Federal Circuit: Patent Case May be Transferred to Court with No Personal Jurisdiction over Plaintiff

By Dennis Crouch

elcommerce.com v. SAP (Fed. Cir. 2014)

In a prior post, I discussed the important means-plus-function issues arising from this case. Here, I focus on the separate issues of jurisdiction and venue.

Elcommerce first filed its lawsuit in the Eastern District of Texas (TX Court). Subsequently, SAP moved for a transfer of venue to the Eastern District of Pennsylvania (PA Court). SAP’s headquarters is located within the EDPA and the district court granted the § 1404 transfer motion. On particular concern raised by elcommerce was that it had no ties with Pennsylvania and that, as a consequence, PA Court had no jurisdiction over it as plaintiff. Both the district court and the Federal Circuit rejected that argument.

The statute provides that “For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). Here, it is clear that the case could have been brought in PA Court since that is SAP’s headquarters and, according to the Federal Court, that settles the matter.

Here, in the first-filed Texas case there was personal jurisdiction over both the plaintiff elcommerce and the defendant SAP, and elcommerce as plaintiff was subject to the declaratory counterclaims filed by SAP in Texas. This jurisdiction was preserved when the entire action was transferred to Pennsylvania under §1404(a).

The court previously found this same result in the case of In re Genentech (Fed. Cir. 2009). There, the court stated that “[t]here is no requirement under §1404(a) that a transferee court have jurisdiction over the plaintiff or that there be sufficient minimum contacts with the plaintiff.”

7 thoughts on “Federal Circuit: Patent Case May be Transferred to Court with No Personal Jurisdiction over Plaintiff

  1. 3

    From a civil procedure perspective, I believe there is nothing unique about this case and that has long been the rule. Not the greatest grounds to appeal on.

    1. 3.1

      Can you say more or provide some background citation? It seems somewhat troubling to send a case to a court with no personal jurisdiction over one of the parties.

      1. 3.1.1

        I think a distinction here is that there is in fact personal jurisdiction – it carries from the plaintiff’s case (plaintiff as original plaintiff and original plaintiff as defendant) in Texas.

        Read carefully how the court distinguishes the Pennsylvania case used by elcommerce.

        That’s why I noted that it is interesting how claim and counterclaim are being bundled.

  2. 2

    I wonder if the result would have been different if the plaintiff actually had employees working in their vacant office in EDTX and/or at the local UPS Store.

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