolation.  The venue statutes enacted by Congress set for a coherent multistep scheme for determining where a case will be tried. The first step involves an initial Congressional decision as to which federal districts a case may be brought in.  The second – what I refer to frequently as a “safety valve” – involves a judicial determination whether a case that is brought in an district of proper venue should nonetheless be transferred to another district for convenience reasons.   Given that motions to transfer are granted at a very nearly exactly 50% rate in EDTX over the last three years, the interaction between these two inquiries bears more attention than it gets – because just because a case is filed here doesn’t mean it will be heard here.

Another Post-TCH Waiver Data Point

Another flavor of waiver argument post-TC Heartland is when a defendant files its motion to dismiss under FRCP 12(b)(3) after filing its answer, in violation of the requirements of Rule 12(h).  The question presented to yet another an Eastern District court earlier this week is whether raising the improper venue defense in the answer preserved the party’s ability to file a motion after the answer was filed. 

Outlining the Contours of Waiver Post TC Heartland

As readers are aware, a lot of pixels have been devoted in recent weeks to identifying when a motion to dismiss for improper venue asserting the Fourco argument pursuant to the Supreme Court’s recent decision in TC Heartland has been waived for failure to assert it when required under Rule 12(b)(6).  A recent report and recommendation by Judge Payne addressed this issue in a specific set of circumstances I had not seen in an order previously.

Motion to Dismiss for Improper Venue Granted

This is a patent infringement case filed last fall.  By February of this year, only one defendant was left.  That defendant challenged venue in its answer, and five days after the scheduling conference TC Heartland came out.  The remaining defendant filed a motion to dismiss for improper venue shortly afterwards.  Judge Love’s opinion granting the motion addresses a the proffered waiver argument, as well as the plaintiff’s claim that the motion should be denied because multidistrict litigation was “imminent.”