Written by: Mark Terry
Short Answer: where the defendant has minimum contacts 28 U.S.C. § 1400(b) makes it very clear that “Any 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.” Furthermore, “for purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction.” 28 U.S.C. § 1391(c). Thus, for practical purposes, under the federal statutes, you can only sue a patent infringement defendant where he resides or where he does business. Of course, there is a lot embedded in those words, such as “resides” and “does business”, which we will explore below. In order to get personal jurisdiction over an out of state defendant, the forum state’s long arm statute must be satisfied, and federal due process must be satisfied. Most states interpret long-arm statutes to be co-extensive with due process. So, effectively, the “minimum contacts” test under Int’l Shoe and Burger King:
“the Federal Circuit applies a three prong test to determine if specific jurisdiction exists: (1) whether the defendant purposefully directed activities at residents of the forum; (2) whether the claim arises out of or relates to those activities; and (3) whether assertion of personal jurisdiction is reasonable and fair.” Nuance Comm. v. Abbyy Software House, 626 F.3d 1222 (Fed. Cir. 2010)
A typical ground for personal jurisdiction that is used by many patentee plaintiffs is the stream of commerce theory, which was defined by the seminal Worldwide Volkswagen and Asahi Metals cases. The stream of commerce theory indicates that if an entity places a product in the stream of commerce in a state with the expectation that it would be purchased in said state, then minimum contacts are met in that state. But keep in mind that lower courts continue to struggle with the meaning of “stream of commerce” and how it guides the analysis of personal jurisdiction with respect to product manufacturers. These courts find that Asahi “provided no clear guidance regarding the scope and application of the theory, leaving little uniformity among the many different federal and state courts decisions,” and therefore simply disregard these cases and attempt to formulate their own understanding of “stream of commerce.” Also note that some states’ long-arm statutes do not support the stream of commerce theory, such as New York. NY Stephan v. Babysport, LLC , 499 F. Supp. 2d 279 (E.D.N.Y. 2007). Getting back to your original question, “Where Can You Sue a Patent Infringement Defendant?”, recall that the answer is 1) where the defendant resides (which equates to minimum contacts – see analysis above), OR 2) where the defendant has committed acts of infringement and has a regular and established place of business. Since the minimum contacts test is a subset of 2), it stands to reason that minimum contacts is an easier test to satisfy than 2). Consequently, the minimum contacts test is the more likely avenue to be chosen by a patentee plaintiff in order to get personal jurisdiction over an out of state defendant.
Mark Terry is a patent and trademark attorney and a Board Certified Intellectually Property lawyer practicing patent, trademark and copyright law in Miami, Florida.