Firm Argues Patent Venue Case Before Supreme Court

March 28, 2017 — In a culmination of Hughes Hubbard’s representation of TC Heartland in what is widely regarded as the most significant patent case of the year, Jim Dabney argued before the U.S. Supreme Court on March 27.

Dabney asked the Supreme Court to overturn venue rules used by federal courts since 1990 when the Federal Circuit re-interpreted a high court precedent regarding a patent venue statute. The current rules have led to a high concentration of patent cases being filed in a handful of districts, particularly the Eastern District of Texas, which are known for plaintiff-friendly rules and juries that deliver massive damages awards.

If the Supreme Court sides with TC Heartland, it will level the playing field by requiring patent owners to sue companies where they are incorporated or have an established place of business and where the infringement allegedly occurred.

HHR is representing TC Heartland as a defendant against Kraft Foods Group Brands in a patent infringement suit in Delaware federal court, and in the Supreme Court, where the sweetener manufacturer is seeking dismissal or transfer of the proceedings to the Southern District of Indiana, where it is based, on the ground that the venue is improper in Delaware.

TC Heartland responded to the Kraft suit in 2014 by moving to dismiss for improper venue -- a position grounded in Supreme Court precedent but in tension with post-1990 Federal Circuit precedent. When the district court denied TC Heartland's motion to dismiss or transfer, TC Heartland filed a petition for a writ of mandamus in the Federal Circuit -- a relatively seldom used appellate procedure but one with which HHR’s IP team is quite familiar.

In April 2016, the Federal Circuit denied the petition in a short opinion that reaffirmed its own precedent interpreting the patent venue statute. TC Heartland then filed a petition for a writ of certiorari in the Supreme Court. The Supreme Court agreed to take the case on Dec. 14.

TC Heartland has received overwhelming amicus curiae support from a diverse coalition of corporate amici, public interest law groups, trade associations, law professors and a retired Federal Circuit chief judge.

The case has garnered widespread news coverage, including the front page of The Wall Street Journal, The New York Times, Bloomberg, Reuters, Patently-O and Law360.

Dabney leads the HHR team, which includes John Duffy, Richard Koehl, Jim Klaiber, Ross Lipman, Tina Schaefer, Emma Baratta, David Lansky, Lynn Russo, Stefanie Lopatkin, Michael Polka, Matt Voas and paralegal Jeff Bednar.