Bio-Rad and Harvard University sued 10X Genomics in 2019, accusing 10X of infringing two patents owned by Harvard and exclusively licensed by Bio-Rad and of infringing one Bio-Rad – owned patent. Judge Young denied 10X Genomics’ motion to dismiss the induced and willful infringement claims on the three patents, finding these claims to be sufficiently pled. The complaint alleges that 10X knew of the two Harvard-owned patents – with knowledge being an element of both induced and willful infringement – by way of previous litigation between the parties on the patents-in-suit that was dismissed in favor of the current suit and by way of 10X’s own license agreements with Harvard. This knowledge is further evidenced by 10X having cited the published application that matured into one of the patents in an IDS with the Patent Office. The complaint further alleges 10X had knowledge of the Bio-Rad patent because the sole inventor on that patent subsequently left Bio-Rad to form 10X. That patent was also cited by 10X in an IDS. Importantly, the complaint alleges that the knowledge of the three patents came about before the litigation was filed, as willfulness cannot in this district be predicated on knowledge resulting from the complaint. Judge Young further noted that, at the motion to dismiss stage, a pleading alleging pre-suit knowledge of the patents and continued sale of the allegedly infringing products is sufficient to state a claim of willful infringement.
10X also moved to dismiss for improper forum or transfer the Bio-Rad – owned patent claim. Judge Young denied the dismissal request. He found that this patent, unlike the Harvard-owned patents, was not the subject of the forum selection clause found in 10X’s license with Harvard that directed claims be brought in Massachusetts. Further, the patent venue statute had been held to limit suits to districts in which the defendant resides or has committed acts of infringement and has a regular place of business. 10X is incorporated in Delaware and is located in California, and the complaint lacks allegations that 10X has a physical location in Massachusetts. The patent venue statute thus does not provide for venue in Massachusetts. Judge Young determined that Bio-Rad could rely on pendant jurisdiction, because the non-Harvard infringement claims were directed towards the same products that the Harvard-owned infringement claims. He granted 10X’s request, however, to transfer the infringement claim with respect to the Bio-Rad patent to the Northern District of California. As Harvard is not a co-plaintiff on that claim, the forum selection clause in the Harvard license does not apply and the sole connection with Massachusetts does not exist. Both Bio-Rad and 10X are headquartered in N.D. California, the sole named inventor on the patent resides in the district, and the parties are already litigating a different patent, related to the Bio-Rad patent in this case, in that district. Judicial economy favors transfer.
Florida corporation ViaTech brought suit against Adobe in May, 2019, accusing Adobe of infringing its U.S. Patent No. 6,920,567, entitled “System and Embedded License Control Mechanism for the Creation and Distribution of Digital Content Files and Enforcement of Licensed Use of Digital Content Files.” Venue was based on Adobe having offices in Massachusetts (despite having a principal place of business in California), as well as having allegedly infringed the patent in Massachusetts, both through its Massachusetts offices and through its on-line store. ViaTech itself was originally a Massachusetts corporation, ViaTech Inc., which merged into ViaTech Technologies in 2000. The three inventors on the ‘567 patent all reside in Massachusetts, although ViaTech has no Massachusetts employees. Adobe moved to dismiss the complaint, while also moving to transfer, and agreed to delay a decision on the dismissal pending the outcome of the transfer motion.
ViaTech’s authority to transact business in Massachusetts was revoked in 2012, for failure to file annual reports. On May 20, 2019, ViaTech filed annual reports for 2009 through 2018, seeking reinstatement, and four days later ViaTech filed suit against Adobe before reinstatement was granted. Judge Burroughs granted Adobe’s motion to transfer venue, but transferred to Adobe’s alternative selection, Delaware, rather than Northern California where Adobe is headquartered. She first noted that venue disputes in patent cases are governed by the law of the regional circuit rather than the Federal Circuit. She noted that Massachusetts was not ViaTech’s principal place of business and that vViaTech lacked ability to do business in the Commonwealth when the case was filed. The presumption in favor of ViaTech’s choice of forum was further diminished by the fact that ViaTech had twice brought suit on the same patent in the District of Delaware. This last fact also weighed against the convenience of ViaTech in litigating in Massachusetts, as it demonstrated ViaTech’s ability and willingness to do so in Delaware. Because both parties are incorporated in Delaware, Judge Burroughs determined that it was a more appropriate venue.
Global accused Eric Arthur and Marketing Sales Concepts of infringing its “ONE” mark and a design patent for condom packaging, and the Defendants moved to dismiss for lack of personal jurisdiction and improper venue, contending that they do no business in Massachusetts and never marketed or sold the accused condoms in the Commonwealth. Global responded that the defendants’ websites and social media presence, accessible in Massachusetts, supported jurisdiction and that the patent claim could be brought in Massachusetts under the “pendent venue” doctrine. Judge Stearns found that under TC Heartland, pendant venue cannot be applied to patent infringement claims (but note that at least one other Court has found that pendent venue is applicable to patent infringement claims); he decided, however, to transfer the entire matter to the Western District of Arkansas rather than to dismiss the complaint outright.
Helping Hand makes and sells a line of TRU-GRIP products for reaching and picking up objects. Helping Hand obtained a pair of design patents covering the gripping end of the products, and accuses Vive Health of infringing these patents. It seems unlikely that Massachusetts is the proper venue for this lawsuit; while Helping Hands has a division located in Stoughton Massachusetts, Vive Health is located in Florida, and there are no allegations that it maintains a regular place of business in Massachusetts.
Rothschild accuses Fingent of infringing U.S. Patent No. 7,456,872 by sales of its “ReachOut Suite,” a field service management software application. It is not clear why Rothschild, a Texas entity, is suing Fingent, a New York business, in Massachusetts, and it is equally unclear why venue in Massachusetts is appropriate, as the pleadings related to venue do not appear consistent with the TC Heartland line of cases.
In December 2016, Caffeinate Labs sued New York’s Vante Inc. and Alexander Shlaferman, also a New York resident, for patent infringement, trademark infringement, and ancillary state law claims related to Vante’s sale of the “Wallet Ninja” in competition with Caffeinate’s PocketMonkey®. Schlaferman filed a motion to dismiss for failure to state a claim of design patent infringement in May; while that motion was pending, Caffeinate Labs voluntarily dismissed the design patent claim with prejudice. Shlaferman then moved in to transfer the case to the Eastern District of New York. Judge O’Toole granted that motion in light of the In re Micron Technology decision, finding that the defendants timely moved for transfer after the TC Heartland decision and thus did not waive a venue challenge. Judge O’Toole found the case to be “primarily one alleging patent infringement,” thus making the patent venue statue the applicable touchstone for venue.
Micron Technology was sued in 2016 by Harvard College, prior to the issuance of the Supreme Court’s TC Heartland decision on venue in a patent infringement lawsuit. Following the TC Heartland decision, Micron moved to dismiss for improper venue. Judge Young denied the motion as waived, finding that TC Heartland had not changed the venue laws, but had merely reaffirmed prior Supreme Court case law on the subject. Micron petitioned the Federal Circuit for a writ of mandamus to set aside this ruling, noting the disagreement among many district courts on the subject of whether the venue laws were changed by TC Heartland. Today the Federal Circuit held that TC Heartland did change the controlling venue law, in that it made available and interpretation of the venue statute that was not previously available. The Court found that the rarely-applied remedy of mandamus relief was appropriate here to resolve the split in district courts over the issue, and was important to proper judicial administration. Looking to Rule 12, the Court noted that, for waiver to apply, a defense under that rule must have been “available to the [defendant] when the defendant made the initial Rule 12(b) motion. As a matter of law, the venue defense made possible by TC Heartland was not “available” prior to that decision’s issuance, given the controlling precedent at the time. The Court interpreted “available” to mean available at the district court, not available after going through one or more levels of appeal, and under Federal Circuit precedent, the venue defense at issue was not something that could be granted by the district court. Accordingly, the venue defense was not waived.
This was not, however, a clean win for Micron. The Court remanded the case for consideration of whether Micron’s subsequent venue motion was filed sufficiently soon after the TC Heartland decision so as to preserve the issue, indicating that the district court has discretion under its inherent powers to deem the venue challenge nonetheless waived. To that end, the Court noted that it had denied mandamus in cases where a post-TC Heartland challenge was brought close to trial.
Canon initially sued Avigilon for infringement of five Canon patents in New York; it voluntarily dismissed that complaint after Avigilon gave notice that it intended to move to transfer to Massachusetts. Canon immediately refiled in the Northern District of Texas on October 5, 2017, alleging infringement of five Canon patents. Later that day, Avigilon brought this declaratory judgment action in Massachusetts on the same five patents, which Canon promptly moved to transfer to N.D. Texas. Avigilon, contending that venue is not proper in Texas and that other factors should create an exception to the “first-to-file” rule, moved for an expedited determination on Canon’s motion to transfer, seeking to have resolution before the date by which it must answer the Texas complaint (presumably with a motion to dismiss or transfer on the same grounds). Judge Talwani denied this motion, noting that the Northern District of Texas, as the court in which claims relating to the five patents was first raised, should be the court to determine whether venue is proper and whether any exceptions to the first-to-file rule apply. Judge Talwani stayed the Massachusetts case pending determination by the Texas court on any venue or transfer related pleadings or motions in the Texas case.
Teva sued Eli Lilly, accusing it of infringing five Teva patents covering humanized monoclonal antibodies that can be used to treat migrane sufferers. This month, Teva submitted a Biologics License Application (“BLA”) to the FDA seeking approval to market their product, known as “fremanezumab.” Eli Lilly recently stated that it had filed its own BLA for a monoclonal antibody, to be called “Galcanezumab,” that targets the same peptide that Teva’s product targets. Based on Eli Lilly’s completion of Phase III clinical trial, its filing of the BLA, and its extensive press statements that it intends to make and sell the product upon receiving approval, Teva asserts that its cause of action is ripe for consideration by the courts. Regarding venue (Eli Lilly is not alleged to be a Massachusetts corporation), Teva asserts that Eli Lilly is registered to do business in the Commonwealth, has a registered agent and a Foreign Corporation Certificate of Registration in the Commonwealth, described its business in Massachusetts as “pharmaceutical manufacturing and sales” in 2017 Annual Report filed with the state, and employs consultants and sales people in Massachusetts to work with Massachusetts health care providers. Moreover, Eli Lilly is asserted to have a facility in Cambridge (in a building, coincidentally, that resides directly behind my firm’s office in Kendall Square) at which it does research and development work, including work on delivery of biologics and pain treatment, which Teva suggests meets the “committed acts of infringement” part of the patent venue statute.
RW IP Holdings sued Standard Innovation Corp. for infringement of U.S. Patent No. 6,028,531, “Terminal Units for a Mobile Communications System” by its sales of We-Vibe® adult toys that can be controlled remotely through a smartphone or the like. Direct, contributory and induced infringement are alleged, and damages, enhancement for willfulness, and attorneys’ fees are sought; no injunction is being sought however, as it appears the patent (which has a priority date of October 12, 1996) has expired.
Potentially of interest, Standard Innovation is alleged to be a Canadian corporation located in Ontario. While the complaint alleges advertising and sales into Massachusetts, there are no allegations that Standard Innovation has a regular and established place of business in the state. At present, it is unclear whether the venue requirements of TC Heartland will apply to foreign corporations, which previously could be sued in any venue in which personal jurisdiction could be established – the TC Heartland decision notes that the Court was not expressing an opinion on the subject. It will be interesting to see whether a venue challenge is made in this case.