I am in mad scientist mode this afternoon, frantically combing my office for cases, articles, blog posts and other factoids for my paper The Effect of TC Heartland on Patent Venue for next week’s ILT seminar in Plano, and noticed this little Halloween gem from an EDTX judge on the potentially crucial issue of when you can impute a “regular and established place of business” from one corporation to another. You know, sort of like … well, you get the idea.
Today’s post celebrates the Cowboys defense’s “lites out” performance yesterday against Kansas City (okay, aside from one play) with an examination of some interesting holdings with respect to an improper venue motion in an EDTX case involving a party named … Lites Out. (I live for this stuff – you know that).
One of the points I am making in the papers I am writing and panels I am speaking on this fall re: TC Heartland is that the issue of whether venue is improper as a result of Heartland/Cray is sometimes rendered moot by the resolution of a followup 1404 motion seeking transfer. We saw another example of this in the EDTX just this week.
Plaintiff and the defendant in this pending Delaware patent case Encoditech v. Virgin Pulse, 1:17cv1283 RGA jointly sought transfer to the Eastern District of Texas, Tyler Division. In the motion the parties state:
“The Parties believe and agree that the Eastern District of Texas is a more convenient forum for many recognized reasons, including: (1) Plaintiff is incorporated and located in the Eastern District of Texas, (2) Defendant’s witnesses for the purposes of this matter are closer to Texas than Delaware, and (3) the transferee district is currently less congested than this District.”
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.
Motions to “transfer” have always often come in the form of alternative relief, with a motion to dismiss for improper venue followed by an alternative motion to transfer for convenience under Section 1404. This week gave another example of how things sometimes go better on second down than on first.
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.
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.
An issue that’s crept into recent opinions asserting improper venue post TC Heartland is which parties has the burden of showing that venue is not proper – the plaintiff or the defendant? Many cases defer deciding the issue since the outcome would be the same either way under their record, but one recent case did set out its take on the issue.
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.