Regular and Established Place of Business Michael Sacksteder Chair, Patent Litigation Group Fenwick & West LLP msacksteder@fenwick.com

Chair, Patent Litigation Group Regular and Established Place of Business or “Be It Ever So Humble, There’s No Place Like Home” Michael Sacksteder Chair, Patent Litigation Group Fenwick & West LLP msacksteder@fenwick.com

Patent Venue Statute 28 U.S.C. § 1400(b): Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

Raytheon v. Cray Cray had no facilities in E.D. Texas No sales or customers in E.D. Texas One former Cray sales employee worked from home in E.D. Texas at time of complaint Marketed supercomputers to oil and gas customers outside the district All offers to sell generated by configuration team in Cray’s Minnesota and Washington offices Listed personal telephone number on work emails Systems designed in Minnesota and Washington, and manufactured in Wisconsin Judge Gilstrap found “regular and established place of business” under Cordis

“Factors Pertaining to a Regular and Established Place of Business in the Modern Era” Physical presence Defendant’s internal or external representations re presence in the district The extent to which a defendant derives benefits from its presence in the district “Including but not limited to sales revenue” Targeted interactions with the district Localized customer support Ongoing contractual relationships Targeted marketing efforts

Cray Mandamus Petition

Full Disclosure…

In re Cray “Place of business” means a place “Regular” “Established” A “physical, geographical location in the district from which the business of the defendant is carried out” A “a place of the defendant, not solely a place of the defendant’s employee” “Regular” “Sporadic activity cannot create venue.” Operate in a “steady, uniform, orderly, and methodical” manner  “Established” Stability, controlled by defendant “[I]f an employee can move his or her home out of the district at his or her own instigation, without the approval of the defendant, that would cut against the employee’s home being considered a place of business of the defendant.” Summary “[T]he court must identify a physical place, of business, of the defendant.” (Commas in original)

In re Cray “Place of business” means a place “Regular” “Established” A “physical, geographical location in the district from which the business of the defendant is carried out” A “a place of the defendant, not solely a place of the defendant’s employee” “Regular” “Sporadic activity cannot create venue.” Operate in a “steady, uniform, orderly, and methodical” manner  “Established” Stability, controlled by defendant “[I]f an employee can move his or her home out of the district at his or her own instigation, without the approval of the defendant, that would cut against the employee’s home being considered a place of business of the defendant.” Summary “[T]he court must identify a physical place, of business, of the defendant.” (Commas in original)

In re Cray “Place of business” means a place “Regular” “Established” A “physical, geographical location in the district from which the business of the defendant is carried out” A “a place of the defendant, not solely a place of the defendant’s employee” “Regular” “Sporadic activity cannot create venue.” Operate in a “steady, uniform, orderly, and methodical” manner  “Established” Stability, controlled by defendant “[I]f an employee can move his or her home out of the district at his or her own instigation, without the approval of the defendant, that would cut against the employee’s home being considered a place of business of the defendant.” Summary “[T]he court must identify a physical place, of business, of the defendant.” (Commas in original)

In re Cray “Place of business” means a place “Regular” “Established” A “physical, geographical location in the district from which the business of the defendant is carried out” A “a place of the defendant, not solely a place of the defendant’s employee” “Regular” “Sporadic activity cannot create venue.” Operate in a “steady, uniform, orderly, and methodical” manner  “Established” Stability, controlled by defendant “[I]f an employee can move his or her home out of the district at his or her own instigation, without the approval of the defendant, that would cut against the employee’s home being considered a place of business of the defendant.” Summary “[T]he court must identify a physical place, of business, of the defendant.” (Commas in original)

Application of Cray: Uniloc v. Nutanix E.D. Texas, Judge Gilstrap 19 Nutanix employees worked from home in district “The Federal Circuit’s holding in Cray is particularly instructive given that the underlying facts there are similar to those before the Court in this case.” “While there is a fine distinction between Cordis and Cray, the case before this Court falls closer on this spectrum to Cray than it does to Cordis.” None of employees’ residences are “places of the defendant” Dismissed case pursuant to 28 U.S.C. §1406(a) Declined plaintiff’s request to transfer to W.D. Texas instead

ED Texas is More than the “Piney Woods” Plano

Alternative REPBs Going Forward Bank branches Retail locations Consumer electronics stores (sue retailer instead of manufacturer)