article by Rick Martin-AttorneyPrior to 2017, a patent plaintiff seeking to enforce it’s patent against an alleged defendant infringer was allowed to “forum shop” for the most plaintiff friendly court to file its patent infringement lawsuit. The Eastern District of Texas has long been the favorite venue of plaintiffs and “patent trolls” for filing patent infringement lawsuits. At one time, more than 40 percent of patent lawsuits were filed in the Eastern District of Texas courts, and nearly 25% of all patent cases nationwide were presided over by a single judge in Marshall, Texas. FacebookTwitterCopy LinkEmail All of that changed in May of this year when the U.S. Supreme Court held that the patent venue statute (28 USC 1400(b)) requires that, in most instances, an action for infringement be brought against an alleged corporate infringer “only in its State of incorporation.” TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct. 1514 (2017).The decision was a major victory for startups and small companies who now no longer run the risk of being hauled into court in a distant forum simply because someone in that jurisdiction may have viewed their website or purchased their product. The case was also a huge blow to the restaurant and hotel industry in East Texas towns like Marshall and Tyler where litigants and lawyers frequently traveled for hearing before the District Courts, and the plethora of patent-holding companies that purchase patents for the purpose of squeezing quick settlements out of other companies and are “headquarted” in or “reside” in Marshall and Tyler.Only a month after the landmark TC Heartland decision a Judge from the Eastern District of Texas issued a decision that arguably expanded the Supreme Court’s ruling, and, if adopted, may have stemmed the flow of patent cases out of the Eastern District. In that case, the District Court applied a four-factor test for determining whether the defendant had a “regular and established place of business” in the district. The District Court’s application of that four-factor test concluded that Cray did in fact have a “regular and established place of business” in the Eastern District of Texas based solely on the fact that two sales employees of Cray worked from their homes within the district.That decision was appealed to the Federal Circuit, where, in September, the four-factor test of the Eastern District was struck down in favor of a narrower three-prong test for determining if venue is proper. Specifically, in In re Cray, the Federal Circuit found that:“(1) there must be a physical place in the district;” (i.e. an actual business location of the defendant where business is conducted)“(2) it must be a regular and established place of business;” (i.e. more than just sporadic or irregular business activity) AND“(3) it must be the place of the defendant” (i.e. a place that the defendant corporation, not its employee, exercises control over).Not surprisingly, after application of the three-prong test, the Federal Circuit found that the two employees working from their home for Cray did not meet the standard.The Federal Circuit sent the case back to the Eastern District for a determination of the proper venue for transfer. Cray is a Washington corporation with its principal place of business located there. It also maintains facilities in Bloomington, Minnesota; Chippewa Falls, Wisconsin; Pleasanton and San Jose, California; and Austin and Houston, Texas. Interestingly, Cray requested transfer to Wisconsin (Chippewa Falls) and Raytheon is now requesting transfer to the Western District of Texas (Houston, Austin). Given that Cray admittedly has offices in both places and did not seek transfer to its home office in Washington, it will be interesting to see in which one of Cray’s “homes” the case ends up.EDITORS FOOTNOTES: Martin IP Law Group is not a typical law firm. Their practice focuses on Intellectual Property – Patents, Trademarks, Copyrights and Trade Secrets. They will help you build value in your business by protecting your ideas, inventions and identity, including:Identifying and assessing the value of intellectual property;Preparing and prosecuting US and International patent and trademark applications.Preparing freedom-to-operate opinions, validity/invalidity opinions and infringement/ non-infringement opinions.Conducting due diligence of third party IP portfolios for acquisition, litigation and/or design-around.Conducting negotiations and drafting agreements relating to assignment, licensing, and other transactions affecting intellectual property. If you have any questions concerning Patents | Trademarks | Copyrights please contact Mr. Martin at 318 Main Street | Suite 503 | Evansville, IN 47708 ( 812.492.4478 | [email protected] or |www.IPSolutionsLaw.com
×Buddy Valastro and Ralph Attanasia shave Danny Dragone’s mustache at the Samuel and Josephine Plumeri Wishing Place in Monroe Township, home of Make-A-Wish New Jersey. (Photo by Christina Smith Photography) Buddy Valastro and Ralph Attanasia shave Danny Dragone’s mustache at the Samuel and Josephine Plumeri Wishing Place in Monroe Township, home of Make-A-Wish New Jersey. (Photo by Christina Smith Photography) MONROE TOWNSHIP – Danny Dragone of Carlo’s Bakery in Hoboken and TLC’s Cake Boss fame announced in July that he would shave his mustache for the first time in over 30 years, but only if he was able to raise $25,000 for Make-A-Wish New Jersey.Buddy Valastro, the Cake Boss himself, and Ralph Attanasia of Carlo’s Bakery and TLC’s Cake Boss, agreed to perform the ceremonial shave at a special event held on Aug. 9 at the Samuel & Josephine Plumeri Wishing Place in Monroe Township, home of Make-A-Wish New Jersey.Make-A-Wish grants the wishes of children with life-threatening medical conditions to enrich the human experience with hope, strength and joy.The campaign took off and over the course of a few short weeks, Danny and the Carlo’s Bakery team raised over $18,000. On Aug. 9 invited guests and wish families gathered at the Make-A-Wish castle in Monroe Township for a day of carnival-like entertainment including a balloon artist, a stilt-walker, musical entertainment from a barbershop quartet, popcorn from a classic popcorn machine, and of course, pastries and sweet treats by the hundreds, donated by none other than Carlo’s Bakery.Guests then gathered in the Bolte Family Theater for an exciting program and the moment they all had been waiting for. Throughout the ceremony, hosted by Make-A-Wish New Jersey President & CEO Tom Weatherall, contributions continued to roll in from audience members and the online community watching via live broadcast. Gifts by longtime Make-A-Wish sponsors and supporters Fedway Associates, Make-A-Wish New Jersey Board Chair Francis X. Bolte, and Buddy Valastro himself brought the campaign to a staggering total of $55,000.And then, off came the mustache.“Danny has had that mustache for over 30 years, so it was a big deal when he said he was willing to shave it off,” shared Buddy Valastro. “But he wasn’t going to do it for a bet or for just any reason. He said he’d shave, but he wanted to do it for Make-A-Wish, the kids.”Buddy Valastro, Danny Dragone, Ralph Attanasia and Carlo’s Bakery are no strangers to the power of a wish. Since the first wish to bake a cake with Buddy was granted in 2010, dozens of children from around the world have experienced the power of a wish with the Carlo’s Bakery family.“Make-A-Wish was founded by a group of volunteers on the idea that as a community, we can change lives,” stated Tom Weatherall, president and chief executive officer for Make-A-Wish New Jersey. “Danny, Buddy, Ralph and the entire Carlo’s Bakery family have shown us that they believe in our seemingly simple, but oh-so-powerful mission. We cannot thank them enough for their friendship and their dedication to our wish kids!”Last year, Make-A-Wish New Jersey granted 483 wishes to local children with life-threatening medical conditions, and will grant over 500 wishes this year. The average cost of a wish in New Jersey is $10,000. Thanks to Danny’s efforts and the support of the community, Make-A-Wish New Jersey will continue to reach more eligible children and make their wishes come true.To support the Danny Shaves for Wishes campaign, visit wish.org/dannyshaves.For more information on Make-A-Wish New Jersey, visit nj.wish.org.