A Blog About Intellectual Property Litigation and the District of Delaware

Visualization of pendent venue
Visualization of pendent venue Chris Linnett, Unsplash

Today Chief Judge Connolly addressed a motion to dismiss a combined trade dress, federal unfair competition, copyright infringement, and design patent infringement action.

The parties apparently agreed that the defendant in the action did not meet the TC Heartland venue test for the patent portion of the action:

Argento is a New York corporation with its principal place of business in New York. . . . It is undisputed that Argento does not own, rent, or maintain any offices, physical property, addresses, or bank accounts in Delaware and does not employ any Delaware-based employees, agents, or representatives. It is also undisputed that venue of Globefill's patent claim against Argento does not lie in this Court under the patent venue statute, 28 U.S.C. § 1400(b), which provides that a patent suit "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."

Globefill Inc. v. The TJX Companies, Inc., C.A. No. 22-1639-CFC, at 2 (D. Del. May 17, 2023).

The plaintiff instead asserted pendent venue, arguing that the patent claims share a common nucleus of operative fact with their other claims, for which venue was (presumably) proper:

Globefill argues instead that its patent claim against Argento " is proper in this venue under the doctrine of pendent venue." . . . Pendent venue is analogous to supplemental jurisdiction. Courts have exercised pendent venue to adjudicate "claims for which venue is lacking [that] share a sufficient nucleus of operative facts with at least one asserted claim for which venue is proper." Nat'l Prods., Inc. v. Arkon Res., Inc., 2018 WL 1457254, at *7 (W.D. Wash. Mar. 23, 2018) (citation omitted).

Chief Judge Connolly held, however, that "pendent venue" is not a thing when it comes to patent claims:

Neither the Supreme Court nor the Federal Circuit . . . has addressed whether pendent venue can or should be exercised to adjudicate patent claims. But in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017), a unanimous Supreme Court held that "§ 1400(b) 'is the sole and exclusive provision controlling venue in patent infringement actions, and ... is not to be supplemented by . . . § 139l(c),'" the general venue statute. . . . see also In re Cray Inc., 811 F .3d 1355, 1360 (Fed. Cir. 2017) ("If any statutory requirement is not satisfied, venue is improper under § 1400(b)."). Pendent venue of patent claims in my view runs counter to this holding and therefore I will not exercise any discretion I might have to entertain Globefill's patent claim against Argento. To my knowledge, my decision is consistent with the rulings of every district court that has addressed the issue.

As such, the Court intends to transfer the case entirely, and ordered the parties to brief the issue of where the case can be transferred to.

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