The Evolving Principles of Venue and Jurisdiction in the Aftermath of TC Heartland

April 23, 2018 9:00am

Michael R. Dzwonczyk
Partner
Sughrue Mion, PLLC (Washington, DC)

D. Clay Holloway
Partner
Kilpatrick Townsend & Stockton LLP (Atlanta, GA)

Staci Julie
Senior Vice President and Chief Intellectual Property Counsel
Teva Pharmaceuticals (Horsham, PA)

Filko Prugo
Partner
Ropes & Gray LLP (New York, NY)

Robert D. Rhoad
Partner
Dechert LLP (Princeton, NJ)

Peter Waibel
Head US Patent Litigation
Novartis Pharmaceuticals Corporation (East Hanover, NJ)

MODERATOR:

Kathleen B. Carr
Member
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo PC (Boston, MA)

Last spring, in TC Heartland, the Supreme Court reined in the previously broad interpretation of the venue statute, and held that the word “resides” describes a company’s place of incorporation. Now that the Court has addressed this first part of 28 U.S.C. §1400(b), pharmaceutical companies on both sides are struggling to interpret the second prong of the venue statute, which the Supreme Court did not address. As such, confusion abounds as to how courts and stakeholders alike should interpret the meaning of “where the defendant has committed acts of infringement and has a regular and established place of business. And so, the mad revels begin.

This panel will examine this second prong of TC Heartland, as well as the consequences of the landmark decision. Points of discussion will include:

  • Understanding the repercussions of TC Heartland on Paragraph IV litigation
  • Exploring the jurisdictions where the recent flurry of patent infringement complaints have been filed, and assessing how different jurisdictions are interpreting the decision
  • Examining the Federal Circuit’s recent rulings on District Court interpretations of TC Heartland, as well as the various litmus tests, which some jurisdictions have devised, in the aftermath of this decision