By Annsley Merelle Ward

On 22 May 2107, the US Supreme Court unanimously put limits on where patentees can commence patent infringement proceedings in the US.  In the case, TC Heartland challenged Kraft Heinz’s decision to commence patent infringement proceedings against it in Delaware, arguing that the case should be transferred to its home court in Indiana.

In overturning last year’s decision from the US Court of Appeals for the Federal Circuit, the Court held that patent infringement suits can only be filed in courts located in the jurisdiction where the defendant is incorporated or where it has committed acts of infringement and has a regular and established place of business.

The practical effect of the Supreme Court’s decision in Heartland v Kraft Foods will be to restrict a patentee’s choice to bring cases in patentee-friendly jurisdictions where findings of infringement and damages awards are higher than in other venues, namely the Eastern District of Texas.

By comparison, Article 33 of the UPC Agreement gives a patentee four options as to where to bring infringement proceedings:

  • the local/regional division where the actual or threatened infringement has occurred or may occur; or
  • the local/regional division where the defendant or one of the defendants has its residence or principal place of business; or
  • the local/regional division, in the absence of a residence or principal place of business, the defendant’s place of business; or
  • the relevant Central Division, in cases where the defendant’s residence, principal place of business or place of business is located outside the Contracting Member States or there is no local or regional division in the relevant Contracting Member State applying the above rules.

With patentees retaining significant control as to where to commence patent infringement cases, the UPC may become an attractive forum for patentees facing increasing restrictions in the US.

Annsley Merelle Ward is associate at Bristows and co-chair of AIPPI’s Standing Committee on UPC and Unitary Patent.

This article was originally published on the website of Bristows.

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One comment

  1. It has been a long time problem that the Court of the Eastern District of Texas has been outrageously patentee friendly. Now that the Supreme Court brings an end to this oddity, why should we complain? The restriction might give more strength to the US patent system which is under scrutiny by the Supreme court, to the desperation of some, for instance with respect to eligibility.

    In order for the UPC to become attractive it first has to start, and this is anything but certain. And the Brexit has not made things simpler, in spite of what some people may say. And without the participation of UK it becomes much less interesting.

    The UPC was set up with the aim of avoiding forum shopping, which was one of the reasons why the Luxemburg Convention (1975!!) on the community patent was dead-borne. Forum shopping has not been completely excluded, as the four possibilities stated in the blog clearly show.

    The language problem, which was only one of the problems of the Luxemburg Convention, has only been partially solved with the UPC, as the proceedings might not be held in the language in which the patent has been granted, even should the parties request this; it can also be the official language of the state hosting the division, cf. Art 49UPCA + R 321UPC ff. This might exclude some local divisions in the choice apparently offered.

    I fear therefore not to see why the “UPC may become an attractive forum for patentees facing increasing restrictions in the US”.

    The present message would be much more convincing if it had not been issued by a person from a firm which has high stakes in the UPC business, and which promotes at any costs that UK should remain in the UPC after Brexit. I also do not find it right that the blog is used to merely repeat what has been said on the home page of said firm.

    A word of warning: this comment may not be used by Techrights or Mr Schestowitz in any form whatsoever.

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