IP with Training Wheels – The importance of venue in a Patent Matter. Khan v. Hemosphere et al, 2019 WL 10947304 (Signed 01/23/2019 – released 10/29/2020) (USDC-NDIL-Eastern Div.)

Plaintiffs filed suit against over three hundred defendants for patent infringement under 35 USC 112. By the time of this slip opinion only a small portion had been served. Of those who were served, many of them moved to dismiss the matter on various grounds including venue.

The Court investigated the venue question. The Court cited to 28 USC 1400(b) that lays jurisdiction in a patent matter (1) where the defendant resides or (2) where the defendant committed acts of infringement and has a regular and established place of business. The court observed that the statute has been interpreted to mean a real place of business and not a virtual place of buisness. If venue is found lacking then the default remedy is dismissal of the action or, if justice requires, transfer of the matter. The statute places the burden for proving the propriety of venue on the plaintiff.

Having looked at venue in trademark matters also, the difference in the venue rules is stark. In trademark, I have had a matter where my plaintiff was in northern Wisconsin and the defendant was in Oregon. The case turned on advertising that diverted sales from plaintiff to defendant using plaintiff’s trademark. We briefed the court on the venue question and the court decided that the venue was proper as both parties had customers here in the Northern District. Bottom line, though, is that patent plaintiffs need to look carefully at how they will carry their burden of proving venue. – James Michael Faier (jmfaier@faier.com, 312-382-9400) ###