Home Is Where The Facts Are
Plaintiffs file the complaint—the first salvo in any litigation—and so they get to choose the location of the court in which they file. Unsurprisingly, when they have a choice, they choose forums that promote their own interests—either their home turf, their counsel’s turf, or turf on which they think they will have some other litigation advantage. But the plaintiffs’ choice of forum isn’t necessarily the right choice of forum, because the plaintiff’s claim of infringement will succeed or fail based almost entirely on the conduct of the defendant—and in many case the defendant’s accused conduct occurred far from the courthouse in which the plaintiff filed the case.
In the context of patent litigation, that is where a federal statute, 28 U.S.C. § 1404, enters the picture. That statute authorizes the transfer of a case from one federal court to another for the convenience of the parties and witnesses and in the interest of justice. Two recent cases show that statute in action in the patent context.
In In re Link_a_Media, the Federal Circuit Court of Appeals granted a petition for a writ of mandamus, and ordered a Delaware district court to transfer a case from Delaware to northern California, the home jurisdiction of the defendant and the location of the accused infringing activity. Importantly, the Federal Circuit held that the fact that the defendant was incorporated in Delaware did not by itself create a sufficient connection between the plaintiff’s claims and the District of Delaware. The judicial district with the relevant ties to the underlying claims was the district in which the defendant actually engaged in the alleged misconduct, in this case, the San Francisco Bay area.
In a second case, Pinpoint Inc. v. Groupon, Inc., in which we had more than a passing interest, a district court in Chicago ordered the severance and transfer of Pinpoint’s claims against L. L. Bean from Illinois to Maine. (Full disclosure: we represent L. L. Bean in this case.) Pinpoint filed the suit in Chicago, its corporate home and the home of its counsel, Niro, Haller & Niro. Even so, the district court concluded, first, that Pinpoint’s claims were unrelated to its claims against the other defendants, and so needed to be severed into a separate action. The court then ruled, second, that the relevant private and public interest factors all pointed to the District of Maine as the proper venue for the action, in which a Maine corporation was accused of patent infringement allegedly occurring in Maine, and in which the bulk of the witnesses and evidence were located in Maine. The court also noted that the District of Maine had a stronger interest in resolving this case as Maine was the location which would directly feel the “impact of the adjudication” of Pinpoint’s claims against L. L. Bean.
These cases suggest that, absent countervailing considerations, the proper forum for a patent infringement action is the place where the allegedly infringing conduct, and the evidence of it, is located.
IP Wise 