The Supreme Court’s recent holding in TC Heartland settled several points of law: first, 28 U.S.C. § 1400(b) is the “sole and exclusive provision controlling venue in patent infringement actions; second, the broader venue provisions in 28 U.S.C. § 1391(c) are not applicable to patent infringement cases; and third, TC Heartland reversed the Federal Circuit’s decision that reaffirmed VE Holding and held that “the current version of § 1391 does not contain any indication that Congress intended to alter the meaning of § 1400(b) as interpreted in Fourco.” In the aftermath of TC Heartland, there have been inconsistent approaches to the question of waiver and whether the recent Supreme Court decision constitutes new law. Two such decisions are detailed, below.
On November 10, 2016, Judge David C. Godbey of the United States District Court for the Northern District of Texas held that two video upload patents were invalid under 35 U.S.C. § 101. The patents, owned by Youtoo Technologies, were asserted against Twitter, which acquired the Vine application in January 2013. Judge Godbey described the asserted patents as directed to a system of “receiving and distributing user-generated video content for distribution on television broadcasts and the Internet.”
On April 7, 2016, Judge Barbara M. G. Lynn of the Northern District of Texas denied defendant Maxmind, Inc.’s Motion for Exceptional Case Determination and Attorneys’ Fees and Costs. In doing so, the court found that “Plaintiff’s litigation position was not frivolous or objectively unreasonable” because the “substantive law of Section 101 patent-eligibility has evolved since Plaintiff initiated this lawsuit.”