by: Robert Kelly | September 11,2017
It has always been important for plaintiffs and their counsel to develop a solid venue strategy when filing a set of patent infringement lawsuits, but recent changes to the case law around venue have made that process even more important to the success of a campaign. Below are a few tips and tricks that can make venue planning easier, faster, and more consistent.
|Defendant||State of Incorporation||Place of Business||Implicated Revenue||Other Notes|
|Defendant #2||DE||CA||$B||office in DE|
Use a spreadsheet to track state of incorporation, place of business, and anything else that may help you determine the best venue for future cases. Organizing defendants in this way is especially useful when you have a patent that is infringed by multiple targets. Another benefit to using this approach is that it can help you group defendants into litigation waves based on other factors (e.g., implicated revenue).
Bookmark Your Best Resources
There are a number of resources that can help you quickly find the information you need for choosing venue. For example, most states have a free business entity directory that will provide information about whether a company is incorporated/registered to do business in that state, whether the company is still active, who the registered agent is, etc. Bookmark these resources so you don’t waste time searching for them every time a venue project comes up. Some examples of useful resources are:
U.S. Courts – Court Locator: http://www.uscourts.gov/court-locator
Delaware business entity search: https://icis.corp.delaware.gov/Ecorp/EntitySearch/NameSearch.aspx
California business entity search: https://businesssearch.sos.ca.gov/
Google Finance (quickly find addresses and SEC filings): https://www.google.com/finance
Don’t Forget About § 1404(a)
These days everyone is thinking about whether venue is proper under 28 U.S. Code § 1400(b) because of the recent TC Heartland ruling, but it’s still important to consider 28 U.S. Code § 1404(a) when picking venue. Even if venue is proper under § 1400(b) because a company is incorporated in a given district, the court is still permitted to transfer the case to a more convenient venue under § 1404(a).
Don’t Re-Invent the Wheel
If you’re considering filing suit against a party that has previously been sued for infringement, check the dockets of those other cases to see how venue was approached. The filings in those cases can help you determine whether your case will stick in a given venue and provide some additional facts that support your venue arguments. Remember to check for post-TC Heartland cases. Those will be the most relevant to newly filed cases.
Analyze the Data
There is a plethora of data available about cases before the U.S. District Courts. Use that data to help determine the best venue for your case. Examples of potentially useful statistics are: success rate of plaintiffs at trial, number of summary judgment rulings against patentee, speed/load of docket, etc. See below for some resources to get you started.
U.S. Courts Analysis & Reports: http://www.uscourts.gov/statistics-reports/analysis-reports
Docket Navigator: http://home.docketnavigator.com/ (requires subscription)
Lex Machina: https://lexmachina.com/legal-analytics/ (requires subscription)
Bonus Tip: Consider Whether You Actually Need All Those Parties in the Case
It’s common for counsel to use a scattershot approach to filing against multi-entity defendants (e.g., defendants with subsidiaries and sister companies) by naming every affiliated company that could possibly be implicated. While that approach has its benefits, it’s important to consider the impact it has on venue. You may be able to strengthen your argument that venue is appropriate (without damaging your infringement/damages allegations) by dropping one or two sister companies from the complaint.