Strategies for Addressing Patent Venue Issues (RECORDING)
Recorded On: 02/28/2019
Patent venue issues continue to be the subject of much interest ‒ and litigation. This webinar will look at important Federal Circuit decisions since TC Heartland regarding venue. The panel will also give tactical tips regarding still open questions — and common battles in district courts.
Most recently, earlier this month, the Federal Circuit refused to rehear en banc Google’s petition for a writ of mandamus that contested a decision in the Eastern District of Texas that had found venue based upon the fact that Google servers are housed in third-party facilities in the district. The dissenting opinion stated, however, that there is “growing uncertainty among district courts and litigants as to the requirements of § 1400(b) when conducting business virtually through servers and similar equipment...”
Our panel will not only review recent cases, but will provide insights on strategies to address venue issues. It includes an in-house counsel who has overseen a lengthy venue fight, a litigator who won a Federal Circuit case creating new law on venue, and an expert on Federal Circuit practice and policy. Among the subjects they will discuss are:
- Considerations for defendants when weighing the risks of a potentially unfriendly venue vs. the cost of challenging venue
- Conflicting district court fact-intensive decisions over the § 1400(b) “regular and established place of business” inquiry
- How best to approach open issues such as waiver and time period in determining venue
- John Dragseth, Fish & Richardson, P.C.
- Eileen Hunter, 3M Innovative Properties Co.
- Charlie McMahon, McDermott Will & Emery
Fish & Richardson, P.C.
Jack Brennan is a principal in the New York office of Fish & Richardson P.C. His practice emphasizes patent prosecution, opinions, due diligence, and client counseling in the fields of biotechnology and pharmaceuticals. Several years ago, Jack successfully challenged the way the U.S. Patent and Trademark Office calculates Patent Term Adjustment for patents resulting from national stage filings under 35 U.S.C. 371. He holds a Ph.D. in genetics.
3M Innovative Properties Co.
is Senior IP Counsel at 3M. She manages IP disputes globally, which include patent litigation venue disputes within the U.S. She also serves on 3M’s Global Trade Secret Protection Program task force. Eileen was a Partner at Faegre Baker Daniels and clerked for the Eighth Circuit Court of Appeals. She is a vice chair of IPO’s Litigation Committee.
McDermott Will & Emery
is a Partner at McDermott Will & Emery. His practice focuses on IP litigation. He successfully convinced the Federal Circuit to vacate an Eastern District of Texas ruling that ZTE, which had had contracted with a call center in Plano, Texas, could be sued in the district. In that case, the Federal Circuit clarified that, upon motion by the defendant challenging venue in a patent case, the plaintiff bore the burden of establishing proper venue.