English Patents Court Setting Out its Stall?

02 October 2017

Patrick Kelleher

In a much-awaited decision handed down on 22 May 2017, the US Supreme Court in TC Heartland v Kraft Foods held that the "patent venue statute" (28 USC §1400(b)) should be construed narrowly.

This was the provision which the US courts had previously construed so as to define a defendant's "residence" as a state in which the defendant merely had business activities. This construction had allowed the blossoming over the last 30 years of an entire patent litigation industry in the Eastern District of Texas based upon forum shopping where patent trolls (non-practising entities) could sue in order to secure royalty settlements. The Eastern district of Texas had a record of finding for patentees around 80% of the time. In a unanimous ruling, the Supreme Court held that companies can only be sued for patent infringement where they reside or where they have regular and established place of business. If, as seems likely, patentees will now forum shop elsewhere, they will be faced with district courts with fewer resources to handle high volumes of patent infringement cases – Marshall Texas was home to around 30% of all patent actions filed in the US.

In the circumstances, patentees seeking a venue which affords more opportunities could well be looking overseas to Europe, and more specifically to the UK. The English courts' recent approach to make itself more outward looking in the field of patent law could well be a master stroke. This paper reviews some of the recent decisions of the UK Patents Court which have the feel of a determined pitch to a wider audience than usual. 

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