The IP Litigation Team at Fried Frank is continuously tracking the impact of TC Heartland. Every week, we provide a roundup of the courts' latest orders and opinions concerning venue-related issues in patent infringement cases.

The summaries below are grouped by topic and cover the period September 6 – September 13, 2017.

Waiver of Objection to Venue

In Boston Scientific Corp. v. Cook Group Inc., C.A. No. 15-980-LPS-CJB (D. Del. Sept. 11, 2017), Judge Stark granted the defendant’s motion to transfer to the Southern District of Indiana. The court held that the TC Heartland opinion represented an intervening change in the law of venue. Therefore, the defendants were entitled to an exception to the usual rule of waiver.

Meaning of “Regular and Established Place of Business”

The court in Boston Scientific Corp. also provided an extensive analysis of what constitutes a “regular and established place of business.” The court noted that a fixed location, such as a storefront, is not necessary, but “some physical presence is nevertheless required.” Applying these principles, the court held that traveling sales representatives who took meetings in the district were insufficient to demonstrate a regular and established place of business. For a more comprehensive summary of the case, see our article entitled “Judge Stark Finds Temporary Sales Representatives Do Not Create a Regular and Established Place of Business for Purposes of Venue.”

In Bristol-Myers Squibb Co. v. Mylan Pharmaceuticals Inc., C.A. No. 17-379-LPS (D. Del. Sept. 11, 2017), Judge Stark reiterated the legal standards he articulated in Boston Scientific Corp., including that “some physical presence” is required for venue and merely doing business in a jurisdiction is insufficient. The court also noted that the defendant – in this case Mylan Pharmaceuticals Inc. (“MPI”) – bears the burden of showing that venue is improper. The court acknowledged that “the record does not reveal any physical presence here that is particularly and exclusively MPI’s.” Indeed, MPI submitted evidence that it does not have “plants, corporate offices, facilities, or other real property in Delaware,” and “does not sell products to any distributors or wholesalers in Delaware.” The court, however, found that MPI may have a regular and established place of business in Delaware because (i) MPI is regularly involved in ANDA litigation in Delaware; and (ii) MPI is a part of a corporate family that has 40 entities incorporated in Delaware. The court thus denied MPI’s motion to dismiss for improper venue without prejudice and granted the plaintiff the opportunity to take venue-related discovery. The court noted that MPI would be allowed to re-file the motion after the discovery is completed. For a more comprehensive summary of the case, see our article entitled “District of Delaware Issues Significant Opinion Concerning Venue in Hatch-Waxman Cases.” 

Meaning of “Acts of Infringement”

In Bristol-Myers Squibb Co., the court also addressed the meaning of “acts of infringement” in the context of Hatch-Waxman litigation. The court held that an ANDA filer “has committed acts of infringement” as required for venue under § 1400(b) whenever it plans to sell infringing products in the judicial district in the future. The court also specifically rejected the assertion that the “act of infringement” in ANDA litigation is the submission of an application to the FDA. The court’s holding appears to be at odds with the specific language of 35 U.S.C. § 271(e), which provides that submitting an application “shall be an act of infringement.” Again, a more comprehensive summary of this case can be found in our article entitled “District of Delaware Issues Significant Opinion Concerning Venue in HatchWaxman Cases.”

Availability of Venue-Related Discovery

In Telebrands Corp. v. Seasonal Specialties, LLC, Civil Action No. 17-3390 (D.N.J. Sept. 6, 2017), the court granted a motion to transfer to the District of Minnesota due to improper venue. The plaintiff presented no evidence that the defendant, Seasonal Specialties, had a regular and established place of business in New Jersey, but sought limited discovery to find such evidence. The defendants presented their motion along with a declaration from the president of Seasonal Specialties stating that they did not have any employees or an established business presence in New Jersey. The court denied Telebrands’s request for discovery, holding that the cursory allegations of venue contained in the complaint were insufficient to raise a substantial question of venue in light of the defendant’s motion and supporting declaration