Patent Venue: PREVAIL Act Would Expand Scope of Venue | McDermott Will & Emery
As part of proposed legislation intended to address several procedural issues related to judicial proceedings, a recent section titled the Venue Equity and Non-Uniformity Elimination Act of 2024 (VENUE Act) seeks to expand the number of jurisdictions in which a patent infringement suit can be brought under 28 U.S.C. § 1404(b). The bill, S 4095, is almost identical to a 2016 bill introduced by then-Senator Jeff Flake.
The VENUE Act seeks to legislatively overrule the 2017 Supreme Court ruling in TC Heartland v. Kraft Foods Group Brands by significantly broadening the number of venues in which a suit can be brought. Under the current state of the law, venue for a patent suit is appropriate under 28 U.S.C. § 1400(b) only where a defendant resides (i.e., for a business, its state of incorporation) or where the defendant has infringed the patent and maintains a regular and established place of business. In the wake of TC Heartland, venue has become a contested preliminary issue in many patent litigations.
In addition to the already established venues for patent suits, the VENUE Act would include jurisdictions where an inventor conducted research or development underlying the patent-in-suit. It would also allow venue where the defendant business conducted research and development for the asserted patent, manufactures a product or performs a manufacturing process purportedly embodied by the asserted patent. The VENUE Act would limit a “regular and established place of business” to a “physical facility,” excluding the homes of a business’s teleworking employees.
Procedurally, the VENUE Act would codify – and potentially strengthen – the existing practice of challenging district court venue determinations by mandamus petitions. By statute, a court’s “clearly and indisputably erroneous” denial of a venue transfer or dismissal motion would constitute “irremediable interim harm,” which would have the effect of requiring the US Court of Appeals for the Federal Circuit to grant such petitions when warranted.
If enacted, the VENUE Act would create new statutory interpretation issues in its significant expansion of the number of districts in which venue may be sought. At the same time, however, the expansion might be significant enough that venue challenges would return to the rarity they once enjoyed.
