Austin Intellectual Property Law
Association
February 16 Meeting and Luncheon CLE
Austin, Texas
February 16, 2010
Michael C. Smith
Siebman, Burg, Phillips & Smith, LLP
Marshall, Texas
michaelsmith@siebman.com
www.EDTexweblog.com
The 1901 Harrison County Courthouse (restored 2009)
Marshall, Texas
J. Riely Gordon, architect
“All too often, patent infringement suits begin
with a battle over where the war is to be
fought.”
Wydick, Venue in Actions for Patent Infringement,
25 Stan. L. Rev. 551 (1973).
1994-1995 – state court venue limited; tort
reform
 Late 1990’s – personal injury cases begin to be
filed in large numbers in Eastern District
 2000-2004 – mandamus petitions on venue
rulings begin to be filed in Fifth Circuit – all
denied prior to In re Horseshoe and In re
Volkswagen I, which order cases transferred.
 2008 – In re VW II; numerous product liability
cases transferred; new filings drop as well - cases
shift back to Dallas and Houston state courts.
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1992 – first patent case filed in Marshall, TI v. Micron.
1990’s – Texas Instruments files numerous patent
cases in Marshall – ’99 trial in TI v. Hyundai
2000 – new Marshall federal judge T. John Ward
adopts local patent rules; filings start going up.
2003-2006 – plaintiffs win 18 straight jury verdicts
2007-2008 – ED Texas #1 district in nation for patent
filings; win rate drops to 33% in 2007; time to trial in
Marshall slows to three years as result of new filings.
2009 – win rate 50-60%; filings drop to 2d in nation;
late in year time to trial begins shorten in Marshall.
2010 – defs win two of first three cases tried.
Patent infringement cases may be filed in the
judicial district: (1) where the defendant resides;
or (2) where the defendant has committed acts of
infringement and has a regular and established
place of business. 28 U.S.C. § 1400(b)
 A defendant that is a corporation “shall be
deemed to reside in any judicial district in which it
is subject to personal jurisdiction at the time the
action is commenced.” 28 U.S.C. § 1391.
The Federal Circuit held in VE Holding Corp. v.
Johnson Gas Appliance Co., 917 F.2d 1574, 158384 (Fed.Cir.1990) that the residence of a
corporate defendant in patent infringement
actions is to be analyzed under the general
venue provisions of § 1391(c).
So, personal jurisdiction = resides = venue.
In re TS Tech (12/2008)
In re Telular
In re Genentech
In re Volkswagen (IV)
In re Hoffman-La Roche
In re Nintendo
In re Vtech (1/2010)
(red = granted ; white = denied)
Product liability case arising out of a collision in
Dallas.
In re VW IIc eliminated the plaintiff’s choice of forum
as a separate factor, holding that it is reflected in
the defendant’s burden of proof.
The en banc panel held that
 “when the movant … demonstrates that the
transfer of venue is clearly more convenient . . .
the district court should grant the transfer.”
(Emphasis added).
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Factors
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Relative ease of access to sources of proof
Availability of compulsory process
Cost of attendance of willing witnesses
“All other practical problems”
Administrative difficulties/court congestion
Local interest in hearing localized controversies
Familiarity of forum with the law
Avoidance of conflicts of law / foreign law problems
Must transfer if “clearly more convenient”
In In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008)
the court granted mandamus ordering Judge Ward to
transfer a case to Ohio.
 The plaintiff resided in Michigan, and the accused
infringers, three related corporations, resided in Ohio
and nearby Canada.
 Applying In re Volkswagen the Federal Circuit found
that the district court, by committing four legal errors
in its analysis of the transfer issue, had “clearly abused
its discretion.”
 Note: In re VW came out after district court’s opinion –
no remand for consideration, and FC denied In re VW
changed the law re: venue at all.
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Key holding was the extension from products
cases (in which the sale of the product was not
the accused activity) to patent cases (in which it
is) of the Fifth Circuit’s holding that sales in the
district did not give the forum court a “local
interest”.
Whenever the interest the forum court has is the
same interest any district would have, that
interest is to be disregarded. Only particularized
local interests are to be considered.
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Plaintiff, a Dallas resident, filed a patent case
against several security companies.
Telular, sought transfer to Chicago, where its
head offices were located (its monitoring
offices were in Atlanta).
Judge Ward denied the motion in this case,
and several months later In re TS Tech
issued. Several weeks after that, defendant
Telular filed a petition for writ of mandamus,
citing In re TS Tech.

The Federal Circuit observed that "Telular
faces an extraordinary burden in this case.
First, the equities lie considerably against
granting mandamus" because, as the Court
noted, Telular waited five months after the
court's ruling to seek mandamus - unlike TS
Tech had done.
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“[M]andamus relief in § 1404(a) cases is only
permitted when the petitioner is able to
demonstrate that the denial of transfer was a
"clear" abuse of discretion such that refusing
transfer produced a "patently erroneous
result." A suggestion that the district court
abused its discretion, which might warrant
reversal on a direct appeal, is not a sufficient
showing to receive mandamus relief.”
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“Unless it is clear that the facts and
circumstances are without any basis for a
judgment of discretion, we will not proceed
further in a mandamus petition to examine
the district court's decision. In other words,
we will deny a petition "[i]f the facts and
circumstances are rationally capable of
providing reasons for what the district court
has done.””
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“The Eastern District of Texas may have no
more of an interest in this case than any other
district in which Telular's systems are
ultimately installed. This alone, however,
does not mean that Telular's alternative
choice of venue, in this case the Northern
District of Illinois, is clearly more convenient. .
. .” (Emphasis added).
Contrast to later 2009 FC venue opinions.
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In In re Volkswagen, 566 F.3d 1349 (Fed. Cir.
2009), arising out of the MHL Tek litigation,
the Federal Circuit denied a petition seeking
to mandamus Judge Ward's denial of a
motion to transfer the case to Michigan.
The Federal Circuit noted that "[i]n this case,
the existence of multiple lawsuits involving
the same issues is a paramount consideration
when determining whether a transfer is in the
interest of justice”. (Emphasis added).
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In In re Genentech, 566 F.3d 1338 (Fed. Cir.
2009) arose out of the Sanofi-Aventis
litigation in Judge Ron Clark's court in which a
German plaintiff sued two California
companies.
In Sanofi-Aventis Deutschland GmbH v.
Genentech, Inc., 2009 WL 764304 (E.D.Tex.
Mar 19, 2009) Judge Clark concluded that on
balance, the factors favored retaining the
case in the Eastern District of Texas.

Key to the court’s decision were the facts that:
 Defendant . . . has, in the recent past, found it
convenient to avail itself of this forum as a Plaintiff;
 the question of whether [plaintiff] is subject to personal
jurisdiction in the Northern District
 one of the defendants has no presence … in the
Northern District [of California];
 litigation in California would be more expensive and
quite possibly more time-consuming…”
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In reversing, the Federal Circuit observed that
California was only marginally less convenient
than Texas for the foreign plaintiff, and declined to
allow the Texas court's “central location” to trump
the fact that the California court was "clearly more
convenient" for the parties and witnesses in this
case.
Decreased travel time from Europe to Texas as
opposed to California did not support transfer.
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Genentech rejects a simply “central location”
argument divorced from analysis that shows
the forum is actually more geographically
convenient under the facts of the case.
Subsequent district court cases continue to
use this phrase, but as a shorthand for
concluding that a mileage analysis shows that
the forum court is more convenient.
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The Federal Circuit also rejected the court's
assessment that the petitioners failed to
identify any “key witnesses” within the
venue, holding that “[r]equiring a defendant
to show that the potential witness has more
than relevant and material information at this
point in the litigation or risk facing denial of
transfer on that basis is unnecessary.”
Major change from prior Texas caselaw
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Genentech essentially endorsed the “battle of
the numbers” approach where the parties
inflate their witness lists in order to show that
a particular forum is more convenient, and
eliminated the court’s ability to cull these lists
to those witnesses who were truly necessary
and not merely cumulative.
Will parties now list witnesses to influence
the venue analysis?
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The Federal Circuit also noted that in patent
infringement cases, the bulk of the relevant
documents usually comes from the infringer,
and the place where they are kept, i.e. the
defendant’s location, therefore weighs in
favor of transfer to that location.
Important to identify the location of all
relevant documents.
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Based on opinions posted in Westlaw, the
court only granted four transfer motions in
2008, and each of these motions was granted
to achieve judicial economy as the transferee
court had a pending related action.
As of the end of November in 2009, the
Eastern District had granted at least fourteen
transfer orders.
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In Odom v. Microsoft, 6:08cv331 (Jan. 30,
2009) Judge John Love granted the
Defendant's motion to transfer venue to
Oregon.
Plaintiff is an Oregon inventor (Patent Hawk)
claiming that Microsoft infringes his patent
via its Office software. The case also involves
Odom's relationship with Microsoft and the
Klarquist Sparkman firm in Oregon prior to
suit being filed.
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Judge Love observed that "[t]his is not a case
where witnesses are spread out all over the
country or the world" citing Network-1 Sec.
Solutions, Inc. v. D-Link Corp., 433 F. Supp. 2d
795, 800, mandamus denied, 183 Fed. Appx.
967 (Fed. Cir. 2006) (finding this factor neutral
where witnesses were located in Connecticut,
New York, California, Taiwan, and Israel).
This case, Judge Love wrote, was in fact quite
similar to the facts in TS Tech, not Network-1.
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Due to the extensive ties Oregon had to the
underlying case via the contracts, etc., Judge
Love concluded that there was in fact a local
interest in the case in Oregon, and none
(beyond the sale of infringing products which
all districts likely shared) in Texas.
Judge Love also discounted in part the
sources of proof factor because unlike VW
and TS Tech, the proof was likely to be
electronic, not physical. See later cases.

Judge Folsom transferred PartsRiver v.
Shopzilla, 2:07cv440 by a California patent
owner against six California defendants (with
a seventh in Washington) to California,
finding that "based on the regional nature of
this case, that the Northern District of
California is clearly more convenient to the
parties.” (Emphasis added).
In Novartis Vaccines & Diagnostics v. Hoffman-La
Roche, 2009 WL 349760 (Feb. 3, 2009) Judge Folsom
denied a motion to transfer the case from Texas to
North Carolina.
 He found that the parties and the sources of proof in
this case were distributed nationwide, so a transfer
from Texas to North Carolina would actually
increase travel an additional 800 miles on average,
and substantially inconvenience the West Coast
witnesses.
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Judge Folsom concluded that the case was
distinguishable from VW and TS Tech, in both
of which the physical evidence was confined
to a limited region.
He did not rely on the plaintiff’s claim that its
documents were on a server in Marshall.
This opinion was reversed in In re HoffmanLaRoche.
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Judge Love granted one motion to transfer
and denied another in two cases filed by a
plaintiff against the same defendant.
In Invitrogen Corp. v. General Elec. Co., 2009
WL 331891(E.D.Tex. Feb 09, 2009) (Invitrogen
I) GE sought transfer to Maryland, where half
of the patents asserted in the Texas case had
been asserted by the plaintiff's predecessor in
interest against GE over an 11 year period.

Judge Love found persuasive GE's claim that
this case should be transferred to Maryland in
order to preserve judicial economy, noting
that there was "substantial overlap" between
the Texas case and the now-settled Maryland
case in both the patents asserted and the
enforcement of the Maryland case
settlement agreement.
In the second case, however, Invitrogen Corp. v.
General Elec. Co., 2009 WL 331889(E.D.Tex. Feb
09, 2009) (Invitrogen II) Judge Love denied the
motion to transfer, noting that the case lacked
the decade-long prior litigation involving the
patents, and had little in common with the other
litigation.
 Judge Love found that the defendant had not
under these facts shown that the proposed
transferee forum was "clearly more convenient."
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In MHL TEK, LLC v. Nissan Motor Co et al (207-cv-00289) (Feb. 23, 2009) Judge Ward was
asked to reconsider his decision denying the
defendants' motion to transfer the case to
Michigan.
Judge Ward concluded that "the defendants
have not shown that the Eastern District of
Michigan is clearly more convenient than the
plaintiff’s chosen forum" and therefore
denied the motion to reconsider.
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Plaintiff is a Texas corporation with offices in
Michigan.
Defendants are various foreign auto
companies and subsidiaries. Four defendants
reside in Germany, three in California, two in
Japan, two in South Korea, two in New
Jersey, one each in Michigan, Tennessee,
Alabama, Georgia, South Carolina, Indiana,
and Virginia.
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Judge Ward found that this district would, in
the least, be just as convenient or
inconvenient to most of the defendants as
the desired transferee district.
Based on his travel calculations, Judge Ward
found that under the 100-mile rule, the Texas
court, rather than the Michigan one, was
more centrally located to the scattered
distribution of party witnesses.
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Judge Ward made clear he was not reading the
sources of proof factor out of the analysis, but
given that the plaintiff's documents were being
produced in Texas, only one defendant was from
Michigan (and it had two related companies in
the litigation, so it was not clear where its
documents actually were), and the vast majority
of the other documents were located elsewhere
- plus that this case did not involve physical
evidence, this factor did not support transfer
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The Court specifically contrasted this case
from TS Tech and VW II, where all of the
documents and physical evidence was either
located in the transferee forum, or much
more convenient to it.
Judge Ward's analysis of the factor of judicial
economy disclosed an interesting set of facts.
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Following the filing of this case by MHL,
Volkswagen filed a declaratory judgment
lawsuit against MHL, involving the same
three patents, in the Eastern District of
Michigan.
The Michigan judge transferred Volkswagen’s
second-filed lawsuit to Judge Ward.
Volkswagen petitioned the Federal Circuit for
a writ of mandamus directing the Michigan
judge to vacate his transfer order.
In its petition, VW made essentially the same
arguments regarding the inconvenience
resulting from a trial in Marshall. The Federal
Circuit denied Volkswagen’s petition, finding
that Volkswagen arguments were “only general
assertions regarding convenience.” In re
Volkswagen of America, Inc., 296 Fed. Appx. 11
(Fed. Cir. 2008) (In re VW III).
 "In the light of this guidance from the Federal
Circuit," Judge Ward wrote, "this Court is inclined
to deny defendants’ motion.”
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Judge Ward also noted that there was a
previously filed case by this plaintiff against
different defendants but involving the same
patent filed in his court. "With two other
cases involving the exact same patents
before this Court, granting defendants’
motion for transfer in the present case would
cut against principles of judicial economy and
increase the risk of inconsistent
adjudication.”
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Volkswagen filed another petition for
mandamus following Judge Ward’s order, and
the Federal Circuit denied it on May 22. See
In re Volkswagen, 566 F.3d 1349 (Fed. Cir.
2009) (In re VW IV).

In December 2009 Judge Ward granted
summary judgment of noninfringement in
defendants’ favor.
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In RealTime Data, LLC d/b/a Ixo v. Packeteer,
Inc. et al (6-08-cv-00144) (E.D. Tex. March 5,
2009) 10 of 13 defendants filed a motion to
transfer to N.D. Cal.
"While Defendants point to the Northern
District of California as the location for a
significant source of proof," Judge Love
wrote, "they ignore the remaining sources of
proof which originate from numerous
locations."
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At its heart, the motion asked Judge Love to
evaluate which of the parties were more
important, something he was not willing to
do at this stage.
In the end, he found that transfer would
make things easier for some parties, but
more difficult for others, and on balance "a
transfer … would merely redistribute the
inconvenience“.
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In Vasudevan Software, Inc. v. Int'l. Business
Machines Corp., 2009 WL 3784371 (E.D. Tex.
Nov. 10, 2009) Judge Ward granted a motion
to transfer venue of a patent infringement
action to the N.D. Cal.
The parties were scattered across the nation
(P in NC; Ds in New York and California) and
the accused products had been designed and
developed in California.

Judge Ward found that the Eastern District of
Texas had no connection with the suit and
gave little weight to the fact that one of the
accused infringers had a training facility in
Plano, Texas where it trained personnel on
using the accused product, and granted the
motion to transfer.
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In Deep Nines, Inc. v. McAfee, Inc., 2009 WL
3784372 (E.D. Tex. Nov. 10, 2009), the court
instructed that “It is clear that where there is
no connection with Texas or the Eastern
District of Texas, venue is improper.”
Although denying the motion to transfer in
Deep Nines, the court arrived at its decision
only after painstakingly identifying the
numerous contacts the action had with the
forum.
The court found that one accused infringer
maintained an office in the Eastern Texas forum,
and that witnesses within the court’s subpoena
power resided in Dallas.
 The court also noted that it had previously
handled a related dispute between the parties
and the terms of the settlement agreement,
governed by Texas law, were at issue in the
current case, which gave the court an advantage
in applying Texas law over the proposed forum in
Minnesota.
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In Acceleron, LLC v. Egenera, Inc., 2009 WL
1606961(Jun 09, 2009) Judge Davis granted a
motion to dismiss for lack of personal
jurisdiction (i.e. venue) as to one defendant
because the plaintiff’s proof that the product
was sold in the district was lacking.
Judge Davis denied the motion to transfer
venue, but in doing so pointed up an issue
dealing with sources of proof.

“Despite technological advances that certainly
lighten the relative inconvenience of
transporting large amounts of documents across
the country, this factor is still a part of the
transfer analysis. In re Volkswagen II, 545 F.3d at
316. Therefore, courts have analyzed this factor
in light of the fiction that voluminous
documents must be transported from their
physical location (supposing that electronically
stored documents are, in fact, physical) to the
trial venue. (Emphasis added).

In Aloft Media, LLC v. Yahoo!, Inc., 2009 WL
1650480 (E.D.Tex., June 10, 2009) Judge Love
also addressed the issue of whether the
nature of the evidence (physical or electronic)
matters when determining convenience. He
noted that the Federal Circuit in Genentech
criticized the distinction (citing In re VW) and
eventually concluded that the distinction was
now “inappropriate under controlling
precedent.”
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Judges may now differ on whether the nature of
the evidence (physical or electronic) matters
when determining convenience. VW and TS Tech
dealt only with physical evidence, not electronic,
but Genentech criticized any approach that
rendered this factor “superfluous.”
Cases seem to indicate that all evidence must be
considered as if physical. Thus the
inconvenience may not actually exist, but must
be deemed to.
“De facto” and “de jure” inconvenience.
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In Sipco, LLC v. Amazon.com, Inc. et al (2-08cv-00359) (June 4, 2009), Judge Folsom
denied a motion to sever & transfer.
"Defendants cannot argue that transfer of
this case is appropriate for all parties because
both the Plaintiff and multiple Defendants
have offices in [Texas]. Instead, [defendants]
separately ask to be severed from this action
and transferred to different districts.

Citing the Federal Circuit’s statement that In re
VW IV that “the existence of multiple lawsuits
involving the same issues is a paramount
consideration when determining whether a
transfer is in the interest of justice” (emphasis
his) the Court held “Defendants' request would
create simultaneous proceedings on the same
patents and related products in three district
courts.... such would be unnecessarily wasteful
of the court system's time, energy, and money."
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But, in Balthasar Online, Inc. v. Network
Solutions, LLC, 2009 WL 2952230 (E.D. Tex.
Sept. 15, 2009) the patentee sued several
accused infringers who resided in California,
and some who resided elsewhere.
After the accused infringers moved to
transfer, the patentee amended its
complaint to add additional accused
infringers, including some who resided in the
Eastern District of Texas.
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In considering the transfer motion, Judge
Folsom determined that the Texas
defendants were small businesses who were
not major players in the accused
infringement.
Accordingly, the court severed the Texas
defendants from the case, and stayed the
infringement claims against them. It then
granted the accused infringers’ motion to
transfer the case to California.

“Clearly more convenient” test results in difference
between “regional” and “national” cases
 MHL Tek continues the approach endorsed by Federal
Circuit opinions such as the Network-1 and In re Telular
of keeping “national” cases.
 Odom v. Microsoft and PartsRiver continue the approach
endorsed by the Federal Circuit in In re TS Tech and In re
Genentech of transferring cases where the parties (or at
least the defendants) are closely grouped
geographically.

Prior litigation still frequently results in transfer
 Invitrogen I continues the line of cases transferring cases
where prior litigation raises issues of judicial economy,
endorsed by the Federal Circuit in In re VW III and In re
VW IV)

Transfer is still common where no infringing
activity in the district is shown.
 Fifth Generation and Acceleron continue the line of cases
transferring (or dismissing) where no infringing activity
in the district is shown.
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The Eastern District judges are uniformly looking to see
whether the proposed transferee forum is “clearly more
convenient”.
Transfers are now easier to obtain in some cases,
primarily cases with fewer defendants which are
geographically clustered, but more difficult in cases with
a large number of defendants or witnesses which are
spread throughout the nation or world.
Analysis requires facts re: witnesses and documents and
quantitative analysis of convenience.
Court no longer permitted to engage in a qualitative
analysis ,or distinguish between“de facto” and “de jure”
inconvenience.
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The appellate caselaw is not friendly to
plaintiffs, but it has created numerous new
opportunities for both parties to better their
venue facts by, for example, adding parties or
witnesses or documents to make a showing
that a proposed transferee forum is “clearly
more convenient” easier or more difficult.
The extent to which courts will recognize
these opportunities is the next frontier in
venue law.
In re Hoffman-La Roche
In re Nintendo
In re Vtech
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
In In re Hoffman-LaRoche, Inc., ____ F.3d ____,
2009 WL 4281965 (Fed. Cir., Dec. 2, 2009) the
Federal Circuit granted a mandamus reversing
Judge Folsom’s denial of a venue motion in a
case brought by a California plaintiff against the
makers of Fuzeon, a HIV inhibitor drug.
Scientists at Duke Medical Center identified the
drug’s composition and later formed a company
called Trimeris to develop the compound into a
possible HIV infection therapy.


Plaintiff sued Trimeris and its commercial
partners, the three Roche entities.
While the Federal Circuit noted that there were
parties and witnesses across the country and
indeed, the world, the Federal Circuit granted
the mandamus finding that “there is stark
contrast in relevance, convenience, and fairness
between the two venues” noting that the
accused drug was developed and tested within
the Eastern District of North Carolina.



In addition, the court noted that there appeared
to be no connection between the case and the
Eastern District of Texas
It specifically rejected Novartis’ decision to
convert approximately 75,000 pages of
documents demonstrating conception and
reduction of practice into electronic format and
transfer them from California to its litigation
office in Texas.
Notably, the Court did not consider the (original)
location of the plaintiff’s documents in
California.
The Federal Circuit observed that the assertion that
these documents are “Texas” documents is “a
fiction which appears to have been created to
manipulate the propriety of venue.”
 The Federal Circuit also held that the district court
gave too much weight to its ability to compel a
Texas witness’s attendance at trial.
 Finally, it held that the transferee forum’s local
interest was “self-evident”.

In In re Nintendo, Misc. No. 914 (Dec. 17, 2009), the
Federal Circuit transferred the case to Washington
state, where one of the two defendant, the U.S.
subsidiary of a foreign entity (the other defendant),
was located.
 Federal Circuit did not consider location of Plaintiff’s
documents (in Ohio and New York) in the analysis.
 Decreased travel time from Japan to Washington as
opposed to Texas for defendant supported transfer.
 Contrast with Genentech – decreased travel time from
Europe to Texas as opposed to California for plaintiff
did not support transfer – only marginally less
convenient.


Factors
 Relative ease of access to sources of proof
 Availability of compulsory process
 Cost of attendance of willing witnesses
 “All other practical problems”
 Administrative difficulties/court congestion
 Local interest in hearing localized controversies
 Familiarity of forum with the law
 Avoidance of conflicts of law / foreign law problems

No finding that transferee court “clearly more convenient”
but…
 “no meaningful ties” to Texas
 “central location” used (instead of analysis)
 Too much weight to plaintiff’s choice of forum/too strict a
standard
 Witnesses closer to Washington. None in ED Texas
 Only identified relevant documents in Washington and Japan.
None in ED Texas
 “Not a single relevant factor favoring the plaintiff’s chosen
venue.”

FC says mandamus cannot be used as a substitute for the
regular appeal process, but notes that regular appeal
process does not provide an adequate remedy.
In In re Vtech Communications, Misc. Docket No.
909 (Jan. 6, 2010) the Federal Circuit denied a
petition for writ of mandamus directed at one of
Judge Folsom's orders denying transfer.
 The opinion affirmed Judge Folsom's reliance in
on his familiarity with the case (he had
concluded the claims construction process) and
faulted Vtech for not "actively and promptly"
pursing the motion to transfer before the district
court had invested considerable time and
attention on discovery and completing the
claims construction process.

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

Unlike Genetech in which there were no Texas
witnesses, here there was at least one nonparty
witness who in the Eastern District of Texas.
There was also a source of documents in San
Antonio and some of the witnesses were in fact
closer to Texas than to Oregon.
The Court concluded that because "the facts are
rationally capable of providing reasons for what
the district court has done", mandamus should
not issue, which would interfere with the
approaching trial date.

In Hewlett-Packard v Acceleron, 2209 WL
4432580 (Fed. Cir., Dec. 4, 2009) the Federal
Circuit appears to have substantially lowered
the bar for an accused infringer to obtain
declaratory jurisdiction if the patentee is a
licensing only patent holding company.

The patentee's sending of two letters
identifying the patent and the relevant
product, and requesting the accused infringer
to agree to a confidentiality provision in a
short response time, along with a refusal by
the patentee to agree to the accused
infringer's counter proposal of a stand-still
agreement was enough to get declaratory
jurisdiction.

This case may essentially eliminate pre-suit
assertions of patent rights, since a plaintiff
who contacts an accused infringer runs the
risk of having a declaratory judgment suit
filed in an unfriendly forum, and thus giving
the infringer the ability to choose the forum.



Proposed Patent Reform Act addresses
concerns about patent quality, the
relationship of U.S. patents with the rest of
the world’s patent systems, and the costs of
patent litigation.
Deep divisions in the business community
over portions of the bill.
Courts are clearly responding to legislative
proposals with major changes in caselaw.
Shortly after the 111th Congress convened in
January 2009, the Patent Reform Act of 2009
was introduced in the Senate.
 Initial versions of the legislation generally
reflected the version which passed the House in
September of 2007, but which never achieved
sufficient consensus to reach the Senate floor.
 The Senate sponsors quickly reached a
compromise on major parts of the legislation in
the spring of 2009.



The Senate Judiciary committee approved a
version of the bill in April, 2009, but it stalled
when judicial nominations and health care
reform began dominating the legislative
landscape.
While the legislation has not yet been set for
floor debate, backers hope to see the bill on
the Senate floor in early 2010.


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As part of an overall compromise on many
issues, the Senate Judiciary Committee has
approved a version of patent legislation which
with respect to venue contains only a provision
drafted by Sen. John Cornyn (R-Tex.).
The Cornyn amendment essentially codifies the
“clearly more convenient” test from In re
Volkswagen IIc.
The legislation does not modify the general
venue provision, or the patent venue provision.

The actual language as passed by Senate Judiciary
would amend 28 U.S.C. §1400 by adding at the end
the following:
 ‘‘(e) CHANGE OF VENUE.—For the convenience of parties
and witnesses, in the interest of justice, a district court
shall transfer any civil action arising under any Act of
Congress relating to patents upon a showing that the
transferee venue is clearly more convenient than the
venue in which the civil action is pending.’’