Oral argument in TC Heartland case concerning patent venue provisions
The Washington Post on the Supreme Court TC Heartland case:
The justices acknowledged that their case from 1957 seemed definitive.
The problem is that Congress has altered the law about legal venues twice since then,
and the U.S. Court of Appeals for the Federal Circuit has basically rewritten the rules from what the Supreme Court set.
Justice Elena Kagan noted the unusual nature of the case. Usually when the Supreme Court rules,
“we can be pretty confident that Congress is acting against the backdrop of that decision,” she said.
“But I think that that would be an odd thing to say in this case, given that for 30 years
the Federal Circuit has been ignoring our decision and the law has effectively been otherwise.”
The New York Times expanded on this:
On Monday, Justice Elena Kagan noted a curiosity about the 1990 decision: It was at odds with a 1957 Supreme Court precedent. She sounded surprisingly sanguine about this state of affairs.
“For 30 years the Federal Circuit has been ignoring our decision, and the law has effectively been otherwise,” she said.
Justice Kagan also reflected on what the case had in common with one argued earlier on Monday about pension plans. “Sometimes we have accidental theme days at the Supreme Court,” she said. “So today’s accidental theme is: When 30 years of practice goes against you, what happens?”
Mr. Dabney began the oral argument:
The Court in this case is presented with an
historic choice. That choice is between upholding or
destroying venue protections that Congress provided in
28 U.S.C. 1400(b), and that this Court interpreting that
statute declared to exist in its Fourco Glass decision.
And the correct choice, we submit, is to adhere to this
Court's existing, long-established interpretation of
Section 1400(b) and to reject the new call for a new
revisionist interpretation that would render Section
1400(b) nugatory in this case and in all but the most
1400(b) was enacted to restrict where patent
cases could be filed, and what we've seen in the Federal
search that's experiment since 1990 is a very good
demonstration of why patent cases need a venue statute
like 1400. If you don't have a venue statute like
Section 1400, you get the kind of litigation experiences
that are set out in the amici briefs.
The -- the law professor's brief noted that
there's a single judge in the United States that has
one-quarter of all patent cases in the United States on
his docket. This is a situation that cries out for
nothing more than upholding the venue protection that
Congress provided and that this Court announced in
Fourco, and that Congress took a very careful look at in
2011, and decided to --
Justice Kagan observed:
It seems actually that if -- if I were a
congressman, I'd think that the practical backdrop
against which I'm legislating is not Fourco; it is
instead the Federal Circuit's decision in VE Holding,
which is the decision that the practice has conformed
Mr. Dabney responded:
Well, I -- I can tell the Court
from someone who does practice that not everyone ever
acceded to VE Holding. And I think, if you look at what
actually happened in the 2011 act, it seems to me that,
in 2011, Congress took steps that indicated that they
didn't get the memo, that this Court's decision in
Fourco Glass was a nullity and that -- and that its
disregard by lower courts had somehow become the law of
First, VE Holding, the 1990 decision of the
Federal Circuit, had seized upon a prepositional phrase
in a 1988 version under this chapter. So if Congress
was thinking, oh, what I want to do is lock in a
situation in which an enormous, extreme controversial
imbalance in Federal patent litigation that goes to a
very small number of victics, it was an odd thing for
Congress to have repealed the very grab-hold that --
Justice Breyer brought up an interesting point:
And the second thing that I'd like to know
is you are not a corporation. So since you are not a
corporation, why do we have this case here deciding?
And what are we supposed to do about that? We don't
normally decide cases because Mr. Smith would like us to
decide a case involving a corporation. He's not a
corporation, nor are you. So what do we do?
You can go into that if you
want. As far as that -- might be other people are
interested in that. But I really feel I need an answer
to my second question.
MR. DABNEY: Can you remind me what that --
JUSTICE BREYER: That is, you're asking us
to decide where venue is proper for a corporation, and
you are not a corporation. Therefore, on what basis are
we supposed to decide that?
KSR comes up:
MR. DABNEY: I -- I -- I heard Justice
Souter say something like that in the KSR case, you
know, the teaching-suggestion-motivation test has been
around so long that, at some point, the mistake becomes
the law. And -- and this Court has again and again and
again stood up for its authority to declare what the law