Support for Mandamus Action to Limit Patent Forum Shopping

Last week I discussed the TC Heartland mandamus petition here and here. Two amicus briefs have now been filed in support of the petition.

The basic issue is whether the particular limits on patent venue spelled out in 28 U.S.C. 1400(b) should be given effect in the face of broader venue allowances in the more generalized Section 1391(c).

1400(b) reads:

(b) 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.


For the past several decades, the court has applied the broader statute 1391(c), and permitted venue so long as the district court has personal jurisdiction over the defendant.  That application has opened the door to venue in E.D. Texas even when the defendant has no place of business there.

John Vandenberg’s team at Klarquist has filed a brief on behalf 24 companies many of which are oft-sued in the E.D. Texas, including Asus, Google, eBay, LinkedIn, NewEgg, SAP, SAS, etc.

The analysis … must start by asking whether this special patent venue statute, standing alone, limits a domestic corporation’s residence to its state of incorporation. The answer is yes: “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only” for a corporation. (quoting the Supreme Court Fourco decision). . . .

The analysis turns next to the current general venue statute. The question is whether it supersedes this restrictive definition of domestic corporation residence in the special patent venue statute. The answer is that it does not [because the]  current general venue statute expressly subordinates itself to the special venue provisions.

On the policy side, the Amici first highlight the recent John Oliver show ridiculing the E.D. of Texas patent litigation.  The amici then make the argument that forum shopping should not be allowed because it “allows patent owners to choose the forum least likely in our country to allow a speedy or low-cost determination of invalidity or non-infringement. . . . This does not merely disadvantage individual defendants. It undermines the public policy favoring strict scrutiny of issued patents. . . . [H]aving 40% of patent suits in a single district not only burdens individual defendants, it also defeats core public policies of our patent system.”

The Electronic Frontier Foundation (EFF) and Public Knowledge also filed a joint brief in support of mandamus. EFF highlights Judge Moore’s earlier work (then as Professor Moore) where she wrote that extensive forum shopping “conjures negative images of a manipulable legal system in which justice is not imparted fairly or predictably.” Kimberly A. Moore, Forum Shopping in Patent Cases: Does Geographic Choice Affect Innovation?, 79 N.C. L. Rev. 889 (2001).  The brief also highlights a new work by Daniel Klerman & Greg Reilly entitled Forum Selling that argues “judges in the Eastern District have consciously sought to attract patentees and have done so by departing from mainstream doctrine in a variety of procedural areas in a pro-patentee (pro-plaintiff) way.” Neither Moore nor Klerman/Reilly make the 1400(b) argument, but both suggest that forum shopping – when taken too far – is a problem.


Kraft’s brief in opposition is due November 9.

58 thoughts on “Support for Mandamus Action to Limit Patent Forum Shopping

  1. 11

    Citing the John Oliver Show – a person paid to heap score and ridicule – IMHO is counter productive. But, at least it demonstrates how the serial infringers, are manufacturing outrage – and attempting to drive (uninformed) public opinion into anti-patent froth.

  2. 10

    If I were the Federal Circuit, I would like to know just how restoring 1400(b) to its prior state would actually affect most patent litigation. It is not as if 1400(b) restricted venue only to the place of incorporation or principal place of business of a corporation. It does not. It also allows venue where a corporation has a regular and established place of business and has committed acts of infringement. This would seem to permit venue in most district courts in the United States with respect to most patents and most big companies, particularly big international companies having domestic subsidiaries.

    Also consider that the Supreme Court has repeatedly held that the patent venue statute does not apply to foreign corporations. They rather can be sued anywhere in the United States. Thus this exercise is somewhat academic to big international infringers.

    Smaller companies do not do business throughout the United States. They might be protected by restoration of the patent venue statute to its prior state.

    But I do not think it would change very much with respect to big business.

    1. 10.1

      The assumption that this issue is all about the wishes of “big corp” is a poor one. And it’s always been a “poor one.”

      Let’s say the restoration of 1400(b) changes nothing for a few multinational giant businesses who have a place of business in every state and who, when they infringe a patent, infringe it everywhere. So what?

      The problems associated with the present situation still remain, and that’s even if we set aside the bizarre broken state of our patent system where somehow every multinational corporation that uses computers is regularly accused of infringing some cl0wn’s twenty year old junk patent.

      1. 10.1.1

        MM, but what they, big corporations, really want is to stay out of patent friendly courts that try to get to trial fast and that do not permit defendants to law and motion the patentee to extinction.

        After, Octane Fitness, 101-junk patents are history, IMHO. What we are left with are otherwise legitimate patents and infringers who do not want to take out licensees in what is now known as “efficient infringement” (stall, ignore, show the door…).

        (Now if they are infringing solely because of functional claims, perhaps that too could become a gateway issue if the Federal Circuit would just help a bit in this area.)

      2. 10.1.2

        MM, regarding suing on junk and making money, see link to

        On Tuesday, this clash of perceptions returns to the Court, with review of the latest class-action dispute, Tyson Foods v. Bouaphakeo. The core of the disagreement is whether everyone joined in the suing class must prove, individually, that he was harmed by the claimed misconduct that is the common target.

        In decision after decision, a majority of the Court has shown deepening skepticism about lawsuits technically known as “class actions.”

        To several of the Justices, such group challenges are seen as blunt instruments for forcing companies to settle to avoid the cost of a trial, even if they might win on the merits, and as an easy way to handsomely reward class-action attorneys.

        The company brief turns the second question, on the claimed lack of injury, into a broad attack on the verdict by asserting a constitutional violation in allowing them to sue without proof of individual injury, a basic requirement for the right to sue under Article III.

        [Compare IPRs … because there is no standing, anyone can file and short the target company’s stock or evade the requirements of 315, and there is no appeal, either by the petitioner or by the patent owner.]

    2. 10.2

      There is case law on the terms in that venue statute from long before the Fed. Cir. decided to hold it irrelevant and ineffective, and “a regular and established place of business” does not mean just a P. O. Box or an occasional visiting traveling sales or repair person, or a product delivery, in a district.

      1. 10.2.1

        Knapp-Monarch Co. v. Casco Products Corp., 342 F. 2d 622 – Court of Appeals, 7th Circuit 1965 link to (“The activities of the sales representative of defendant as outlined above fall far short of constituting or creating a ‘regular and established place of business’ in this judicial district of the defendant within the meaning, purpose and intent of said statute.”)

        In re Cordis Corp., 769 F. 2d 733 – Court of Appeals, Federal Circuit 1985 link to (A defendant has a regular and established place of business when the defendant does business in that district through a permanent and continuous presence there, and not… whether it has a fixed physical presence in the sense of a formal office or store.)

  3. 9

    Further re: “I fear for the small practicing entity who must sue in several districts when there are several alleged infringers.” [Especially if they have the same or very similar infringement issues in addition having to the same validity issues.]
    As understood, one possible option is multidistrict litigation (MDL), a special federal judicial procedure per 28 U.S.C. § 1407. For “civil actions involving one or more common questions of fact are pending in different districts.” Reportedly the Judicial Panel on Multidistrict Litigation decides whether cases should be consolidated under MDL, aand if so, where the cases should be transferred. Cases subject to MDL are sent from one court, known as the transferor, to another, known as the transferee, for all pretrial proceedings and discovery. If a case is not settled or dismissed in the transferee court, it is remanded (that is, sent back) to the transferor court for trial.
    Does anyone want to discuss this further?

      1. 9.1.1

        I assume you mean 35 U.S.C. 299 Joinder of parties, and that is an interesting question.

    1. 9.2


      You posted while I was working on a reply to Jane at below. Unfortunately, that’s all I know.

    1. 8.1

      Edstirling, the juristic person of a corporation does indeed reside – in the legal meaning of that word (reside).

  4. 7

    The old “manipulable” forums used to be Delaware (state of incorporation) and S.D.N.Y. (headquarters). Then the “rocket docket” in Virginia became trendy (time to trial), followed by the ITC (crushing discovery). Plaintiffs then discovered that the Eastern District of Texas is a favorable venue, and many defendants have yet to discover that they can avoid that venue by not doing business in that tiny market.

    Other defendants are turning to IPRs to shift forum shopping in their favor, unless they are satisfied with the district where they have been sued. Change the venue statutes all you want, but there will always be forum shopping.

    1. 7.1

      I think people forget that Plano, Texas is in the Eastern District of Texas. I always find that interesting, as no patent suits seem to ever be filed in that division.

  5. 6

    You know your court is corrupt when a company, out of the goodness of its own heart, makes an outdoor ice skating rink right outside your courthouse in TEXAS.

    1. 6.1

      It’s nice to see briefs from organizations like EFF speaking more bluntly and directly about the EDTex than others can.

      1. 6.1.1

        DCL, the EFF brief is simply a rant.

        Primarily is a rant against the Eastern District of Texas because it favors patent owners. It cites one case where the patents involved were declared invalid in the Central District of California and then objects that the rest of the cases of this patent owner not filed there as if that made any sense at all.

        It also says that startups and small companies are most harmed by the Eastern District. Let me tell you something about that – startups favor the Eastern District by overwhelming numbers because it is in favor of patent owners precisely because startups need the enforceability of patents.

        What has harmed the small businesses that have been sued is the AIA statute that prevents multiple parties being sued in one complaint. Prior to that small companies could piggyback from one end of a case to the other on the backs of big pockets defendants that were defending the case. So long as one of these remained they did not have to settle.

        But that option was removed by the AIA. Why it was removed I don’t know except that its removal only favored big companies and was massively unfavorable to patent owners.


          You might not agree with EFF’s arguments, but they do make actual arguments, and I don’t think it’s fair to describe the brief as a “rant”.

          In Section A, EFF points out that EDTexas has a massive share of patent litigation that can only be explained by EDTexas favoring patent plaintiffs… and then EFF points out some of the rules that those judges have and why they favor patent plaintiffs. You don’t seem to take issue with that.

          In Section B, Eclipse had a bunch of claims in CDCal, lost there with an opinion suggesting that Eclipse was filing strike suits, then moved on to file further suits in EDTexas. I suppose any repeat litigant who gets a bad result in one court will want to file somewhere else, but EDTexas wasn’t chosen at random. It’s just an anecdote, but suggests that strike-suit plaintiffs go to EDTexas when they’re looking for a good forum.

          In section C, when EFF talks about the burdens on startups and small businesses, it pretty clearly means defendants and probably should have said so explicitly. I don’t have much experience with the piggybacking you describe, so I don’t know if it actually helped small company defendants.


            DCL, but, methinks, you turn a blind eye to how big client the firms litigate. Law and motions to the extreme, not only feathering their own nest, but in an effort to force the patent owner to say uncle especially if they are not well-financed. And just prior to trial, these big firms typically recommend to their clients that they settle.

            I think the Eastern District will not permit such abusive litigation as a matter of course. While this may be perceived as being entirely in favor of the patent owner, what it is, I think, an effort by the Eastern District to restrain the common and extreme way big firms litigate.

            It is not by accident that patent owners choose forums for litigation which get to trial quickly. They know that big client firms do not want to actually try cases, but they want to maximize law and motion expenses for their own benefit. Thus getting into a forum which forces trial as early as possible is not any interest the big firms. Thus they kick a lot of mud on such courts, blaming these courts and patent owners for being unfair to them.

            Well boo-hoo.

            The problem of forum shopping should remain focused on inconvenient forums to all parties. This is a legitimate concern. But with big international business, there is no particular forum in the United States that is inconvenient. Furthermore, if the form is inconvenient in actual fact, a transfer motion probably will be granted either directly by the court or on mandamus of the Federal Circuit.

            But attack on particular district courts for being patentee friendly can be viewed in the light that the patent owners want stop the big pockets defendants from playing games and running up expenses unnecessarily. All patentees want to get to trial as quickly as possible.


              Ned: big client firms do not want to actually try cases, but they want to maximize law and motion expenses for their own benefit.

              Presumably that’s true for big firms representing patentees as well as for big firms representing clients who are accused of infringing (many big firms do both).

              My experience is that clients who can afford to hire big firms are are almost staffed in-house by atttorneys who are very familiar with budgetary issues and the potential for “running up expenses.”

              patent owners want stop the big pockets defendants from playing games and running up expenses unnecessarily

              That’s especially true of “patent owners” who (1) have no business to protect other than their patent extortion business and (2) are filing junk lawsuits based on junk patents.

              And that’s the situation we’re dealing with. The patent tr0lls wrote this ridiculous script about “the high cost of litigation is the fault of accused infringers.” Stop repeating it, Ned. It’s sickening and st 00pit.


                MM, In the mid-90’s, I was seated next to a federal judge on a flight to Washington. He had been a litigator in a small firm prior to his becoming a judge. There he told me about the tactics of big firms on defense. This was long before the patent troll phenomena emerged. It is a game big firms play – advise their clients not to settle – law and motion the case to its full potential, making big bucks for the firm – advise the clients to settle just prior to trial for an amount that they could have settled for before they went to trial. In this manner the firm makes out like a bandit its client is only out the attorneys fees.

                This game is notorious. All litigation firms representing big pockets clients do this. It makes no difference about inside counsel paying attention to costs. In any serious dispute between the managers of litigation and outside counsel executives, will always choose the advice of outside counsel. After all, up to a certain point, litigation is good for executive management because it expands their budgets. So long as they do not take a loss, litigation is not really that expensive. But a loss will kill their careers. They will not risk listening to bean counters.

                I am pretty sure that some district courts are very well aware of the games big firms play. I am pretty sure the E.D. Tex. is among them.

                1. Thanks for these anecdotes, Ned.

                  I’m starting to develop some cynical views of patent litigation – and to wonder about the extent to which they color everyone’s views of patents in general, and distort the setting of patent examination and prosecution.

                  I once encountered an examiner who was not only resistant to my proposals for claim amendments, but openly hostile to them. He insisted on exactly one option of his choosing, and rejected everything else out of hand. When I tried to explain my client’s perspective, he said: “Oh, I know all about your client – it says one thing to us examiners about claim interpretation, and then says the exact opposite in court. So I’m not considering anything but the option I’ve given you: take it or leave it.”

                  And then, of course, there’s the interview with Mark Cuban posted today elsewhere on the web, which goes like this: “Since I can’t make this patent system work well for me, I conclude that it’s a failure for everyone, so it should be completely dismantled.”

                2. I’m starting to develop some cynical views of patent litigation – and to wonder about the extent to which they color everyone’s views of patents in general, and distort the setting of patent examination and prosecution.

                  Starting to…?

                  The tail of the flea that wags and not only the flea on the tail of the dog, but the dog as well wags.

                  Why do you think that the “Tr011s” propaganda was (and is) pushed so hard?

                  Reminds me, it is almost mid November and we STILL have not heard from the Executive about a decent reply to Ron Katznelson’s “End the Propaganda” request.


                And, might I add, MM, I have a lot of personal experience with respect to this issue, a lot. I know it is not propaganda. It is reality. I know of it from being inside big corporation, and from litigating against big corporation.

                I was part of a patent case against Western Electric/AT&T. When a stay of litigation was lifted, they filed 100 different law and motion/requests for discovery on us in a single day. We were small firm representing a patentee. There was no way the client could afford to respond to all that. What could they do but settle?

                Unless restrained in some manner, big corporations and firms will always crush the small fry.


              I would add that EDTX is not so much pro-plaintiff as it is pro-trial. In other words, a traditional court, not disposed to SJ motions supported by declaration and attorney argument, that prefers witness testimony and cross-examination.


                iwasthere, and being pro-trial is exactly why the big firm wants to stay out of that district. It makes no difference if this were a copyright cases, an antitrust case, or whatever. Going to trial soon is what the big firm desperately needs to avoid.


          It cites one case where the patents involved were declared invalid in the Central District of California and then objects that the rest of the cases of this patent owner not filed there as if that made any sense at all.

          The objection certainly makes sense if the defendant is in the Central District of California (probably where the patentee was residing as well until it decided to relocate to Marshall because who can resist the Fire Ant Festival?).


          What has harmed the small businesses that have been sued is the AIA statute. Prior to that small companies could piggyback from one end of a case to the other on the backs of big pockets defendants that were defending the case.

          Nothing in the AIA statute requires filing in East Texas or sueing anyone at all with your junky patent.

          The problem is being dragged into East Texas to “defend yourself” against a lawsuit predicated on a junk patent, where that lawsuit is going to move fast because the folks in Marshall realized they could “be important” if they catered to the lowest from of patent attorneys on the planet. That’s the harm. You make it sound like this “piggybacking” is some sort of carnival ride that small businesses used to just relax and enjoy. That’s absurd.

  6. 5

    I fear for the small practicing entity who must sue in several districts when there are several alleged infringers.

    How common is this “fearful” situation likely to arise, and how big of a problem is it really for the typical “small practicing entity” in possession of a valid patent (compared to the “problems” that others have with the current rule)?

    Let’s say the patentee is in Texas and makes a widget and has a patent that covers its widget. There’s an alleged infringer in Vermont, another in Washington State and another in Hawaii (each making a different species of widget). The patentee decides to sue in Washington because the district court there has the most favorable local rules.

    Scenario 1: Case settles after claim construction.
    Scenario 2: Case tossed out on summary judgment because not infringed.
    Scenario 3: Case tossed out because claims are invalid.
    Scenario 4: Case is contested; it’s close; goes to jury; patentee loses.
    Scenario 5: Case is contested; it’s close; goes to jury; patentee wins.

    Why should I “fear” for this “small practicing entity”?

  7. 4

    I don’t understand how the court has missed sec. 1391(a). You know, the first line in the section that states that it applies to all civil cases EXCEPT OTHERWISE PROVIDED BY LAW. Why would Congress pass sec. 1400(B) if it intended sec. 1391 to apply? The court’s reading renders 1400(b) superfluous.

    In any case, I would argue that 1391(c), if it does apply, is being read too broadly. If, say, Google is committing acts of infringement, it is likely committing acts that give rise to the claim in California. You can only equivocate venue and personal jurisdiction under sec. 1391(b)(3) when there is no venue under sec. 1391(b)(1) or (2).

    1. 4.1

      Can someone tell me what I’m missing? Because I feel that I must be thinking it too simplistically. Are plaintiffs using joinders to bypass b(1) and b(2)?

  8. 3

    “And when this problem becomes so pronounced that it is mocked on HBO (“Last Week Tonight with John Oliver,” Season 2, Episode 34, April 19, 2015), there can be no doubting that it needs to be solved immediately.”

    This is a bit much. If John Oliver mocks some aspect of litigation, “there can be no doubting that it needs to be solved immediately,” nevermind what the statute says or whether a comedian may gloss over important nuance to make a point to a lay audience…

    I agree with the argument, and think it was a good tactic to cite John Oliver, because the episode crystallizes the policy problem well. I just quibble with the execution. link to

  9. 2

    Dennis: I think you meant 28 U.S.C. 1391 [Venue generally] – not 28 U.S.C. 1395, which states:

    § 1395. Fine, penalty or forfeiture
    (a) A civil proceeding for the recovery of a pecuniary fine, penalty or forfeiture may be prosecuted in the district where it accrues or the defendant is found.
    (b) A civil proceeding for the forfeiture of property may be prosecuted in any district where such property is found.
    (c) A civil proceeding for the forfeiture of property seized outside any judicial district may be prosecuted in any district into which the property is brought.
    (d) A proceeding in admiralty for the enforcement of fines, penalties and forfeitures against a vessel may be brought in any district in which the vessel is arrested.
    (e) Any proceeding for the forfeiture of a vessel or cargo entering a port of entry closed by the President in pursuance of law, or of goods and chattels coming from a State or section declared by proclamation of the President to be in insurrection, or of any vessel or vehicle conveying persons or property to or from such State or section or belonging in whole or in part to a resident thereof, may be prosecuted in any district into which the property is taken and in which the proceeding is instituted.

  10. 1

    The 24 Brief starts with talking about why congress passed the first patent venue statute — abuses. But stops there. It would have been nice to know more about this.

    As well, it did not cited the statutes themselves and how they iterated over time. The transition between the 1911 version and the 1948 version is utterly informative and convincing on this issue since the Court ruled no substantive change was intended.

    1. 1.1


      Agreed. The VE Holding court struggled with the same statutory interpretation issues. I think this brief pounded the public policy table because he could not come up with convincing legal arguments.

      Even though I am sympathetic, if 1400(b) is construed as the brief urges, this solves the E.D. Tex issue but then I fear for the small practicing entity who must sue in several districts when there are several alleged infringers. Adding “or where the patent owner resides” to 1400(b) would solve that problem and keep the solution to E.D. Tex. intact. Transfers for convenience would still be available, of course.

      1. 1.1.1

        Troubled — I’m not sure your amendment solves the problem. It is fairly simple to set up an ED Tex corp to hold your patent so that you “reside” in ED Tex. Patent owners already do this in order to lessen the chances of transfer.

        A better solution is to just use the processes that are already available, namely MDL, if having to sue in multiple jurisdictions is problematic.



          I thought the AIA’s anti-joinder statute, 35 U.S.C. 299, would make MDL difficult, but I don’t know the folks on the Judicial Panel on Multidisctrict Litigation, so I visited their website. From their Pending MDLs by Docket Type, under Intellectual Property, I see all 17 concern Patent Litigation going back to 2007 with 7 in 2014. I can’t find a link to issued Transfer Orders, but MDL does not seem to be popular in patent cases.

          The website lists Governing Statutes as 28 U.S.C. 1407 (the venue provision) and 28 U.S.C. 2112 (concerning government agencies). 35 U.S.C. 299 is not listed. That provides for joinder only if any right to relief arises out of the same transaction or series thereof “and (2) questions of fact common to all defendants or counterclaim defendants will arise in the action.” But, it is insufficient if “based solely on allegations that they each have infringed the patent or patents in suit.”

          I can’t tell how this is playing out with the Panel but my sense is that to be consolidated even under 1407, one needs more that two or three cases and all must have roughly the same procedural posture.

          I don’t think MDL would help a small practicing entity with a few infringers if VR Holding is overturned, but MDL should be part of any discussion of venue (thanks!). Perhaps, Prof Crouch can arrange a guest post by someone more knowledgeable.


            MDL is hounded only for pre-trial, so I don’t think it causes any problems with section 299. Cases are sent back to individual courts for trial.

            I believe at least some parties have made the argument, which was rejected. Haven’t double checked that though.



          I assume you are referring to the comment below. According to Jon Stewart, Congress is still working on venue in patent cases. Perhaps, you could use your erudition to suggest an ideal patent venue statue.

          My naïve hope is that venue should be in a district that has some real connection to either plaintiff or defendant, using a concept like “regular and established place of business” as you discussed. This should follow from considerations of convenience, but now too much weight is given to the plaintiff’s choice of forum. Since all briefs are written in India and emailed to local counsel, distance doesn’t seem to matter.

          Typically, though not always, I think the bulk of the litigation requiring discovery is about validity. In the case of a practicing entity, the plaintiff’s home court should be more convenient because inventors and patent counsel are probably within driving distance. This would also be true of an NPE like WARF. In the case of an NPE who acquires a patent by assignment, it is likely not true and convenience would shift to the defendant’s home court. (If the patent concerns a process, then defendant’s home court could be more convenient in any case.)

          This is never going to happen, but a Judicial Panel on Patent Litigation could be used to assign cases to the district court most convenient to all parties.



              Before responding more fully (necessitating further research), what is your estimate of the chances of a patent owner, faced with serial independant infringers, of applying favorable results with respect to validity and claim construction in a subsequent case (offensive non-mutual collateral estoppel I think it is)?


                T, one really needs to sue them all at once so validity is determined just once, in one trial. Otherwise, the patent owner has a real problem because if he loses even once, that is it.

                And, we need to stop collateral attacks. You know what I mean.

                1. Ned,

                  I suspected as much. Validity can be challenged by the next defendant but, after Blonder Tongue, once invalid, always invalid (defensive non-mutual collateral estoppel works in this case).

                  I don’t see how we have one trial with 1400(b). Plaintiff would possible have to sue simultaneously in several districts, unless one can instigate an MDL which it seems is unlikely. Am I wrong?

                  I understand what stopping collateral attacks means, but am not sure of the import. Can you provide a for instance?

                2. Can you imagine having twenty or so different infringers, consolidated pretrial for discovery on validity, and then forcing the patent owner to try the cases in 20 separate trials?

                  That is by design, my friend. And the whole point of the AIA becomes clear.

                3. Ned,

                  You have taken yet another step to seeing the world as I see it.

                  We have much work still to do in certain areas, but let’s celebrate the small steps when we can.

    2. 1.2

      Yeah, knowing more is important. See, Stonite Products Co. v. Melvin Lloyd Co., 315 US 561 – Supreme Court 1942 link to,&hl=en&as_sdt=2006#r[7]

      There were general and specific venue statutes prior to the 1897. The general allow suits where the defendant could be found. The specific where he was an inhabitant. The specific was thought to apply to patent cases. Then a Supreme Court case involving foreign corporations suggest the the general venue statute applied to patent cases because the specific did not apply. In re Hohorst, 150 U. S. 653 (1893).

      A split of circuit developed as to which applied, most going with the general venue statute that had lead to abuses and had prompted the passing of the statute that allowed defendants to be sued where they were incorporated or had a principal place of business (inhabitant).

      In order to clarify the venue in patent cases, congress passed the patent venue statute of 1897. It allowed suits “in the district of which the defendant is an inhabitant, or in any district in which the defendant, whether a person, partnership, or corporation, shall have committed acts of infringement and have a regular and established place of business.”

      The amendment in 1948 was not intended to have an substantive changes. It reads, “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.”

      Note that inhabitant->resides, and “whether a person, partnership, or corporation” was dropped.

      Inhabitant and resides at the time meant, for a corporation, incorporated or having a principle place of business. E.g., United States v. Scophony Corp. of America, 333 US 795 – Supreme Court 1948 (Referring to “inhabitant, note 20 said, “As has been stated, the company was incorporated in New York and had its principal office and place of business in Rochester.”)

      Next we have Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 US 706 – Supreme Court 1972 link to,&hl=en&as_sdt=2006 that again involved aliens. This case covers much of the same ground as did Stonite and the confusion caused by Hohorst that had held that the narrower venue statute did not apply to aliens and “patent cases.” The court reiterate a longstanding rule that the venue statutes did not apply to aliens, even the patent venue statute, which it again reiterated, was independent of the general venue statute. 1391(d) was directed to aliens, and it controlled, even for patent cases.

      Thus Brunette is seen to reinforce Fourco and Stonite, and point out that 1393(d) only reflected the traditional rule that the venue statutes did not apply to aliens.

      VE Holdings depended on language in 1391(c) “For purposes of venue under this chapter.” VE Holdings relied on this language to hold that 1391(c) applied to 1400(b). VE Holdings did not consider that this would make the second clause of 1400(b) surplussage.*

      * Note, if a corporation can be sued anywhere it has a regular and established place of business, then the clause that reads “where the defendant has committed acts of infringement and has a regular and established place of business” becomes surplusage. But that is the effect of VE Holdings.

      VE Holdings seemed to think also that Brunette had relaxed the rule that the general venue statutes did not apply to 1400(b) — but any fair reading of Brunette would show that such was not the case.

      Without some legislative history to suggest congress intended to effectively read the patent venue statute out of the law, and in face of reasonable alternative interpretations of what “in this chapter” was intended to mean, it appears that VE Holdings was incorrectly decided.

      But then we have “cert. denied.” So, VE Holdings can be consider to be correctly decided.

      But congress seemed to understand that it made a mistake when it amended the general venue statue and used “in this chapter.” The new language seem intended to exclude 1400(b) and similar statutes that are specific to case types according to law.

      Thus the new language in 1391(c) seems intended to undo a mistake. If so, VE Holding should be overruled.

      1. 1.2.1

        From Brunette: “This Court held, however, that the change was stylistic and not substantive, and that Congress did not thereby bring suits against aliens within the scope of the venue laws. In re Hohorst, 150 U. S. 653 (1893).”

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