Corporate Defendant in Patent Infringement Suit Does Not Necessarily Reside in All of the Judicial Districts in a State with Multiple Districts

May 25, 2018

Reading Time : 2 min

In the two underlying patent infringement lawsuits, the corporate defendant had been sued by two different plaintiffs in the Eastern District of Texas. The defendant was incorporated in Texas and had its headquarters and principal place of business in Austin, which lies in the Western District. The defendant had no place of business in the Eastern District. The district court denied the defendant’s motions to dismiss one suit and transfer the other, both motions being premised on improper venue in the Eastern District. The district court reasoned that being incorporated in the state meant that the defendant resided in each of the state’s districts. Subsequently, the defendant petitioned the Federal Circuit for writs of mandamus, challenging the venue rulings.

To reach its decision, the Federal Circuit analyzed the statute’s text and history, the Supreme Court’s decisions involving the statute and its predecessor, and the patent owners’ arguments based on policy and practical application. First, the court reasoned that the text of § 1400(b) referred to a single district for a defendant’s residence, but allowed multiple districts to be where the defendant maintained regular and established places of business. The court also found that the text of the predecessor to § 1400(b) supported this interpretation.

Second, the court found support for its interpretation in the Supreme Court’s decision in Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561 (1942). There, the Supreme Court held that the predecessor to § 1400(b) did not allow a corporate defendant to be sued in the Western District of Pennsylvania when that defendant only had a principal place of business in the Eastern District.

The Federal Circuit rejected the patent owners’ policy argument that it should adopt a flexible approach based on the “realities of modern business” in which corporations were “fluid, amorphous entities,” stating that those arguments were “best directed to Congress.”  Finally, the Federal Circuit found there was no difficulty applying the statute when a defendant is incorporated in a state but has no operations or facilities there, and held that venue is proper in the district where the defendant keeps its registered office “as recorded in its corporate filings.”  Such an office is “a universally recognized requirement of corporate formation,” and is intended to “serve as a physical presence” within the state of incorporation.

In re BigCommerce, Inc., Nos. 2018-120, -122, 2018 WL 2207265 (Fed. Cir. May 15, 2018)

[Linn (opinion), Reyna , and Hughes]

Share This Insight

Previous Entries

IP Newsflash

October 1, 2025

In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on the patent application’s earlier date of publication, both the corrected petition and the expert declaration continued to reference the issued patent rather than the published application.

...

Read More

IP Newsflash

September 30, 2025

The USPTO Director recently granted a petitioner’s request for rehearing of the decision discretionarily denying institution of inter partes review, ultimately vacating the original decision, and referring the petition to the board for an institution decision.

...

Read More

IP Newsflash

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.