VENUE RULES IN PATENT CASES AFTER TC Heartland

1. Introduction

Venue rules determine where a patent infringement lawsuit can be filed. They are crucial because:

Patent holders often choose courts strategically (forum shopping)

Litigation costs, jury trends, and regional precedents influence outcomes

Key US Law:

28 U.S.C. § 1400(b) – Governs patent venue:

“Any 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. § 1391(c) – Defines corporate residence for venue purposes

Historical Context:

Before 2017, plaintiffs filed in favorable districts (often Eastern District of Texas)

The Supreme Court case TC Heartland LLC v. Kraft Foods Group Brands LLC (2017) changed this significantly

2. TC Heartland Case (2017) – Supreme Court

Facts:

TC Heartland, an Indiana-based company, was sued by Kraft Foods in Delaware

Delaware was considered plaintiff-friendly; TC Heartland argued improper venue

Issue:

How to interpret 28 U.S.C. § 1400(b) regarding corporate residence

Judgment:
✔️ Supreme Court ruled:

Corporate defendant resides only in its state of incorporation for patent venue purposes

Merely selling products nationwide does not establish venue in every district

Impact:

Limited “forum shopping”

Shifted many patent cases from plaintiff-friendly districts like Eastern District of Texas to defendants’ home states

3. Key Principles After TC Heartland

Corporate Residence Rule

Venue is proper only in district where defendant is incorporated

Regular and Established Place of Business

Alternative venue: where the defendant actually has a physical presence

Acts of Infringement Alone Are Insufficient

Nationwide sales do not automatically create venue

Plaintiff’s Choice of Forum Restricted

Must comply strictly with §1400(b)

4. Landmark Cases Post-TC Heartland

1. In re: Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017)

Facts:

Cray, headquartered in Washington, sued in Delaware

Defendant challenged venue based on TC Heartland

Judgment:
✔️ Court dismissed for improper venue

Reinforced corporate residence = state of incorporation principle

Significance:

Early post-TC Heartland clarification

Nationwide sales are not sufficient for venue

2. In re: ZTE (USA) Inc., 890 F.3d 1008 (Fed. Cir. 2018)

Facts:

ZTE sold products in multiple districts but was incorporated in China

Plaintiff filed suit in Texas

Judgment:
✔️ Venue dismissed for improper forum

Federal Circuit confirmed physical presence required for US venue under §1400(b)

Significance:

Foreign corporations must have a regular and established place of business in the US

3. In re: Samsung Electronics Co., Ltd., 889 F.3d 1347 (Fed. Cir. 2018)

Facts:

Samsung challenged venue in Eastern District of Texas

Claimed insufficient physical presence

Judgment:
✔️ Court dismissed the case

Emphasized “regular and established place of business” cannot be met by mere distributor relationships

Principle:

Show actual control over a physical location, not just sales agents

4. In re: BigCommerce, Inc., 890 F.3d 978 (Fed. Cir. 2018)

Facts:

Plaintiff filed in Texas against BigCommerce, incorporated in Delaware

No Texas offices

Judgment:
✔️ Venue improper under §1400(b)

Only Delaware or districts with regular place of business allowed

Significance:

Strengthened defendant’s control over forum selection

Limited plaintiff-driven venue strategy

5. In re: HP Inc., 889 F.3d 1285 (Fed. Cir. 2018)

Facts:

HP challenged venue in Eastern District of Texas

Plaintiff argued venue based on sales in Texas

Judgment:
✔️ Venue improper

Federal Circuit stressed mere shipment of products is insufficient

Must have physical offices, employees, or permanent presence

6. In re: Google LLC, 949 F.3d 1338 (Fed. Cir. 2020)

Facts:

Google challenged venue for patent infringement claims filed in Texas

Products sold nationwide; no Texas office

Judgment:
✔️ Venue dismissed under TC Heartland principles

Significance:

Shows long-term enforcement of TC Heartland rules

Nationwide sales alone cannot establish venue

5. Practical Impact of TC Heartland

End of Eastern District of Texas Dominance

Historically, ~40% of patent cases were filed there

Strategic Venue Considerations

Defendants must now focus on incorporation and physical presence

Forum Shopping Reduced

Plaintiff-friendly jurisdictions less accessible

Foreign Corporations

Must have regular US office for venue

Litigation Costs

Defendants can move cases to home-state courts with local advantages

6. Summary Table

7. Conclusion

After TC Heartland, venue in patent cases is strictly tied to corporate residence and physical presence.

Courts consistently reject nationwide sales as sufficient venue.

Strategic implications: plaintiffs must carefully assess incorporation and office locations, while defendants can use venue challenges effectively.

Post-TC Heartland law has shifted patent litigation strategy, reducing forum shopping and promoting local justice.