Requests for Production on Proper Venue under 28 U.S.C. § 1400(b)
(Patent Owner to Accused Infringer)

Summary

This is a template for a plaintiff patent owner's request for production (RFPs) in district court litigation seeking early discovery of facts that support proper venue for use in responding to the defendant's motion to dismiss or transfer for improper venue under 28 U.S.C. § 1400(b). This template includes practical guidance, drafting notes and alternate clauses. Fed. R. Civ. P. 34 Rule 34 permits service of RFPs within the scope of discovery permitted by Fed. R. Civ. P. 26(b). Rule 26(b) limits discovery to matters proportional to the needs of the case based on several factors, including the amount in controversy, the parties' resources and relative access to the information, and whether the burden or expense outweighs the benefit of the discovery. These requests should be tailored to the venue issues in your case, taking into account Rule 26(b)'s proportionality factors. Local civil rules and local patent rules may contain procedures that impact RFPs (see, for example, N.D. Cal. E-Discovery (ESI) Guidelines). Check for any local rules, local patent rules, or judge's standing orders that impact venue-related discovery. For example, Judge Albright in the Western District of Texas has a standing order for patent cases that limits the number of RFPs on venue to 10. Also, check any court order granting leave to conduct early venue-related discovery for a limit on RFPs. Under 28 U.S.C. § 1400(b) (known as the patent venue statute), in patent infringement actions venue is proper in the judicial district where: • The defendant resides –or– • The defendant has committed acts of infringement and has a regular and established place of business In a motion to dismiss for improper venue under Section 1400(b), the plaintiff bears the ultimate burden of establishing that venue is proper. See In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018). When venue is found to be improper, the court will dismiss the complaint. Alternatively, in the interests of justice, the court may transfer the case to another district or division in which it could have been brought. 28 U.S.C. § 1406(a); Atl. Marine Constr. Co. v. U.S. Dist. Ct., 571 U.S. 49, 55 (2013). It is generally relatively easy to establish proper venue under the first prong of Section 1400(b) based on publicly available facts as to the defendant's residence. Thus, motions to dismiss or transfer for improper venue typically turn on the second prong of Section 1400(b). To bolster a showing of proper venue under the second prong, a plaintiff may need to conduct discovery on the defendant's acts of infringement and place of business in the district since much of the relevant information may be within the defendant's exclusive knowledge and control. Venue disputes under Section 1400(b) most often turn on whether the defendant's place of business in the district qualifies as a regular and established place of business of the defendant as defined by Federal Circuit case law. There are three requirements to show that a defendant has a regular and established place of business sufficient to support proper venue under 28 U.S.C. § 1400(b): • There must be a physical place in the district • The place must be a regular and established place of business –and– • The place must be the place of the defendant See In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). For additional discussion, see Venue Rules and Practice for Patent Infringement Litigation and Venue (Patent Infringement Litigation) Checklist. A patent owner faced with a motion to dismiss or transfer for improper venue should consider requesting early discovery on the above three Cray factors to include additional support for proper venue in its opposition papers. A court may be receptive to such a request in the following circumstances: • You present facts that provide at least a colorable basis for proper venue and argue that these facts just need to be verified or supplemented by additional information that is exclusively within the defendant's knowledge. • You show that limited discovery is necessary to probe the basis for declarations that the defendant has filed in support of its motion to dismiss or transfer. (See, e.g., RegenLab USA LLC v. Estar Techs. Ltd, 2017 U.S. Dist. LEXIS 131627, at *9–10 (S.D.N.Y. August 17, 2017)). Be aware that a court will likely deny your request for early discovery on venue where it appears that fact discovery is unlikely to provide a basis for proper venue. See, e.g., Patent Holder LLC v. Lone Wolf Distribs., 2017 U.S. Dist. LEXIS 180699, at *22 (S.D. Fla. Oct. 31, 2017) (facts alleged by plaintiff failed to suggest that discovery would show that defendant had a regular and established place of business in the venue). Your requests should be limited and focused on the information essential to support your assertion of proper venue. This template includes over 20 separate requests. However, you should choose the most relevant and important requests for your case. For additional information on discovery in patent cases, see Patent Litigation: Fact Discovery Resource Kit. For more information on venue considerations, see Venue Rules and Practice for Patent Infringement Litigation and Venue (Patent Infringement Litigation) Checklist. For a discussion of venue transfer motions before Judge Albright in the Western District of Texas, see Patent Litigation Rules and Practice before Judge Alan Albright W.D. Tex.