A curious carve-out set forth in the AIA, Section 18, relates to whether Automated Teller Machines (ATM) can, by themselves, constitute a regular and established “place of business” for purpose of creating venue under 28 U.S.C. Section 1400(b). Congress has presumably sought to give a benefit to banking institutions by this so-called ATM amendment. Apparently for Congress, building and staffing a branch bank with personnel and offering multiple banking services is one thing; but merely having an ATM for withdrawal of cash is another.
This pro-bank amendment again calls into question an often overlooked issue of what constitutes a “regular and established place of business” for purposes of the patent venue statute in Section 1400(b). A recent decision from the Northern District of Illinois shows a trap for the unwary plaintiff seeking to plead venue in a patent case. The Federal Circuit has interpreted “regular and established place of business” to mean doing business “through a permanent and continuous presence” in the district, but not necessary a fixed physical presence. See In Re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985); Minnesota Mining & Manufacturing v. Johnson & Johnson Products, 1 U.S.P.Q.2d 1992, 1994-1995 (D. Minn. 1986). Merely “doing business” in a state will not confer venue under Section 1400(b). The business must be regularly engaged in, be continuous and substantial, employ either a fixed physical location or a personal presence, and there must be some measure of control by the corporate defendant. See e.g. Dual Manufacturing & Engineering, Inc. v. Burris Indus., Inc., 531 F.2d 1382 (7th Cir. 1976).
Against this backdrop, one can see why Congress was concerned that merely hooking up an ATM machine to a phone line and allowing for deposits, withdrawals and checking account balance reports is not a “regular and established place of business.”