Chapter 13 Outline

• Jurisdiction: United States

Chapter 13

Jurisdiction and Procedure

Introduction

§13.01 U.S. District Courts

[A] Subject Matter Jurisdiction over Patent Cases

[1] Statutory Basis: 28 U.S.C. §1338

[2] "Arising Under" Jurisdiction

[a] "Creation" Test

[b] "Serious Federal Interest" Test

[i] Christianson (U.S. 1988)

[ii] Gunn (U.S. 2013)

[iii] Post- Gunn Federal Circuit Decisions on "Substantial Question" of Patent Law

[B] Personal Jurisdiction

[1] Generally

[2] Specific Personal Jurisdiction

[a] Stream-of-Commerce Theory

[b] Sending Enforcement Letters

[i] Traditional rule: Red Wing (1998): No Personal Jurisdiction from Solely Informing Party in the Forum of Suspected Infringement

[ii] Trimble (2021): More Extensive Communications Will Give Rise to Personal Jurisdiction

[C] Venue

[1] Patent-Specific Statute: 28 U.S.C. §1400(b)

[2] Fourco Glass (U.S. 1957)

[3] V.E. Holding (Fed. Cir. 1990) Greatly Expands Patent Venue

[4] TC Heartland (U.S. 2017) Drastically Narrows Patent Venue

[5] Suing Where Accused Infringer Has "Committed Acts of Infringement" and Has a "Regular and Established Place of Business"

[a] In re Cordis (Fed. Cir. 1985)

[b] Representative Post-TC Heartland (U.S. 2017) District Court Decisions

[c] Post- TC Heartland (U.S. 2017) Federal Circuit Decisions

[i] Cray (2017)

[ii] ZTE (2018)

[d] Waiver or Forfeiture of Improper Venue Defense

[6] Venue for Infringement Actions Against Foreign Corporations

[7] Venue for Patent-Related Actions Not Asserting Infringement

[a] Correction of Inventorship

[b] Declaratory Judgment Actions

[8] Choice of Law and Burden of Proof

[a] Federal Circuit Law Governs

[b] Burden of Proof on Plaintiff

[9] Suing Where Accused Infringer "Resides"

[D] Pleading Requirements

[1] Elimination of Form Pleading for Direct Infringement (2015)

[2] Bill of Lading (Fed. Cir. 2012)

[3] Pleading Joint Infringement

[E] Evidentiary Privileges

[1] Attorney-Client Privilege

[2] Patent Agent-Client Privilege

§13.02 U.S. International Trade Commission

§13.03 U.S. Court of Appeals for the Federal Circuit

[A] Subject Matter-Specific Appellate Jurisdiction

[B] Critiques of the Federal Circuit

[C] Standards of Review

[1] Appeals from Federal District Courts

[a] Jury Trial

[b] Bench Trial

[2] Appeals from the International Trade Commission

[3] Appeals from the U.S.

...