Goodbye E.D.Texas as a Major Patent Venue

by Dennis Crouch

In a case with the potential to truly shake-up the current state of patent litigation, the Supreme Court has granted certiorari in the patent venue case TC Heartland v. Kraft Food (SCT Docket No. 16-341).  An 8-0 reversal of the Federal Circuit is quite likely, although my headline is likely premature.

The case centers on the patent litigation venue statute which states rather simply that patent infringement actions “may be brought” either (1) in “the judicial district where the defendant resides”; or (2) “where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b).  Under any normal interpretation of the provision, very few cases would be amenable to proper venue in the Eastern District of Texas because almost none of the accused infringers “reside” in that district or even have a place of business in that district.  However, the “normal” interpreation was seemingly thrown under the bus by a congressional provision that expands the definition of a corporation’s residence to all districts where the company has minimum contacts.  See 28 U.S.C. § 1391.  For its part, the Federal Circuit found that Section 1391 applies to expand the scope of 1400(b) to all for, inter alia, the filing of infringement lawsuits in the Eastern District of Texas.

It turns out that the Supreme Court has already decided almost this exact case in Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957). In Fourco, the Court held that “§ 1400(b) is not to be supplemented by § 1391(c), and that as applied to corporate entities, the phrase “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only.” (quoting from the certiorari petition). Although the provisions have been amended since 1957, non of the amendments appear to warrant such a dramatic change in the Supreme Court’s analysis of the statutes.

In its 1990 VE Holdings decision, the Federal Circuit rejected Fourco based upon some reasoning, but without any good reasons.  There are two reasons to stick with the Federal Circuit’s 26 year old rule: (1) The rule is 26 years old and well settled with almost every patents now in force applied-for after the rule change.  At this point, it is Congress’s turn (not the courts) to amend the statute if its wants a policy change. (2) The actual reasoning of Fourco is quite dodgy – not the most stellar statutory interpretation.  If the Supreme Court actually takes a fresh look at the statute it may well overturn Fourco of its own accord.   Still, I expect that these arguments will not carry the day and instead that the Supreme Court will reverse the Federal Circuit.  The result would then be a major redistribution of patent infringement cases.

More Reading:

Patent Venue at the Supreme Court: Correcting a 26 Year Old Legal Error

Guest Post: What Would Happen to Patent Cases if They Couldn’t all be Filed in Texas?

Guest Post: Recalibrating Patent Venue

TC Heartland Law Professor Amicus Brief

Guest Post: The Problematic Origins of Nationwide Patent Venue.

 

 

 

110 thoughts on “Goodbye E.D.Texas as a Major Patent Venue

  1. This case is probably another one of those cases that is going to hand on whether the SCOTUS respects the Constitution or not. Probably they won’t. The SCOTUS often built up federal common law before statutes were enacted. The SCOTUS often then acts as if their previous common law has been incorporated into the Constitution rather than seeing that their common law should be preempted when Congress passes a law directly on point. These eight are probably the worst group of people that have ever been on the SCOTUS in terms of respecting the Constitution.

    1. Some feel that the Constitution is only what the Supreme Court says that it is.

      We both know this cannot be true as it would place the judicial branch itself above the Constitution; nonetheless, there are several that would do so (even professed and identified attorneys, who have been invited to recheck their state oaths as to the supremacy of the Constitution above each and every branch of the government).

      1. Some feel that the Constitution is only what the Supreme Court says that it is.

        And others, like “anon” and his bff NWPA, “feel” that the Constitution is only what they say it is. And their totally not hypocrites! Nope. They’re very serious people. Super deep thinkers.

        1. Nothing hypocritical at all.

          If you haven’t noticed, I am always entreating you to engage in discussions of law (including the Constitution) with inte11ectual honesty.

          Your present attempted spin thus fails. It clearly is not “my way or the highway.” And just as clearly, your lack of engaging in anything even remotely on point or with inte11ectual honesty is simply a YOU problem.

          1. I am always entreating you to engage in discussions of law (including the Constitution) with inte11ectual honesty.

            My, the horse is exceptionally white and high today. Are you going to take your shirt off for everybody and flex your biceps? Because we’ll be really impressed then.

            Or you can just provide everyone with your statutory analysis.

            Go ahead. Impress us all. Between you and your bff we’ll be able to see the deep working of the world’s most giantest cranium. So let’s hear it.

        2. MM (AKA the paid blogger), please try to address the substance of what I wrote. I do believe —do you contest this–that SCOTUS federal common law is preempted when Congress writes a law on point unless there is a Constitutional issue dealt with in the common law and not the actual law passed by the Congress–you know like in how the Constitution says it is supposed to happen.

          Below we see a number of federal common law cases cites as being potentially dispositive. So, —I think–there is an issue here.

            1. I’ve tried telling him that one needs not be paid to exhibit the philosophical windmill tilting that you are infamous for, Malcolm.

              It certainly does not help though, that you have not strayed (too far) from the same short vapid script that you have been reading from for over a decade now.

              February marks your eleventh anniversary.

              Maybe you should try a change this decade…

              1. I think you are starting to suffer from the Stockholm syndrome. MM spends way too many hours on this blog and others to have a full-time job and blog. And, his posts maintain a party line of policy shifts.

            2. MM: your comment indicates you are a paid blogger. Are you suggesting that there aren’t non-profits that are paying people to blog? There is even the name of one of the commenters on this blog with the name of two lobbying groups paid for by the likes of Google who pay people to blog.

              If I had the time, I could probably figure out who you work for by matching up your comments with their policy statements. My guess is that you are one of the supervisors that writes policy and blogs. There was an job advertisement on this blog for a person to supervise a team of paid bloggers for anti-patent work.

              So, you want to deny reality. OK. Real believable.

              1. MM: your comment indicates you are a paid blogger.

                And your comment indicates that you’re a path 0 l0gical li ar because (1) I’m not a paid blogger, nor have I ever been; (2) I get no compensation directly or indirectly for commenting here; and (3) I’ve told you this already a zillion times.

                My guess is that you are one of the supervisors that writes policy and blogs.

                I do supervise people! So you got something almost right. Also, I am interested in policy questions.

                But I’m not paid to comment here, or anywhere else.

                There was an job advertisement on this blog for a person to supervise a team of paid bloggers for anti-patent work.

                Let’s just assume that’s true for the moment. This may come as a real shock to you but there is a bit of a difference between being paid to write for a blog and being paid to comment on a different blog. I don’t do either, nor am I paid to supervise people who do those things.

                Let me know if you want me to make a list of self-interested shills who patent blog or who comment for self-enrichment. It’ll take me a few hours but I think I could probably hit 100 without too much effort.

                1. So, there is evidence that you are a paid blogger.

                  1) You do not engage in real discussion, but endlessly repeat policy points.

                  2) You spend in inordinate amount of time blogging. What about 40 hours a week? And, I’ve notice that your off hour blogging is infrequent compared to your work hour blogging.

                  3) You have been blogging for 12 years now for the “anti-patent judicial activist.”

                  4) Dennis said he doesn’t know who you are, and you refused identification.

                2. Your point 4 may have been correct once upon a time, but Prof. Crouch knows full well who Malcolm is.

                  Your point 3 is slightly over stated. At the last thread aimed at making a better “ecosystem,” it was shown that Malcolm’s tactics (the same ones he still uses – but would be unable to use in a PC controlled world [unless that was an Orwellian PC world]) will hit their 11 year anniversary this coming February.

                  Your point 2 is not accurate, as retirement and even semi-retirement are as equally plausible.

                  Your point 1 is definitely true. But such is also true of most all of the anti-patent, anti-software patent, and anti-business method patent ec(h)osystem inhabitants.

        3. MM, the general antipathy of Night and anon and Gene to the Supreme Court and their concomitant support of the Federal Circuit, who have built a considerable reputation in defying the Supreme Court, cannot be coincidental.

          From my personal experience in DC, there is almost universal disdain of the Supreme Court among patent attorneys. Over time, I have come to share your view that this DC Patent Bar zeitgeist flows from a short-sighted self interest, AKA, greed. Only when they, the Patent Bar and the Federal Circuit, had gotten their way for too long did most of the rest of us, AKA, Wall Street and Silicon Valley, react.

          1. It is not coincidental to see that the score board is broken, Ned.

            I have made it very clear why I write what I write. Maybe you want to engage the points of discussion that I put on the table, instead of your typical running away when those points show up…

            And for the record, I am not a member of the DC Patent Bar. Put away that shiny aluminum headgear of yours please.

    2. Like the vast majority of Sup. Ct. cases, this has nothing whatsoever to do with any Constitutional issues. This is a simple issue of apparently conflicting statutory language interpretation by the Fed. Cir.

      It is time for some readers to stop wasting more time erroneously arguing that anything that might hurt their potential income must be a constitutional issue.

      1. The issue may come down to whether the SCOTUS performs proper statutory construction or brings in their federal common law. That is a Constitutional issue that we see over and over again.

        Be nice if “some readers” would respond to the substance rather than taking cheap shots, “hurt their potential income.”

        1. The issue may come down to whether the SCOTUS performs proper statutory construction

          Tell everybody what the proper statutory contruction analysis is, and tell everyone what the correct result is.

          You’re a super persuasive person, NWPA! Just like your buddy “anon.” You’re always right about this stuff. So just type it out in plain English. It should be easy for an expert like you. Quit crying and share your analysis with everyone.

      2. I think that you missed the point there Paul.

        The point is not that readers are making things into Constitutional issues, but rather that the Court is only too willing to call something a Constitutional issue in order to side step the designated authority in a statutory setting.

        1. “anon” the Court is only too willing to call something a Constitutional issue

          LOL

          This is from the guy who won’t recognize a basic First Amendment issue when it slaps his insolent pouting rictus.

          1. Won’t recognize what you yourself fail to explain?

            Um, sure – maybe you want to explore using those short declarative sentences that you are always on about to actually first make a point that I could respond to.

        2. On the contrary, it is a premise of constitutional law that the Sup. Ct. regularly AVOIDS calling something a Constitutional issue if it can be decided on another basis, and rarely holds federal statutes unconstitutional [as recently experienced four times in four attempted constitutional attacks on the AIA.]

          1. And yet, Paul, the Court cannot keep its fingers out of the nose of wax statutory law of section 101 with its scrivening of statutory subject matter eligibility and its desire to make such into some sort of Constitutional subject matter eligibility….

            Oh, the dichotomy of broken score boards…

            1. the Court cannot keep its fingers out of the nose of wax statutory law of section 101 with its scrivening of statutory subject matter eligibility

              The ship of super clean fingers sailed a long time ago. As construed, the statute incorporates the so-called judicial exceptions (otherwise 101 would be unconstitutional on its face). Interpreting the scope of those exception is the Supreme Court’s job.

  2. Some folks have been asking what “resident” meant for corporation venue under 28 USC 1400(b). It was defined in In re Cordis Corp. (Fed. Cir. 1985) as only the state in which it is incorporated. This case is also suddenly potentially relevant again for some other provisions of 1400(b).

    1. It was defined well before that – like in the early 1900s. Fourco used this definition, as did a later Supreme Court case. I believe Stonite did as well.

    2. Paul – that’s true, which is what is kind of amusing about the EFF types complaining that venue is “out of control” because cases are concentrated in EDTX. Yet, if they get their wish, cases will be “super concentrated” in DE, because that will be the one safe harbor for all filings. And NPEs will simply start targeting more end retailers and foreign parents to keep cases in EDTX, again, multiplying the present mess. So once again, the anti-patent brain trust crowd will simply trade one problem for a bigger one.

      1. Yes, JNG, suing in the Delaware D.C. will be even more common that it is now due to many large corporations having registered there. But by no means is that ALL corporations. And it is not that hard to get there.
        But if everyone really started suing the small retailers in East Texas rather than their principals the E.D.TX judges and juries would so turn hostile, and Congress or Texas would soon put a stop to that. In any case those small fry are not worth suing since the potential infringement damages from them would not pay for the suits. You may be assuming that their out of state suppliers will step forward to join and defend them in E.D. TX, but don’t count on it. They are more likely to file IPRs.

        1. Greetings Paul

          I don’t think “small” is what I had in mind, more like Best Buy, Fry’s, CompUSA, etc. that are all nationwide and have significant sales. That was the norm a few years back if you will recall… In response to that, perhaps they pass the “manufacturer” stay provision that they talked about a few years back to fix that. But the main point is, if the SCOTUS is going to be told EDTX is “evil” because there are too many cases there, then they’d have to consider the alternative, which is inevitably too many cases in DE. That’s a problem for Congress to consider how to fix, not for the SCOTUS to keep playing whack-a-mole.

  3. Where is the residence of a corporation that only does business on the Internet/Web and that only maintains a virtual office?

      1. I phrased the original question incorrectly. The entity in question might not be incorporated. (I should have asked about the residence of an entity … and not about the residence of a corporation.)

        1. The number of UNincorporated companies or individuals that have been doing enough patent infringing to be worth the litigation cost has to be a very short list.

  4. Out of curiosity, what is the venue result under the Fourco rule for non-US entities selling infringing products in TX? How about convoluted organizational structures with a nerve center in NYC but all sales rolled up through entities in Ireland and Luxembourg?

  5. While Scotus may just do as it pleases, on a practical note, a Scotus change to the venue provisions would be immediate and affect every single case presently on file. There would be a flurry of motions to dismiss for lack of proper venue (and/or transfer) across some very large percentage of all patent cases. A little creativity can see a lot of monsters in such a parade of horribles.

    In any case, Congress can make statutory changes apply to all cases filed after a certain date, but I’m not aware that Scotus can do that, as it says what the law is, and lacks (arguably) power to grandfather past filed cases. (Although there are judicial tools that can accomplish a similar end in some circumstances).

    Seems like this would weigh heavily in favor of deferring to Congressional action.

      1. Dennis,

        I’m not sure about that. Improper venue is waivable (see Fed. R. Civ. P. 12(h)) – I would suspect that judges will not be amenable (and understandably so) to a late argument re venue when it was not a secret this case was happening.

        1. It’s hard to say the issue was waived when under controlling precedent there was no issue to waive. In any case, essentially every defendant in a patent case puts a blurb about venue not being proper/convenient in their answer. All a defendant needs for ongoing litigation is for the plaintiff to amend its complaint. Then the defendant may be free to file a motion to dismiss for lack of proper venue (either now or after the Scotus ruling).

          Of course, judges might not (or might, depending on the judge) feel good about sending the case to another district after doing so much work on it. But anyone who has a chance to send their case to the Northern District of California will try. It’s arguably malpractice for a defense attorney to not at least try. And many judges will be happy to boot the case elsewhere.

          1. “under controlling precedent there was no issue to waive.”

            There was always an issue. Fourco, assuming Heartland goes as expected, has always been good law. Conceding to one circuit’s one-time mistake instead of appealing is the defendant’s fault.

          2. Improper venue is waivable, just like improper service and personal jurisidiction. I am not aware of a case where I which waiver is avoided because of a change in law; it’s still the defendant’s obligation to timely raise defenses like this. That’s how all of the cases on personal jurisdiction, etc., came up–a party made a timely motion in an attempt to propose a change in the law. Same with jury instructions, evidentiary objections, etc.–the issue is waived if not timely raised, notwithstanding a later change in the law.

            Some courts may exercise discretion to excuse the waiver rule in this case, in the event of a reversal by SCOTUS, but I would suspect that the judges in E.D.Tex. will apply the waiver rule strictly in an attempt to kling onto every patent case they can.

    1. VE Holding has had ruinous effects on tens of thousands of cases since the CAFC overturned Supreme Court precedent in 1990. It’s time to restore the rule of law and a few transfer motions won’t harm anyone.

      In most existing cases, venue will have been waived by not challenging it immediately. But remember to request a transfer in all your EDTX cases for the next few months.

  6. Professor, I have to disagree regarding Fourco and VE Holdings. The amended language of 1391(c), “for purposes of venue under this chapter,” is a statutory interpretation game changer. At least it opens the possibility that Congress meant what it said and effected a change to the holding in Fourco.

    As much as Federal Circuit bashing seems de rigeur, VE Holding is not an unreasoned or unprincipled decision.

    1. I love this – “opens the possibility that Congress meant what it said.”

      If we started with a clean slate, I think the Federal Circuit’s interpretation is the better statutory interpretation. But if we start with Fourco and then ask whether the amendments were sufficient to overrule a case directly on-point — I don’t think so. When accounting for the Supreme Court’s equal governmental ordre (EGO), a more direct act of Congress seems to be necessary.

      1. There is still room for argument, certainly. Fourco is essentially based on the structure of Chapter 87 of Title 28, that is, the general case versus the specific venue cases and the intention that the specific statutes apply to specific types of cases.

        Whether Congress intended to overrule Fourco is immaterial, I think, but it is probably reasonable to assume that it knew the difference between “section” and “chapter,” and there’s no evidence that it is a scrivener’s error.

        1. There is still room for argument, certainly. Fourco is essentially based on the structure of Chapter 87 of Title 28, that is, the general case versus the specific venue cases and the intention that the specific statutes apply to specific types of cases.

          Whether Congress intended to overrule Fourco is immaterial, I think, but it is probably reasonable to assume that it knew the difference between “section” and “chapter,” and there’s no evidence that it is a scrivener’s error.

          That is, the structure upon which Fourco relies is still preserved, but 1391 made a chapter-wide change based perhaps on the recognition that corporations are national entities in many cases and it is fair to subject them to venue in the same locations that they are subject to personal jurisdiction.

      2. Does Congress’ motive (or lack thereof) in respect of or knowledge (or lack thereof) of particular court cases “overruled” by the letter of the law as enacted in a statutory amendment affect in any way the authority of those laws so enacted by Congress?

        …or, do the laws enacted by Congress simply have the effect of actually overruling those particular cases whether or not Congress knew of them or cared?

        1. Good fundamental questions here of statutory interpretation. There are cases and theorys going many different ways on this point.

          Sometimes congressional motive is really clear – such as when the enacted law states “The purpose of this bill is to overrule XXXXX and its provisions should be so interpreted.” That situation would seem to be different from cases where either (1) no mention is made in the bill or congressional record regarding the case purportedly being overruled; or (2) where the law specifically states that “The law is designed so as to not overrule XXXX and its provisions should be so interpreted.”

      3. Dennis, there was then, and is now, serious disagreement with that Fed. Cir. decision VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) as having been the “better” statutory interpretation. That is, viewing the Fed. Cir. as being the one that used its own unusual statutory interpretation to throw that statute “under the bus” in view of a new but much more general Congressional venue provision. Not only did Congress leave that specific statute (§ 1400(b)) on the books, then and since, there was not the slightest indication in the Congressional record of any intent by Congress to [highly abnormally] render a specific statute left on the books completely meaningless. Statutory exclusions for specific matters from more general statutory provisions are not at all unusual and are not normally “overruled” in the manner of the VE Holding Corp. panel decision.

        1. Statutory exclusions for specific matters from more general statutory provisions are not at all unusual and are not normally “overruled” in the manner of the VE Holding Corp. panel decision.

          Particularly where the Supremes have already opined on the topic.

          Note that the CAFC also nullified a clear “statutory exclusion” (i.e., 271(f)(2)) when it rendered its decision in LifeTech. That decision, of course, is going to be overturned shortly.

  7. Sorry I missed it…

    What ARE the good (and bad) arguments, LEGAL arguments (not lobbying policy or political sentiments) but legal arguments based on the statutes, as enacted by Congress, and how they apply one to the other, according to an objective reading and principles of statutory interpretation (keeping in the mind the role of the court is NOT one of law making)?

    Anyone?

    1. This is very good post. You notice that the anti-patent judicial activist make these equity arguments about how the law should be written to suit their desires.

    2. The argument of the petitioners, essentially, is as follows:

      Congress enacted a specific venue provision for patent suits with specific limits on what the proper venue would be. This was held by the Supreme Court to be the exclusive venue provision. Even after a general venue provision was passed, the Supreme Court held in Fourco that the specific venue provision, and not the general one, covered suits arising under patent law. Congress enacting an amended general venue provision did not overturn this. Petitioners rely upon the gloss of the statutes and a lack of intent to overrule.

      The argument of the respondents is a very straightforward statutory interpretation. The general venue statute defines corporate residence “for all purposes under this chapter” (or something similar). 1400 says venue is based on residence or a regular place of business. So the 1391 definition of residence, by its terms, applies to 1400, and thus opens up jurisdiction to all venues in which there is personal jurisdiction.

      In the backdrop of this case is a debate over the proper “stream of commerce” theory of personal jurisdiction. Under “stream of commerce plus,” many cases in E.D. Texas would not be able to be brought there, but under the lighter “stream of commerce” theory, they likely would. The Federal Circuit has punted the issue every time it’s been raised, even as it becomes more and more clear in Supreme Court precedent that merely selling a product nationwide does not allow you to be sued nationwide.

      1. even as it becomes more and more clear in Supreme Court precedent that merely selling a product nationwide does not allow you to be sued nationwide.

        Can you give more details on this point, Guest?

        Thanks

  8. How and where do foreign infringers get sued in U.S. District Court for infringement of a U.S. patent under Crouch’s view of venue and Heartland?

    The gutting of U.S. intellectual property rights is nearly complete. Well done.

  9. The SCOTUS, of course, has to interpret the venue statutes as written. Congress, where it to address the issue, does not. Nor do we arm chair pundits.

    Here are the questions that should be addressed if you want to discuss this seriously:

    1. Why should patent cases (and copyright) have special venue laws? Why not treat them as for any other federal case (putting aside diversity jurisdiction, that is a bit different). There are hundreds of different federal statutes providing causes of action. What makes patent claims special?

    2. Why has one district (EDTex) come to dominate patent litigation? The same venue rules apply to a host of other cases, including trademark, copyright, securities law, and many products-liability cases. None of those have any special kind of venue issues. What is it about patent litigation that invites this kind of problem?

    1. 1. That’s the “trend” that I indicate below (which drew the ad hominem from Malcolm).

      2. That’s the point that I have consistently put on the table as to how to solve the “problem.”

      Your (2.) goes to whether or not the favoritism of choice is within (or not) the discretion of that particular court. If it is within the discretion, then it hardly matters at all how much litigation is attracted to that venue. If within the discretion, the better question is why is there a focus to disband and “distribute” cases.

      If not within the discretion, then the waywardness needs to be corrected and the corrections applied universally. Of course, such does smack of decreasing court discretion, which as I pointed out, goes against the “migration” of the Court.

    2. 1. “Why should patent cases (and copyright) have special venue laws?”

      Most federal civil litigation involves big institutions like government and multinationals suing each other or involves individuals, nonprofits, and other small institutions suing each other or suing big institutions.

      But patent law is special. Most cases are giant powerful companies and wealthy trolls suing small businesses and individuals. To protect competition and integrity of justice, powerful and wealthy institutions dragging individuals to far away and biased venues has to be stopped.

      2. “Why has one district (EDTex) come to dominate patent litigation?”

      This was extensively documented in academic publications over the past few years. Systematic pro-plantiff bias in the rules, a laser focus on bankrupting defendants, and entrepreneurial judges that are making millions from their ‘public’ service have created a little corner of third world cronyism in East Texas.

      1. Extensively…?

        O really?

        One has to wonder which academics (with which biases) have been doing this – and why if this has been made so clear, that no one seems to be championing fixing that problem directly (as opposed to the forum end run).

        Could it be that your own bias is at work here?

  10. Dennis writes :: >>> Under any normal interpretation of the provision, very few cases would be amenable to proper venue in the Eastern District of Texas because almost none of the accused infringers “reside” in that district or even have a place of business in that district. However, the “normal” interpreation was seemingly thrown under the bus by a congressional provision that expands the definition of a corporation’s residence to all districts where the company has minimum contacts. See 28 U.S.C. § 1391.

    Wow. Let’s try to remember that setting up the federal courts is the legislative branch’s job. Unless the SCOTUS’s venue jurisprudence is based on the Constitution, then they should respect the fact that the legislative branch has “thrown under the bus” a “normal interpretation” of a “corporation’s residence.”

    1. Of course, in our post-fact, post-reality world (thanks Lemley and the like), the SCOTUS has decided to interpret the Constitution as meaning any and everything that they believe is a rational way to run the country. So, the Kings and Queens of our Land my do as they want.

      I bet I could predict this one down to some of the paragraphs they will write.

      1. It is indeed alarming to read about the concerns of an unchecked Court (upsetting the careful checks and balances that the separation of powers is meant to maintain), that those who out our government together had expressed (i.e., the Federalist Papers).

        Those who do not learn from history are bound to repeat it.

  11. Rough SCOTUS term for patent owners. Thus far, we have:

    1. BRI @ PTAB;
    2. Decision to institute nonappealable;
    3. Patents are not property rights but public rights (per Cooper / MCM denial)
    4. Design patents weakened (albeit without an updated test);
    5. Venue rules likely to be updated;
    6. Exhaustion likely to be updated;

    What am I missing? Which way will the laches case cut?

    1. Exporting of commodity components used for infringement.

      But between the misguided AIA (a legislative effort) and some bughouse reasoning by the CAFC (all profits on a car for an infringing cup holder, alienation of goods in the stream of commerce) there is not a whole lot there.

      I don’t see 8-0 in the TC Heartland case. The panel was openly contemptuous and a reasoned judgement could be made either way- Fourco was bad law and VE Holdings was corrective and settled law, or patents really are different in this aspect, Fourco was good law and the CAFC was up to its characteristic mischief in VE Holdings. I don’t see how anyone can divine Congress’s true intent if there even was one, so it may be a simple policy argument.

      I would not bet on the outcome; even cert was a bit of a surprise which may mean somebody or somebodies really care about it.

  12. I actually think all this “petitioning” by patent (d)eformers to get this case heard will backfire, because the facts don’t favor their cause. Venue is more than proper in this instance… and they tend to rule viscerally based on the characters in front of them – getting the SCOTUS to “invent” a bunch of new rules just so they can apply to ED TX cases will require more than a few sponsored “amicus” briefs from the usual paid suspects.

    1. You have to remember, though, JNG, that the justices have said they believe those amicus briefs and form their factual findings based on what the paid lobbyist tell them. You have to remember that the justices have few moral or ethical boundaries.

  13. That will leave just two major CAFC blunders to be reversed: (1) the eligibility of “new” information processing logic carried out by a pre-existing computer (or network) that was created for the sole purpose of processing information; (2) the permissible reliance on post-filing data to support the non-obviousness of a claim as of the application’s filing date.

    There’s many other minor problems, of course (damages reform, among them). And we can rest assured the CAFC will blunder again. But fixing these would go a long way to putting the system back on track again.

    1. Your points 1 and 2 strike me, MM, as examples of legal issues that need lots of high level argument before it becomes clear to non-specialist appeal court judges, what is the wrong way forward and what the right.

      In other words, in the greater scheme of things, by getting it grotesquely wrong, the Federal Circuit does patent law a favour. The intensity of the ensuing debate about the flat wrongness of their Decision helps SCOTUS more quickly to see how to put things back on track.

    2. Your (1) is absurd. But, then we know you are a paid blogger. It astounds me that people engage you in debate knowing that you are pushing the positions of your employer.

  14. I have to wonder if the Court’s own “migration” (since 1957) concerning whether or not patent law should be treated special (vis a vis eBay) changes the analysis.

    I make no projections (let alone an 8-0 reversal) given the lack of consistency in treating past decisions (being able to “weave” incongruent and disparate past decisions to suit the present feelings is something that the High Court enjoys; after all, they have the final say, right? 😉 )

    1. I have to wonder if the Court’s own “migration” (since 1957) concerning whether or not patent law should be treated special

      Congress already decided patents were special, for venue purposes, when they passed 1400(b).

      1. But then Congress also threw in there 1391 – as Prof Crouch put it: “However, the “normal” interpreation was seemingly thrown under the bus by a congressional provision that expands the definition of a corporation’s residence to all districts where the company has minimum contacts. See 28 U.S.C. § 1391.

        Since 1391 came after, the “treating special” would be to ignore 1391 because “patents are special”…

        1. And the Supreme Court already addressed the issue created by 1391.

          Can you tell everyone why it’s so important to you that the Banana Republic of East Texas remains available to the w0rst patent attorneys who ever walked the earth? Let everyone know why you’re so invested in perpetuating this long-standing j0ke, “anon.” After all, you’re a very serious person. And an expert in statutory construction! Yup. That’s you.

          1. You rather miss the point, Malcolm.

            The Court “already addressing” is the old Court before the Court’s migration.

            You seem intent on wanting to paint some animus (against the person making the post) instead of taking the issue presented on its face.

            It’s like you only have your ad hominem short script and nothing else.

            I am not interested (as you would twist it) in perpetrating any “long standing joke… worst patent attorneys.”

            I am interested in the Ends being pursued based on feelings about such.

            As for dealing with the particular “problem,” I have been more than clear as to pointing out the proper way forward rests on fixing any problem and then instituting that fix across the board. If there is a problem, the answer is not some hamfisted change in venue rules (as proposed by certain academics).

            If, as it appears here, the “answer” is some “ends justify the means” type of selective judicial action – and that action is simply inconsistent with the Justices expressed desire (as in eBay), then the such flip-flopping that exhibits an anti-patent holder bias deserves attention.

            But YOU seem to have a real problem with anything that just might cut to the patent holder’s side. As I have mentioned previously, you really do need to get into a line of work in which you can believe in the work product produced.

      2. MM – if you compare 1400 to the other venue statutes, it looks like Congress actually intended to expand the venue choices available to patent owners — not only venues where the defendant “resides” as in the general venue provisions, but also to venues where the defendant has a regular and established place of business and where acts of infringement have occurred. So looking just at what Congress has done in 1400, patents are special for venue purposes in that venue is available in more forums than in general venue cases.

        1. Except Pilgrim, the 1391 stance (which appears to be the “curveball”) is aligned with the “more available” that has certain people all up in arms.

          The general venue cases statute – as changed by Congress – is the “more available” statute and the 1400 is being used to limit venue.

          As mentioned (consistently), if the problem is a particular judicial area behaving badly, fix that problem directly. On the other hand, if the particular judicial area is behaving within its scope of judicial discretion (and also remember that the Court and its anti-brightline tendencies push for MORE “discretion” all the way down to that level being decried), then the problem is something else in opposition to the direction of the Court’s own migration since 1957.

    2. Anon,
      This is a good point. I think this is a closer case than the “8-0 reversal” folks think.

      Why should “reside” mean one thing for patent venue, but something else for all the rest of the general venue provisions? Is the only reason Fourco (and the earlier decisions)? Then, respectfully, that ignores the fact that Congress has amended the venue statutes since Fourco, and under new wording of the statutes (from VE Holdings through to now) the plain wording of the statutes treats “resides” the same way in 1400 as in the rest of the venue provisions.

      For example, consider the VE Holdings version of the venue statutes — when Congress said in 1391(c) “for purposes of venue under this chapter” and when 1400 is part of “this chapter,” why isn’t that clear that Congress intended the definition of “resides” in 1391(c) would apply to 1400?

      Whichever Justices subscribe to the Scalia/Garner “Reading Law” view of interpreting legal texts ought to give the plain meaning to the venue statutes and treat “resides” for patent venue consistent with the rest of the federal venue provisions.

      1. But question such and out comes the immediate ad hominem that you must have some tie to the “worst patent attorneys EVER” (instead of actually engaging in any sense of inte11ectual honesty).

        Because the Court wants lower courts to have more discretion, but only the “more discretion” that aligns with an anti-patent view.

        It’s Orwellian.

  15. Dennis, cases filed in the ED Tex. against domestic companies generally get transferred to the most convenient forum. This actually may be different from the principle place of business.

    Also, the patent venue statute does not apply to foreign corporations — and this includes many US companies that have relocated their corporate HQ’s outside the US. They still will be sued in the ED Tex.

    Still, I agree, Feds are reversed, 5-3.

  16. Perhaps the silver lining here will be that at least this takes more winds out of the sails of further patent “reform” efforts…

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