Patent Venue's Method Claim Problem: How Many Steps Must Occur in the District?

"After being denied by the district court and a Federal Circuit panel, it has now petitioned for en banc rehearing. The underlying dispute presents a question the appellate court seemingly has not squarely addressed: whether the "acts of infringement" prong of 28 U.S.C. § 1400(b) requires a plaintiff to allege that the defendant performed all steps of a claimed method within the judicial district, or whether alleging the performance a subset suffices."

"The patent venue statute provides that a civil action for patent infringement "may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." After TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017), a domestic corporation "resides" only in its state of incorporation."

"Post TC Heartland (2017), I think of Section 1400(b) as being quite narrow. But its 1897 origin was not as a restriction on patent plaintiffs but as an expansion of their options. At the time, the general venue provision limited civil suits to the district where the defendant was an "inhabitant." Patent holders complained that this forced them to travel across the continent to sue infringers operating businesses in their own backyards."

Comcast has petitioned the Federal Circuit for en banc rehearing after denial by the district court and a panel, raising whether the "acts of infringement" prong of 28 U.S.C. § 1400(b) requires alleging that a defendant performed all steps of a claimed method within the forum or whether alleging performance of a subset suffices. Section 1400(b) permits venue where the defendant resides or where the defendant committed acts of infringement and maintained a regular and established place of business. After TC Heartland, a domestic corporation resides only in its state of incorporation, so plaintiffs suing out-of-state must prove both acts of infringement and a regular established place of business. The 1897 amendment originally expanded venue options to give patentees access to local forums.

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