If patent owner unreasonable delays filing lawsuit, patent infringer can escape

A patent is a set of exclusive rights granted to an inventor of an invention. To be granted a patent an inventor must file a patent application which demonstrates the invention is worthy of patent protection. The patent application must detail how the invention is new, novel and not obvious. If the patent application is granted then the patent owner is granted the exclusive right to make use and sell the patent in the country which granted the patent. If someone other than that patent owner exercises one of the rights granted to the patent owner, without permission, that is considered patent infringement. A patent owner can file a lawsuit to stop future patent infringement with an injunction and to get monetary damages for patent infringement which happened in the past.

Patent law in the United States does not exist in a vacuum. Patent law sits on top of other foundational laws. Even if a patent owner has a solid case of patent infringement, the patent owner is not guaranteed to win a judgement.

In the United States the federal rules of civil procedure govern the filing of law suits in federal courts, including lawsuits related to patent infringement. Prior to 2017 patent infringement lawsuits could be filed in almost any federal court in the United States. This situation was out of the ordinary because the federal rules of civil procedure had strict rules about which federal court may hear a case. Patent infringement lawsuits were considered a special exception to the general rule.

In TC HEARTLAND LLC v. KRAFT FOODS GROUP BRANDS LLC, No. 16–341 (2017) the United States Supreme Court essentially removed the special exception for patent infringement lawsuits. Now if a patent owner wants to file a patent infringement lawsuit the patent owner must file the lawsuit in a federal district court in which the defendant resides. This requirement relates to the venue requirements of the federal rules of civil procedure. If a defendant resides in the federal court’s district then venue is proper. If the defendant does not reside in the federal court’s district then venue is improper and the lawsuit can be dismissed.

Because TC Heartland was a big change in how patent lawsuits could be filed, there have been several cases since which have fleshed out the details of the change.

Take for instance PARKERVISION, INC. v. APPLE INC. and QUALCOMM, Inc., 3:15-cv-1477 (M.D.F. 2018). In that case Parkervision sued two companies in the United States District Court Middle District Of Florida for patent infringement in 2015. Qualcomm had an office in the district which the court sits in, but closed it a few weeks before the lawsuit was filed. Qualcomm moved to have the lawsuit transferred to California because it no long had a place of business in Florida which made venue improper. The district court concluded that venue is proper if a defendant had a regular and established place of business at the time the cause of action accrued, and a lawsuit was subsequently filed within a reasonable time. The court noted another case which found a 21-month delay in filing suit to be unreasonable. Because Parkervision filed suit within weeks of Qualcomm closing its office the delay was reasonable and venue was proper.

Even though the court did not articulate an exact amount of time which would be considered reasonable, it puts plaintiffs on notice that a defendant closing an office will affect proper venue.

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