Last Thursday, the Senate Judiciary Committee began marking up the Patent Reform Act. At the beginning of the Committee’s public markup session, Committee Chairman Leahy (D-Vt.) stated that he wanted to finish the markup Thursday, vote on the bill and send it to the full Senate. The Committee, however, only got through two amendments, one of which was a "manager’s amendment" which just includes technical/clerical revisions." And Leahy, prodded by several Republican senators and Dianne Feinstein (D-Ca.), agreed to provide the Committee additional time to consider the Act further. The one substantive amendment (which you can read here) further limited venue in patent cases. The amendment was strongly worded stating that in any patent case:
. . . a party shall not manufacture venue by assignment, incorporation, or otherwise to invoke the venue of a specific district court.
This preamble language is very interesting. It has the potential to lead to a big increase in initial motion practice in which defendants argue that whatever entity sues them was created to create venue in the jurisdiction. But this problem is seemingly resolved because in almost all cases plaintiff’s principal place of business or state of incorporation will not create venue, it will almost always be based upon defendant’s footprint and infringing activities. The amendment goes on to specify that venue would be proper:
- where defendant has a principal place of business or is incorporated;
- where defendant has committed "substantial" infringing acts and maintains a physical facility constituting a "substantial portion" of defendant’s operations; or
- where plaintiff resides, if plaintiff is a university or an individual inventor.