Venue, in the context of the federal law, refers to the judicial district in which a case can be heard. Venue must be established for each cause of action in a case.
In most federal civil litigation, proper venue is defined by section 1391(c) of Title 28 of the U.S. Code, which states, in part, that a civil action may be brought in a judicial district in which any defendant resides; in a judicial district in which a substantial part of the events or omissions giving rise to the claim occurred; or if neither of those conditions can be met, then in any judicial district in which the defendant is subject to the court’s personal jurisdiction.
Patent infringement lawsuits, however, fall into an exception to that general rule because there is a separate provision governing patent venue. That provision, found in section 1400(b), states, “Any civil action for patent infringement may be brought in the judicial district [1] where the defendant resides, or [2] where the defendant commits acts of infringement and has a regular and established place of business.”1
In its TC Heartland decision,2 the U.S. Supreme Court made clear that the patent venue statute of section 1400(b), as opposed to the general venue provision found in section 1391(c), is the exclusive provision controlling venue in patent infringement proceedings. The Supreme Court also clarified that where a defendant “resides” refers only to the state of incorporation.3 This leaves plaintiff patent owners the choice of suing a defendant in its state of incorporation or instead relying on the second prong of section 1400(b), which requires showing that the defendant both committed an act of infringement in a given district and that it has a regular and established place of business there. If a patent owner is asserting more than one patent in its suit, it must satisfy one of these conditions for each asserted patent. If the patent owner brings suit where the defendant resides, venue is easily established for each cause of action. But if the patent owner instead relies on the second prong of section 1400(b), the issue can quickly become more complicated.
Let’s look at a hypothetical: A patent owner has two patents—one patent having claims covering a product and a second patent having claims covering the method of making the product. The patent owner wants to bring suit against one of its competitors in the Northern District of Illinois. The competitor maintains a large sales office in Chicago, which would qualify as a “regular and established place of business” and is within the Northern District of Illinois. However, the competitor is incorporated in Delaware and manufactures most of its products in Texas. The patent owner cannot rely on where its competitor “resides” to establish venue in the Northern District of Illinois, so it instead must satisfy the second test of 1400(b): showing an act of infringement in the district and that the competitor has a regular and established place of business there. The patent owner would be able to meet this test for its product claims by relying on the infringing sales occurring out of the competitor’s Chicago office. But because the product is manufactured in Texas, the patent owner likely would not be able to show that its method claims are infringed in the Northern District of Illinois.
Is the patent owner out of luck for establishing venue for all of its claims in the Northern District of Illinois? Maybe not.
This is where pendent venue can come into play. Pendent venue, not to be confused with pendent jurisdiction, is perhaps a lesser-known common law doctrine than its jurisdictional counterpart, although their concepts are similar. Pendent venue may be used in situations in which venue is lacking for a particular claim, but that claim shares a common nucleus of operative facts with at least one other claim for which venue is proper. The doctrine is grounded in the principle of judicial efficiency: the existence of that commonality of facts will save time and resources if the same court considers both claims together, despite the lack of proper venue for one claim.
Our hypothetical patent owner could conceivably rely upon the pendent venue doctrine to establish venue for the method claim patent. Indeed, there is sound logic in addressing these claims together. A common nucleus of operative facts between the two causes of action could include overlap among potential disputed claim terms, common facts about the accused products and the method of making them, and common facts about their sales that would be relevant to proving infringement and damages for both the product and method claims. Having such similar issues decided by the same court would certainly improve judicial efficiency.
At least two courts have recognized the soundness in relying upon pendent venue to establish venue over an otherwise improperly venued patent claim.
In Omega Patents, LLC v. CalAmp Corp.,4 the plaintiff brought an action involving patent infringement claims for five different patents. The plaintiff established that venue was proper in the judicial district for one of patent claims under a forum selection clause from a settlement agreement.5 The question arose, however, as to whether the district court could properly exercise pendent venue over the other four patent infringement claims.6 The district court found that because venue was proper as to one patent infringement claim, and the other patent infringement claims shared a common nucleus of operative fact, pendent venue was proper for the other claims.7 The district court distinguished TC Heartland, reasoning that “[t]he Supreme Court in TC Heartland established how venue is to be determined in these actions in the absence of a stipulation to venue accompanied by pendent venue.”8
Bio-Rad Laboratories, Inc. v. Genomics, Inc. involved a similar situation. There the plaintiff asserted patent infringement claims for three different patents.9 A forum selection clause established venue for two of the asserted patents, and the plaintiff sought to rely on the doctrine of pendent venue to bring in a third asserted patent.10 The district court agreed that pendent venue was properly applied given the common nucleus of operative facts that existed for all three patents. For example, the same product was accused for each of the three patents and the plaintiff expected similar witnesses and documentary evidence to be relevant to each patent.11 The district court also distinguished other cases that had declined to apply pendent venue, noting that those were cases in which a plaintiff sought to “skirt” the requirements of the patent venue statute entirely by relying upon a non-patent claim to establish venue under the general provision of section 1391 and then use pendent venue to bring in its patent cause of action, thereby avoiding the requirements of section 1400(b) entirely. In Bio-Rad, however, because the primary claims were patent claims that were properly venued by a forum selection clause, the court held that it was proper to exercise pendent venue over the third patent.12
Other courts have expressed skepticism about the viability of pendent venue after TC Heartland. Those courts argue that TC Heartland solidified that section 1400(b) is the “exclusive” provision governing patent venue, and a common law doctrine such as pendent venue cannot overcome that. But TC Heartland did not decide that issue. The issue before the Court in TC Heartland was whether the general venue statute, section 1391(c), could supplement the patent venue statute, section 1400(b). It held that it cannot. But when venue is first properly established for one or more patent causes of action under section 1400(b), applying pendent venue to additional claims does not run afoul of the Supreme Court’s directive in TC Heartland.
The cases that have declined to apply pendent venue are in accord with this logic. Those cases typically involve a plaintiff that tried to avoid satisfying section 1400(b) altogether by relying on the general venue provision under section 1391(c) to establish venue for a non-patent cause of action and rely upon pendent venue exclusively for the related patent causes of action. Had those plaintiffs been able to separately satisfy section 1400(b) for any patent causes of action, pendent venue should have been permitted.
Although TC Heartland refined the requirements that must be met to establish venue in a patent case, it did not eliminate pendent venue. For patent owners that are able to establish venue under section 1400(b) for at least one cause of action, pendent venue remains a viable option for establishing venue for related infringement claims.
128 U.S.C. § 1400(b).
2 TC Heartland v. Kraft Foods Group Brands, 137 S. Ct. 1514 (2017).
3Id. at 1521.
42017 WL 4990654 *1 (M.D. Fla. Sept. 22, 2017).
5Id.
6Id. at *3.
7Id. at *4.
8Id.
9Bio-Rad Labs., Inc. v. 10X Genomics, Inc., 2020 WL 2079422 (D. Mass 2020)
10Id. at *8.
11Id.
12Id.
13See, e.g., Nissei ASB Co. v. R&D Tool & Eng’g Co., 2018 WL 9961069 (N.D. Ga. Nov. 9, 2018); Glob. Protection Corp. v. Arthur, No. 1:18-cv-10966, slip op. at 1 (D. Mass. Sept. 20, 2018); Cal. Expanded Metal Prods. Co. v. Klein, 2018 WL 2041955 (C.D. Cal. Apr. 30, 2018); Wet Sounds, Inc. v. PowerBass USA, Inc., 2018 WL 1811354 (S.D. Tex. Apr. 17, 2018); Nat’l Prods., Inc. v. Arkon Res., Inc., 2018 WL 1457254 (W.D. Wash. Mar. 23, 2018); Jenny Yoo Collection, Inc. v. Watters Design Inc., 2017 WL 4997838 (S.D.N.Y. Oct. 20, 2017).
