Determining Patent Venue in the Light of TC Heartland Decision
In the later part of 2017, the U.S. Court of Appeals for the Federal Circuit made clear that the Supreme Court’s decision in TC Heartland v. Kraft Foods dramatically changed the patent venue landscape. An alleged infringer may now argue improper venue “in a judicial district where it is subject to a court’s personal jurisdiction but where it is not incorporated and has no regular and established place of business.” As a result of this Federal Circuit opinion and many other post-TC Heartland decisions, venue is becoming a much more complicated issue.
Join a panel of key thought leaders and litigants assembled by The Knowledge Group as they bring the audience to a road beyond the basics of bringing or defending against patent litigation and as they delve into an in-depth analysis of the current trends and recent court rulings involving determination of Patent Venue in light of the TC Heartland decision. Speakers will also provide the audience with practical strategies in bringing out the best in these lawsuits in a rapidly evolving legal climate.
Key topics include:
- TC Heartland v. Kraft Foods – A Change of Law
- Impacts of TC Heartland to Patent Infringement Litigation
- Identification of Correct Venue
- Venue as to Foreign Defendants
- Improper Venue Defense - Recent Trends and Developments
- Productive Litigation Strategies
Jonathan A. Choa, Partner
Potter Anderson Corron LLP
- Must venue be plead in the complaint
- Should/Must a Court allow venue discovery before deciding a motion to dismiss
- What is the proper venue in states with multiple judicial districts
- What is the proper venue in ANDA actions
Glenn E. Forbis, Principal
- The “Other Prong” of 28 U.S.C. 1400(b)
- What is “Regular and Established Place of Business?”
- “of the defendant.”
- “regular and established”; and
- “physical place”;
- Filing considerations
- Statistics concerning the change in patent litigation since TC Heartland.
The Cray test:
Philip Ou, Of Counsel
Paul Hastings LLP
- Did TC Heartland acknowledge that the Supreme Court’s prior decision in Brunette was no longer applicable by interpreting the “then existing statutory regime”
- Does the general venue statute §1391 or the patent venue statute §1400(b) apply to foreign defendants in patent cases
- Can/will Plaintiffs intentionally avoid naming U.S. subsidiaries of foreign defendants in order to forum shop
Lewis E. Hudnell, III, Founding Principal
Hudnell Law Group PC
- What constitutes a principal place of business?
- Where is venue proper in states with multiple jurisdictions?
- How has the patent venue landscape changed?
- What are the practical implications in cases where venue has been found to be improper?
Who Should Attend:
- Patent Attorneys
- Intellectual Property Lawyers
- Patent Consultants
- Patent Licensing Attorneys
- Patent Litigators
- Patent Holders
- Private Companies
- Corporate Counsel
- In-house Counsel
- Other related and Interested Individuals
Jonathan A. Choa is a partner in Potter Anderson & Corroon LLP’s General Litigation Group. He has a wide ranging practice focused on technology disputes. Jonathan has represented companies in patent infringement actions, breach of contract suits, as well as in licensing disputes. He also has extensive experience representing clients in complex commercial disputes, including securities claims and corporate disputes. He has represented clients in federal and state court proceedings and has experience in appellate proceedings, including preparing briefs for actions before the United States Courts of Appeal for the Federal and Second Circuits.
His clients include Fortune 500 e-commerce companies, pharmaceutical companies, cell phone and semiconductor manufacturers and large financial institutions.
Jonathan A. Choa is a partner in Potter Anderson & Corroon LLP’s General Litigation Group. He has a wide ranging …
Philip Ou is of counsel in the Intellectual Property practice of Paul Hastings in the firm’s Palo Alto office. He focuses his practice on intellectual property litigation. Mr. Ou has represented clients in federal district courts across the country, the United States International Trade Commission, and the Court of Appeals for the Federal Circuit and managed cases in all stages of litigation, from pre-litigation counseling through trial and appeal. In representing plaintiffs, he has helped clients successfully strategize the licensing of patent portfolios in a number of industries. In representing defendants, he has frequently disposed of cases for his clients on dispositive motions or through other defense strategy with no payments to plaintiff. In the past year, Law360 has twice recognized Mr. Ou as one of their Legal Lions in their Weekly Verdicts articles.
Philip Ou is of counsel in the Intellectual Property practice of Paul Hastings in the firm’s Palo Alto office. He …
Glenn Forbis is a Patent Litigator and Principal in the Troy office of Harness Dickey. He is known for being a dynamic litigator and trial attorney who is valued for developing a deep understanding each client’s technology and then presenting it to judges and juries in an understandable way as part of a compelling story. In practice for more than twenty years, Glenn has appeared in more than 150 patent and trademark infringement cases in most major Federal Court jurisdictions across the country. He has successfully defended multiple patent infringement claims in excess of $75 million and, on the Plaintiff’s side, has twice achieved recoveries for his clients in excess of $30 million. Glenn is routinely recognized by several publications for excellence in intellectual property litigation, and was most recently named to Managing IP’s “Short List” of patent litigators in Michigan.
Glenn Forbis is a Patent Litigator and Principal in the Troy office of Harness Dickey. He is known for being …
Mr. Hudnell is an intellectual property attorney specializing in patent litigation. He is committed to providing outstanding client service and to helping clients achieve favorable results in complex patent disputes. Mr. Hudnell has served as lead counsel on numerous patent lawsuits in federal court. Mr. Hudnell has successfully represented clients at trial and obtained numerous settlements in his clients’ favor. He has also successfully represented clients in post-grant proceedings before the Patent Trial & Appeal Board. Mr. Hudnell earned a B.S. in Operations Research and Industrial Engineering from Cornell University and a J.D. from the University of Pennsylvania.
Mr. Hudnell is an intellectual property attorney specializing in patent litigation. He is committed to providing outstanding client service and …
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Method of Presentation:
Experience in patent litigation
NY Category of CLE Credit:
Areas of Professional Practice
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About Potter Anderson Corroon LLP
Potter Anderson & Corroon LLP is the firm of choice for clients — ranging from Fortune 500 companies to some of the largest national law firms to individuals. It is the oldest Delaware law firm and one of the ten oldest continuously-practicing law firms in the United States. Since its small beginnings in 1826, Potter Anderson has become one of the largest and most recognized Delaware law firms, providing a full range of legal services to its local, national and international clients.
About Paul Hastings LLP
In today’s world of transformative change, our purpose is clear — to help our clients and people navigate new paths to growth. Our innovative approach and unmatched client service has helped guide our journey to becoming one of the world’s leading global law firms in such a short time. Founded in 1951, Paul Hastings has grown strategically to anticipate and respond to our clients' needs in markets across the globe. We have a strong presence throughout Asia, Europe, Latin America, and the U.S. We offer a complete portfolio of services to support our clients’ complex, often mission-critical needs—from structuring first-of-their-kind transactions to resolving complicated disputes to providing the savvy legal counsel that keeps business moving forward.
About Harness Dickey
Harness Dickey has obtained more than 60,000 patents for its clients since its founding in 1921 and currently manages more than 17,000 trademark registrations for clients around the globe. Currently ranked seventh among the nation’s top patent firms in a 2016 poll by IPWatchdog, Harness Dickey safeguards critical IP assets on a global scale for Fortune 500 companies, private and public businesses, universities, inventors, artists and entrepreneurs. Harness Dickey has offices in the metropolitan areas of Dallas, Detroit, St. Louis and Washington, D.C. Visit www.hdp.com and follow @harnessdickey for more information.
About Hudnell Law Group PC
Hudnell Law Group is a modern intellectual property law firm committed to innovating, adding value, and delivering results for its clients. Hudnell Law Group offers a full spectrum of intellectual property legal services and develops creative solutions tailored to suit its clients’ intellectual property needs. Hudnell Law Group employs new and alternative practices designed to enhance the value of its offerings. Hudnell Law Group demonstrates its value by the results it achieves for its clients and its commitment to providing outstanding client service.