Akin Gump IP Lawyers Discuss Evolution of Patent Venue Law in Texas Lawyer Article
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Texas Lawyer has published “Creative Plaintiffs Drive Rapid Evolution of Patent Venue Law,” written by Akin Gump intellectual property partner Kirt O’Neill and associate Colin Phillips. The article addresses the efforts being made by plaintiffs in patent cases to keep suing corporate defendants in “perceived plaintiff-friendly forums,” following the Supreme Court’s TC Heartland decision last year. That decision, the article notes, “narrowed the venue options for a corporate patent defendant to either the state of incorporation or ‘where the defendant has committed acts of infringement and has a regular and established place of business.’”
O’Neill and Phillips outline some trends they see as emerging with regard to selecting a venue. First, they note, is the corporate affiliate argument, in which a plaintiff argues that venue is proper because a place of business of a defendant’s corporate affiliate is actually a place of the defendant. A second trend involves the argument that a third-party distributor could have its place of business imputed to the defendant for venue purposes.
The authors then offer some considerations for patent plaintiffs, including:
- preparing in advance “to offer proof of lack of corporate ‘separateness’” between the defendant and its affiliate
- considering identifying a corporate affiliate as a basis for proper venue to enhance the credibility of one’s strategy with the court
- always asking for discovery of both the defendant and its affiliate, with one’s own discovery ready to go when a case is filed
To read the full article, please click here.