McDermott Secures Landmark Federal Circuit Victory on Patent Venue


WASHINGTON, DC— International law firm McDermott Will & Emery won a landmark decision at the US Court of Appeals for the Federal Circuit. The decision, issued on May 14, 2018, establishes that Federal Circuit law governs the burden of proving venue in patent cases and that burden of establishing proper venue falls on the plaintiff.

On behalf of ZTE (USA) Inc., McDermott challenged venue by filing a motion to dismiss a case filed by American GNC Corporation in the Eastern District of Texas. The district court denied ZTE’s motion, finding that ZTE bore the burden of proof and failed to meet it. McDermott then filed a petition for mandamus with the Federal Circuit challenging both the substantive ruling and the district court’s allocation of the burden of proof.

The US Supreme Court’s May 2017 decision in TC Heartland LLC v. Kraft Food Brands LLC limited patent venue to the provisions of 28 U.S.C. § 1400(b) and subsequent litigation led to disputes about what law applies and which party bears the burden of proof. McDermott argued that Federal Circuit law should govern the burden of proving venue in patent cases and the plaintiff should bear the burden. After two rounds of briefing on mandamus, the Federal Circuit agreed.

“This is a significant ruling that provides uniformity for venue disputes in all future US patent cases and will assist companies sued in an improper venue to protect their rights.” said Charles McMahon, partner in McDermott’s Intellectual Property Practice. “It was an honor to represent ZTE in such a notable case, and we are pleased with the Federal Circuit’s decision.”

In addition to McMahon, the McDermott team consisted of Michael Nadel, Jay Reiziss, Natalie Bennett, Brian Jones, and Jodi Baker, with assistance from Brittany Washington and Amy Mahan.
The case is In re: ZTE (USA) Inc. in the US Court of Appeals for the Federal Circuit, and the order can be found here.

About McDermott

McDermott Will & Emery is a premier international law firm with a diversified business practice. Numbering more than 1,000 lawyers, we have offices in Boston, Brussels, Chicago, Dallas, Düsseldorf, Frankfurt, Houston, London, Los Angeles, Miami, Milan, Munich, New York, Orange County, Paris, Seoul, Silicon Valley and Washington, DC. Further extending our reach into Asia, we have a strategic alliance with MWE China Law Offices in Shanghai.

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