TC Heartland Decision: Impact on Patent Litigation Landscape Explored
The Supreme Court in TC Heartland v. Kraft Foods Group Brands overturned Federal Circuit case law dating to 1990 that permitted patent litigation venue to be found wherever a defendant was subject to personal jurisdiction. The unanimous TC Heartland decision is changing the patent litigation landscape by limiting the venues where patent infringement lawsuits can be brought. In effect, patent owners can no longer assert jurisdiction over domestic companies in almost any forum across the country, under the broad definition of "resides" in § 1391(c). Forum shopping in popular districts is expected to be dramatically restricted.
As courts implement the TC Heartland decision, many legal and practical questions that had been moribund since 1990 are now resurfacing. Join a panel of key thought leaders and patent counsel assembled by The Knowledge Group as they delve into an in-depth analysis of the TC Heartland ruling’s impact on patent litigation landscape. Speakers will also provide the audience with practical strategies in advocating for their clients in a rapidly evolving legal climate.
Key topics include:
- TC Heartland Decision: An Overview
- TC Heartland’s Implications
- Recent Patent Litigation Trends
- Legal and Practical Uncertainties
- Practical Litigation Strategies
Alex Harris, Associate Attorney
Gibson, Dunn & Crutcher LLP
- The history leading up to TC Heartland: the evolution of the special patent venue statute, and the general venue statute, and cases interpreting them
- The arguments and decision in TC Heartland
Jo Dale Carothers, Ph.D., Shareholder
Weintraub Tobin Chediak Coleman Grodin Law Corporation
- The impact venue challenges are having on promoting settlements
- The number of cases landing in Delaware and the over-extension of already limited resources there
- Details of In re Cray
- What would it take for an employee’s home to constitute a regular and established place of business? What if all employees of a company work from their homes?
- Advising clients on location of “offices”—moving an office a few block matters now (e.g., part of Richardson, Texas, a suburb of Dallas, is in TXED and part is not)
- What happens if you close a place of business, but the alleged infringement took place before the office was closed? Not all judges are treating this the same in terms of venue consideration.
J. Christopher Carraway, Partner
Klarquist Sparkman, LLP
How plaintiffs may try getting around TC Heartland and what effect the decision may have for certain edge cases. E.g.:
- Foreign defendants: TC Heartland likely does not apply, which may encourage plaintiffs to try suing a foreign parent rather than the US sub (if they can make a valid claim of infringement against the parent)
- Parents/subs generally: Because the facts supporting venue must be “of the defendant” (In re Cray), not a related entity, plaintiff may play games trying to sue a parent or sub that has better venue facts (e.g., a store in EDTX) even if a different entity is the one conducting the alleged infringement. As with naming foreign parents, these attempted end-runs of TC Heartland will likely lead to more motion practice on whether a defendant is the right defendant.
- Multi-defendant actions are likely to be more difficult: while unrelated patent actions largely disappeared after the AIA’s joinder rules went into effect, there still are some multi-defendant actions where defendants are acting in concert. Those cases will be much harder to file now, or they will be necessarily directed to a district like Delaware, where many corporate defendants are incorporated.
- Cases with patent and non-patent claims: What happens to cases that include a patent claim combined with another type of legal claim (copyright, trademark, etc.) where venue is improper for the patent claim? Should the whole case be dismissed or just the patent claim? Can the judge transfer the whole case (patent and trademark claims) to a correct patent venue under 1400/1406 or must the judge use 1404 to transfer the non-patent claims. A recent case in Arkansas addressed some of these questions.
- Counterclaims of patent infringement: Must counterclaims of patent infringement satisfy 1400(b)? E.g., if plaintiff sues defendant for patent infringement in the defendant’s home state, can the defendant file permissive counterclaims for patent infringement of the defendant’s own patent against plaintiff even though venue would be improper in that venue for those claims if filed in an independent action? The answer to this appears to be yes (the plaintiff is considered to have waived a venue challenge for counterclaims by choosing the forum). What if the plaintiff’s case was filed elsewhere and involuntarily transferred to the defendant’s home state? The waiver theory does not apply because the plaintiff did not choose the forum, but courts have split on this.
Kim Schenk, Principal
Charles River Associates
Economic aspects of the venue decision, such as:
- Trends in case filings pre- and post-TC Heartland.
- Differences in how the various courts view damages.
- How differences among venues in terms of success rates, times to trial, etc. impact the overall economics of a case.
- What sort of business documents may be useful to establish a “regular and established place of business”
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
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including litigation, prosecution, licensing, contract disputes, and issues related to proceedings before the USPTO. Jo Dale has represented companies in litigation in numerous federal district courts and state courts across the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC).
Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group. She is an intellectual property litigator …
Chris Carraway is a partner at Klarquist Sparkman in Portland, Oregon, where he has focused his practice exclusively on intellectual property litigation. Mr. Carraway has particular experience litigating patents involving computer software and hardware, mobile devices and applications, video game technology, and e-commerce, having represented clients including Microsoft, SAP, eBay, LinkedIn and NBC. He has argued in federal jurisdictions across the country, including dozens of matters in the Eastern District of Texas, and co-authored Law360’s expert analysis, “7 Things to Think About After TC Heartland.”
Prior to entering private practice, Mr. Carraway served as a law clerk to the Honorable William C. Bryson of the U.S. Court of Appeals for the Federal Circuit. He received his law degree with High Honors, Order of the Coif, from Duke University School of Law.
Chris Carraway is a partner at Klarquist Sparkman in Portland, Oregon, where he has focused his practice exclusively on intellectual …
Kimberly Schenk, CPA, CFF has more than 15 years of experience in evaluating damages in intellectual property matters. She has provided expert witness testimony in matters involving patent, trademark, and copyright infringement, as well as misappropriation of trade secret and breach of contract matters. Ms. Schenk has testified before juries in Federal Court in the Eastern District of Texas and Northern District of California, among other venues. Her experience spans a variety of industries, including medical devices, software, telecommunications, and consumer products. Ms. Schenk is a Principal in the Intellectual Property practice of Charles River Associates in Chicago.
Kimberly Schenk, CPA, CFF has more than 15 years of experience in evaluating damages in intellectual property matters. She has …
Alex Harris is an associate in the San Francisco office of Gibson, Dunn & Crutcher, focusing on appellate and intellectual property litigation. Mr. Harris filed amicus briefs at both the petition and merits stages in TC Heartland, and has experience with courts’ application of the new standard. Mr. Harris has also represented clients in numerous Federal Circuit appeals, and was the lead associate representing the patent challenger in the Supreme Court's seminal case, Alice v. CLS.
Mr. Harris previously served as a law clerk to the Honorable Raymond M. Kethledge of the United States Court of Appeals for the Sixth Circuit. He received his law degree from Stanford Law School, where he conducted advanced clinic coursework in Supreme Court litigation and edited the Stanford Technology Law Review.
Alex Harris is an associate in the San Francisco office of Gibson, Dunn & Crutcher, focusing on appellate and intellectual property litigation. …
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About Weintraub Tobin
With offices in Los Angeles, Newport Beach, Sacramento, San Diego, and San Francisco, Weintraub Tobin is an innovative provider of sophisticated legal services to dynamic businesses and business owners, as well as non-profits and individuals with litigation and business needs. For more information on the firm, visit www.weintraub.com.
About Klarquist Sparkman, LLP
Klarquist is one of the oldest and largest full-service intellectual property firms in the Pacific Northwest. For more than 75 years, the firm has provided unparalleled technical legal services to innovative companies and prestigious institutions in the U.S. and overseas. The litigation team has secured victories in a wide variety of disputes in venues spanning the country, and has been one of the most successful in the nation in inter partes reviews. The patent prosecution practice serves all types of clients, from high-tech corporations and research universities to solo inventors. With more than 90% of our professionals having technical degrees, the firm has protected ideas in every area of modern technology. Recognized for an artisanal approach to the practice of intellectual property law, the firm is trusted by pioneering clients that stay with the firm for good. Klarquist: known for the clients we keep.SM
About Charles River Associates
Charles River Associates is a leading global consulting firm that offers economic, financial, and strategic expertise to major law firms, corporations, accounting firms, and governments around the world.
With proven skills in complex cases and exceptional strength in analytics, CRA consultants have provided astute guidance to clients in thousands of successful engagements. We offer litigation and regulatory support, business strategy and planning, market and demand forecasting, policy analysis, and risk management consulting.
Our success stems from the outstanding capabilities of our consultants, many of whom are recognized as experts in their respective fields; our close relationships with a select group of respected academic and industry experts; and from a corporate philosophy that stresses interdisciplinary collaboration and responsive service.
Headquartered in Boston, the firm has offices internationally.
About Gibson, Dunn & Crutcher LLP
Gibson, Dunn & Crutcher is a recognized leader in representing companies ranging from start-up ventures and emerging growth companies to multinational corporations across all major industries, particularly technology, communications, manufacturing and consumer services. We also represent the investment community, including commercial and investment banks, partnerships, and individuals. Our offices and practice groups work together seamlessly to craft customized, cutting-edge deals for our clients.
Our corporate clients benefit from Gibson Dunn’s network of over 1,200 attorneys located in 20 offices in major cities in the United States and throughout the world. In the structuring, negotiation and execution of transactions, our corporate attorneys work closely with colleagues in other practice groups, including antitrust, tax, finance and executive compensation, all of which are vital to the success of complex corporate transactions. Our lawyers also handle every aspect of litigation, crisis management, data privacy and cybersecurity, regulatory law, business restructurings and reorganizations, intellectual property, employment and labor law, and have played key roles before regulatory bodies such as the U.S. Securities and Exchange Commission.