by Dennis Crouch
Comcast is pushing its proper venue argument. After being denied by the district court and a Federal Circuit panel, it has now petitioned for en banc rehearing. In re Comcast Cable Communications, LLC, No. 26-104 (Fed. Cir. Dec. 9, 2025).
The underlying dispute presents a question the appellate court seemingly has not squarely addressed: whether the “acts of infringement” prong of 28 U.S.C. § 1400(b) requires a plaintiff to allege that the defendant performed all steps of a claimed method within the judicial district, or whether alleging the performance a subset suffices.
Patent Venue Under § 1400(b): The patent venue statute provides that a 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." 28 U.S.C. § 1400(b). After TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017), a domestic corporation "resides" only in its state of incorporation. For defendants sued outside their home state, plaintiffs must establish both "acts of infringement" and a "regular and established place of business" in the chosen forum.
Post TC Heartland (2017), I think of Section 1400(b) as being quite narrow. But its 1897 origin was not as a restriction on patent plaintiffs but as an expansion of their options. At the time, the general venue provision limited civil suits to the district where the defendant was an “inhabitant.” Patent holders complained that this forced them to travel across the continent to sue infringers operating businesses in their own backyards. The 1897 statute responded by adding a second venue option: districts where the defendant had committed acts of infringement and maintained a regular and established place of business. This gave patentees meaningful access to forums where infringement was actually occurring.
Since then, however, the general venue statute has expanded greatly so that it now (basically) encompasses any district where the defendant is subject to personal jurisdiction. What began as a plaintiff-friendly expansion became, through statutory drift, more of a defendant’s shelter.
Docs:
Comcast began when Sandpiper sued Comcast in the Eastern District of Texas for infringement of five method patents related to content delivery network (CDN) technology. For Sandpiper, EDTex venue was proper because Comcast had committed acts of infringement in the district and also had offices located there (regular and established place of business).
Comcast admits that it does operate in EDTex and may perform some of the claimed steps, but argues none of the asserted claimed methods are fully performed within EDTex. Since plaintiffs have the burden of showing proper venue, Comcast’s legal argument is that Sandpiper had not alleged that all steps of any claimed method was performed within the district.
The district court sided with the patentee — holding that venue is proper so long as the plaintiff alleges that the defendant performed at least one step of the claimed method in the forum district. Comcast then petitioned for mandamus but that was denied based upon adequacy of a post-judgment appeal. Comcast has now asked the full court to reconsider its case.
The substantive question is interesting and important. Comcast’s argument rests primarily on the Federal Circuit’s 2005 decision in NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005). In that case, the focus was on infringement – asking when method claims were infringed “within the United States” under 35 U.S.C. § 271(a) when some steps occurred abroad. The court held that infringement of a US process patent requires each and every step be performed within the US. This is bolstered by Limelight Networks v. Akamai, 572 U.S. 915, 921 (2014), where the Supreme Court explained that “[a] method patent… is not infringed unless all the steps are carried out.”
Comcast argues that NTP‘s logic regarding § 271(a) applies with equal force to § 1400(b). The venue statute asks where the defendant “has committed acts of infringement.” If an “act of infringement” of a method claim requires performance of all steps (as NTP holds for § 271(a)), then venue should likewise require all steps to occur in the district. The textual argument has considerable force. That said, when I first read the statute I thought of “acts” as in “acts of a play,” where each act is a component part of the larger dramatic work rather than the complete performance itself. Under this alternative reading, the statutory phrase “acts of infringement” would refer to the constituent steps or components that together make up the complete infringement, not to fully consummated infringing acts. In their opposition brief, Sandpiper argues Congress deliberately chose “acts of infringement” rather than just “infringement”; intending to differentiate between “constituent conduct” and “completed violation.” The brief cites 18 U.S.C. § 2331(4)’s definition of “act of war” as meaning “any act occurring in the course of . . . declared war” as a parallel statutory usage. Sandpiper also tries to distinguish NTP’s holding as being driven by extraterritorial concerns rather than domestic venue allocation. Different policy considerations allow for an arguably different interpretive approach.
The district courts appear divided. Compare AML IP, LLC v. Bath & Body Works Direct, Inc., 2024 WL 3825242 (E.D. Tex. Aug. 13, 2024) (NTP controls; plaintiff must allege performance of all method steps within the district); SEVEN Networks, LLC v. Google LLC, 315 F. Supp. 3d 933 (E.D. Tex. 2018) (one step rule; venue is proper so long as the plaintiff alleges that the defendant performed at least one step of the claimed method in the forum district). That said, Sanpiper notes that the circuit split is quite one-sided with AML appearing as the only EDTex case following an all-the-steps rule.
I find myself skeptical of Comcast’s position when taken to its logical extreme. The patent venue statute is a creature of the 19th century, enacted in an era when the geographic distribution of infringing activity was far simpler to conceptualize. A factory making infringing widgets either operated in a particular district or it did not. Method patents claiming distributed computing processes present a fundamentally different situation. When a CDN operates by distributing content from servers across dozens of districts to users in all fifty states, no single district may contain all the claimed steps. Under Comcast’s “all steps” rule, the “acts of infringement” prong of § 1400(b) would become a nullity for such technologies. The only available venue would be the defendant’s state of incorporation. Congress provided two bases for venue, and an interpretation that collapses them into one for an entire category of patents seems to go too far.
Note: Sandpiper’s opposition brief cites Valeant Pharms. N. Am. LLC v. Mylan Pharms. Inc., 978 F.3d 1374 (Fed. Cir. 2020) and Celgene Corp. v. Mylan Pharms. Inc., 17 F.4th 1111 (Fed. Cir. 2021) for the proposition that an “act of infringement” may encompass activities that are only “part of” the completed infringement. Those are ANDA cases where § 271(e) creates “paper infringement” (filing of the ANDA with the FDA constitutes the infringing act). In Valeant, the court reserved the question of what preparatory activities might establish venue, and Celgene suggested that acts “fairly . . . part of the submission” could suffice even if they don’t constitute the complete infringement. But the ANDA context is arguably distinguishable. There, the infringement is a single unified act (submitting the ANDA) and the question is whether preparatory work contributing to that act occurred in the district. Comcast’s situation is structurally different: the question isn’t whether preparatory activities for a single act occurred locally, but whether performing one discrete step of a multi-step method claim is sufficient when other steps occur elsewhere.
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Odds are against the court granting en banc hearing of the mandamus action. However, the Federal Circuit will eventually have to resolve this question, whether now or in a future appeal from final judgment. The underlying tension reflects one that has long been part of patent law: how to apply statutory language drafted for a different technological era to innovations that its drafters could not have imagined.
An amicus brief filed by the US Chamber of Commerce argues that adds some data that forum shopping is a huge concern. And, in particular that NPEs are filing 60%+ of patent suits, with heavy EDTex concentration.