The court finds that some physical presence is required to satisfy the venue standard.
On September 11, 2017, Chief Judge Leonard Stark of the US District Court for the District of Delaware handed down two decisions providing key guidelines for addressing venue challenges in patent cases.
In May, the US Supreme Court issued its landmark TC Heartland decision, which held that, for purposes of the patent venue statute of 28 U.S.C. § 1404(b), a corporation “resides” in its state of its incorporation. TC Heartland, however, did not address what qualifies as a “regular and established place of business” under the patent venue statute.
In separate patent infringement cases brought by Boston Scientific Corporation and Bristol-Myers Squibb Company, defendants filed improper venue motions on the theory that they do not have a “regular and established place of business” in Delaware. See Boston Sci. Corp. et al. v. Cook Grp. Inc. et al., Case No. 1:15-cv-00980-LPS-CJB (D. Del.); Bristol-Myers Squibb Co. et al. v. Mylan Pharms., Inc., Case No. 17-379-LPS (D. Del.). Chief Judge Stark’s rulings provide several guidelines for dealing with venue challenges:
In the Bristol-Myers Squibb Company case, the court found that while the plaintiff was unable to identify a sufficient physical presence of the defendant in the district, there were sufficient additional facts raised such that “the Court cannot say that [the defendants do] not have a regular and established place of business in Delaware.” Thus, the court denied the motion without prejudice as to the defendants renewing their venue challenge after venue-related discovery was completed.
By contrast, in the Boston Scientific case, the court granted the defendants’ motion and transferred the case because it found that the defendants presented facts that established that they do not have a regular and established place of business in Delaware. The court denied the plaintiffs’ request for venue-related discovery, finding that the record sufficiently demonstrated improper venue and that further discovery would “appear to be no more than a fishing expedition.”
If you have any questions or would like more information on the issues discussed in this LawFlash, please contact the authors, John V. Gorman and Amy M. Dudash in our Wilmington office, or any of the following lawyers from Morgan Lewis’s IP disputes team.
David W. Marston Jr.