Deep in the Heart of Venue: A Patent Procedure Wrinkle

Before I begin, I should note that it is difficult to pinpoint circuit splits in the intellectual property context, particularly in patent law. Because of the highly specialized subject-matter jurisdiction of the United States Court of Appeals for the Federal Circuit (CAFC)—a court empowered to deal with patent matters from both the USPTO & the Federal District courts under 35 USC §141(a) and 28 USC §1295—the rulings released by CAFC are typically binding law, sans Congressional action in changing patent laws. South Corp. v. United States, (Fed. Cir. 1982). CAFC decisions are also not usually granted discretionary review by SCOTUS. Because of this specific scope of CAFC and its weight of authority in patent adjudication, there are often no real circuit splits that arise in patent law that are subject to SCOTUS review like in other areas of US law.

Nevertheless, internal splits do arise, and intellectual property is rife with authorities taking competing positions—particularly when IP law intertwines with other areas of law. This post highlights such a split. Let’s dive in.

What’s “Patent Venue”?

Within the volumes of Title 28 of the United States Code are the (in)famous provisions detailing how one invokes the jurisdiction of the US Federal Court system. While the fountainheads of federal question and diversity of citizenship under §1331 & §1332(a) are certainly important (and draw the ire of your 1L author), our super-juicy bit today centers on 28 USC §1400, which deals with Patent Venues.

Under §1400(b):

any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

SCOTUS weighed in on this provision in Fourco Glass Co. v. Transmirra Products Corp. (1957), and held that §1400 is one of several special statutes not subject to the general venue provisions codified in §1391(c). Specifically,

The question is not whether §1391(c) is clear and general . . . [but] whether it supplements §1400 . . . . We think it is clear that §1391(c) is a general corporation venue statute . . . [and] the law is settled that ‘however inclusive may be the general language of a statute, it will not be held to apply to a matter specifically dealt with in another part of the same enactment’ . . . . [As such], §1400(b) is the sole and exclusive provision controlling venue in patent infringement actions, and it is not to be supplemented by the provisions of 28 USC §1391(c).

The rule from Fourco is a relatively unambiguous rule for the world of patent litigation—that as a matter of procedure, the only statute that controls patent venue considerations is codified in §1400(b).

 Solo Split: The Federal Circuit, VE Holding, & TC Heartland

Despite the clarity of the venue provisions for patent litigation in §1400(b), CAFC threw a wrench into the mix with VE Holding Corp. v. Johnson Gas Appliance Co. (1990). The court deviated from SCOTUS’s bright-line test, applying some handy-dandy tools of statutory interpretation to hold that §1400(b) actually IS supplemented by §1391(c). Using both the textual context given by the 1988 revisions to §1391(c), and the clear lack of any expressed Congressional intent to maintain the exclusivity of §1400(b), the court held that §1400(b) is in fact modified by §1391(c). The court reasoned that:

[§1391(c)] as it was in Fourco is [gone, and] Congress could have easily added ‘except for §1400(b)’ . . . . The language of the statute is clear and its meaning is unambiguous . . . . The general rule that a specific statute is not controlled or nullified by a general statute regardless of priority of enactment, absent a clear intention or otherwise, does not govern the present situation. [§1391(c)] expressly reads itself into §1400(b)…[ §1391(c)] only operates to define a term in §1400(b) [nor does it conflict with §1400(b)]. Furthermore, even were the rule applicable . . . the language of the statute would reveal a ‘clear intention’ that §1391(c) is to supplement §1400(b).

In Kraft Food Group Brands, LLC v. TC Heartland, LLC (2015), the District Court of Delaware affirmed the holding in VE Holding Corp. This decision was ultimately affirmed by the CAFC in In re TC Heartland, LLC (2016). In both cases, TC Heartland argued that as part of the 2011 revisions to the US Code, the language in §1391(c) that CAFC relied on in VE Holding was changed, thus no longer modifying §1400(b). CAFC dismissed this in short order on TC Heartland’s appeal from Delaware, claiming that the changes made as part of the 2011 revisions were minor, and merely was a “broadening of the applicability of corporate residence, not a narrowing.” Further, the court assuming arguendo that Congress had intended to capture the meaning of the venue provisions in §1400(b), Fourco was not the precedent that Congress would have captured.

Looking Forward

What’s the Future for Patent Venues?

Based on this ruling by the CAFC, TC Heartland has begun the process of SCOTUS review, relying on the argument that CAFC has unilaterally overturned Supreme Court precedent in neglecting the holding of Fourco. As the amici briefs churn into the SCOTUS docket for this case, it raises the question of just where the Supreme Court will fall on this.

Given other SCOTUS decisions like Alice Corp. v. CLS Bank Int’l. (2014) and the affirmation of vague understandings of technology patents by both CAFC and SCOTUS, it is more than a little hazy as to where the Justices will stand on this question of patent venue provisions.

If the court chooses to side with CAFC’s cracking of the precedent in Fourco, it might be the case that more broad venue provisions would create a windfall for patent litigants who would gain the freedom to sue patent infringers anywhere that §1391(c) can be applied. However, if SCOTUS flexes its judicial muscle and overrules CAFC in favor of its 1957 holding in Fourco, we might just get another instance of an appeals court with a bit of egg in its face. Patent cases are a HUGE source of business for firms and agencies across the world, and this case has the potential to change the face of how patent litigation will be undertaken.

For further reading, see what firms Baker Botts and White & Case have to say on the matter.

An Erie Split: Anti-Slapp Laws and Rule 11

This is the second of two posts about the Erie doctrine, anti-SLAPP laws, and the Federal Rules of Civil Procedure. To see the first post, which covered anti-SLAPP laws and the conflict with Rules 12 and 56 of the FRCP, click here.

The Rule 11 Split

Should it be easier to sue your doctor or lawyer in federal court than in state court? The Eleventh Circuit purportedly says “yes,” while the Third and Tenth Circuits disagree. This consequential Erie Doctrine circuit split has complicated malpractice actions in federal courts for decades, and even touches some anti-SLAPP laws.

Many states have passed “tort reform” laws to protect doctors and lawyers from “frivolous lawsuits.” If you want to sue a doctor for malpractice in Georgia, for example, state law provides that you must attach an expert’s affidavit to your complaint or your case will be dismissed.

These statutes differ in timing (they may require filing an affidavit along with the complaint, or a certain number of days after) or to whom they apply (the affidavit may have to be signed by an attorney, a party, and/or an expert)—see the U. Penn. Law Review for a catalogue of the differences. But in federal court, all such laws run a risk of conflict with Rule 11, which states that, “Unless a rule or statute specifically states otherwise, a pleading need not be verified or accompanied by an affidavit.”

The Third Circuit in Liggon-Redding v. Estate of Sugarman (2011) allowed a Pennsylvania affidavit-of-merit statute to apply in a legal malpractice case despite Rule 11. The court emphasized the procedural differences between the Pennsylvania law and the federal rule to find no conflict under Hanna:

Pennsylvania Rule 1042.3 requires an additional written statement by ‘an appropriate licensed professional’ attesting to a ‘reasonable probability’ that a ‘licensed professional deviated from an acceptable professional standard.’ Additionally, the Pennsylvania certificate of merit must be filed within sixty (60) days of the filing of the complaint. Federal Rule 11, in contrast, does not require an additional consultation with experts or the filing of a separate written statement within sixty (60) days of the filing of the complaint. . . . Federal Rule of Civil Procedure 11 can co-exist with the Pennsylvania certificate of merit rule because each rule controls its own intended area of influence without any conflict.

The Tenth Circuit held there was no conflict under Hanna between Rule 11 and a similar Colorado statute in Trierweiler v. Croxton and Trench Holding Corp. (1996):

Despite the superficial similarity of the two rules, we conclude that they do not collide. . . . While § 13–20–602 penalizes the party, Rule 11 targets the attorney . . . . Furthermore, § 13–20–602 does not merely operate to discourage frivolous claims; it does so only with respect to lawsuits filed against licensed professionals, and it also seeks “to expedite the litigation process in [such] cases” by imposing a 60–day time limit. By protecting a particular class of defendants, and by expediting such cases, the statute vindicates substantive interests of Colorado not covered by Rule 11. Although the state and federal rules are similar, there is no “direct collision” between the two.

But the Eleventh Circuit created a circuit split with Trierweiler and Liggon-Redding in Royalty Network, Inc. v. Harris (2014). At issue was a bizarre former version of Georgia’s anti-SLAPP statute, which required a SLAPP plaintiff to file an affidavit if the lawsuit was filed against someone who was exercising First Amendment speech or petition rights. The court found a direct conflict under Hanna between the Georgia law and Rule 11:

The federal rule explicitly provides that a pleading need not be verified or accompanied by an affidavit and allows parties discretion in deciding whether to verify pleadings. The Georgia statute, by comparison, mandates that a complaint or pleading asserting a claim must be accompanied by a verification making specific representations.

The Eleventh Circuit added that Rule 11 does not incorporate state laws:

We acknowledge that Rule 11 states a pleading need not contain a verification ‘[u]nless a rule or statute specifically states otherwise.’ The rule’s reference to other rules or statutes, however, means other federal rules or statutes.

A reasonable reader might think the circuit cases could be distinguished based on the timing of the statutes at play: The Georgia statute, which did not apply in federal court, required an affidavit to be filed contemporaneously with the complaint. The Colorado and Pennsylvania statutes, which did apply in federal court, allowed 60 days after filing the complaint to file an affidavit.

But the district courts haven’t divided on that fault line. For example, the Western District of Michigan has applied a Michigan statute that, like Georgia’s, required a contemporaneously filed affidavit, concluding that the conflict with Rule 11 was “illusory.” But the Western District of Texas refused to apply a statute requiring an expert report within 120 days of the complaint, because it would “get in the way of the operation of Rule 11.” District courts have, in fact, been long divided about affidavit-of-merit requirements, which may also conflict with Rules 8 and 9—an issue beyond the scope of this blog entry (see the Pennsylvania and Arizona Law Reviews for more).

(For more still, read the Western District of Michigan case linked above. It’s a doozy of a case, covering issues arising from Section 1983 and medical malpractice. The court extensively discusses the Erie problem, and touches not just on the Rule 11 conflict described here, but issues with Rules 8, 9, and 26. And, of special interest to readers of this blog, the court even discusses which circuits and district courts are split applying the Rules. Consider it the cherry on top of this sundae.)

Looking Forward

A final note about Georgia. This year, the General Assembly passed an amendment to Georgia’s anti-SLAPP statute to make it look like most other states’. The new law provides a “special motion to dismiss” for SLAPP defendants, eliminating the requirement that a plaintiff file an affidavit of merit at the pleading stage. Arkansas is now the only state whose anti-SLAPP law requires SLAPP plaintiffs to file a verification with their pleading.

Now that Georgia’s anti-SLAPP law falls within the Rule 12/56 split rather than the Rule 11 split, it has a fresh chance at applying in federal court—if the Eleventh Circuit allows it.

An Erie Split: Anti-Slapp Laws, Rule 12, and Rule 56

Substantive or procedural? This age-old conceptual “split” lies at the heart of the Erie Doctrine, which we tackle here in our first post. The issue: when a state law imposes procedural requirements on litigants so as to advance a substantive policy goal, do those requirements apply in federal court? We have seen two circuit splits on this problem, so—befittingly—we have “split” our first post into two parts.

The Rule 12/Rule 56 Split

A major circuit split is developing on the Erie problem of whether state anti-SLAPP laws conflict with Federal Rules of Civil Procedure 12 and 56. SLAPP’s, or “Strategic Lawsuits Against Public Participation,” occur when someone is sued for defamation just for exercising her right to petition or speak out in public. The plaintiff—a company, for example—hopes the cost and stress of defending the lawsuit will stop the defendant—perhaps a recently fired employee— from speaking.

To deter these suits and preserve a robust First Amendment, twenty-eight states, plus D.C. and Guam, have passed anti-SLAPP laws. Though these laws have a substantive purpose (protecting free speech), they often take procedural form, providing SLAPP defendants with a “special motion to dismiss” that they can bring as soon as they are sued. Unfortunately for SLAPP defendants, Erie problems result if special motions to dismiss conflict with the Federal Rules of Civil Procedure.

The Erie Doctrine at its simplest has two steps: under Hanna v. Plumer,  if a state law conflicts with a valid federal rule, the federal rule controls. If there is no conflict, then under Erie, the court should apply state rules that are substantive enough to affect the outcome of the case. Here’s how anti-SLAPP laws can conflict with the Rules.

First, Rule 12 allows defendants to move to dismiss, but defendants must choose from among the seven grounds for dismissal listed in 12(b)—“I’ve been slapped with a SLAPP” is not listed. As the D.C. Circuit has noted (see below), anti-SLAPP laws may “conflict with the Federal Rules by setting up an additional hurdle a plaintiff must jump over to get to trial.”

Second, if a “special motion to dismiss” counts as a 12(b)(6) motion to dismiss for failure to state a claim, anti-SLAPP laws may conflict with Rule 56. Rule 12(d) provides that, “If, on a motion under Rule 12(b)(6) or 12(c), matters outside the pleadings are presented to and not excluded by the court, the motion must be treated as one for summary judgment under Rule 56.” But anti-SLAPP laws, such as Maine’s, flip the burden of proof required on summary judgment, putting it not on the SLAPP defendant, but on the SLAPP plaintiff—the nonmoving party.

The Ninth Circuit first considered whether anti-SLAPP laws conflict with Federal Rules 8, 12, and 56 in United States ex rel. Newsham v. Lockheed Missiles and Space Company (1999). The court found no conflict between the California anti-SLAPP law and the Federal Rules, under Hanna:

[T]here is no indication that Rules 8, 12, and 56 were intended to ‘occupy the field’ with respect to pretrial procedures aimed at weeding out meritless claims. . . . The Anti-SLAPP statute, moreover, is crafted to serve an interest not directly addressed by the Federal Rules:  the protection of ‘the constitutional rights of freedom of speech and petition for redress of grievances.’

The Fifth Circuit seemed to ratify this reasoning in Henry v. Lake Charles American Press (2009), applying Louisiana’s anti-SLAPP statute in federal court without Erie analysis. And the following year, the First Circuit agreed with Newsham and Henry, applying Maine’s anti-SLAPP statute in federal court and finding no conflict under Hanna with the Federal Rules:

Federal Rules 12(b)(6) and 56 are addressed to different (but related) subject-matters. . . . Maine has not created a substitute for the Federal Rules, but instead created a supplemental and substantive rule to provide added protections, beyond those in Rules 12 and 56, to defendants who are named as parties because of constitutional petitioning activities.

Judge Alex Kozinski of the Ninth Circuit, however, argued in a concurrence in Makaeff v. Trump University, LLC (2013), that Newsham was wrongly decided on two grounds. First, state procedural rules cannot apply in federal court, even absent a conflict:

Newsham‘s mistake was that it engaged in conflict analysis without first determining whether the state rule is, in fact, substantive. It’s not. The anti-SLAPP statute creates no substantive rights; it merely provides a procedural mechanism for vindicating existing rights.

And second, Judge Kozinski disagreed with Newsham and Godin, finding that anti-SLAPP laws do conflict with the Federal Rules:

The Federal Rules …provide an integrated program of pre-trial, trial and post-trial procedures designed to ensure “the just, speedy, and inexpensive determination of every action and proceeding.” . . . The California anti-SLAPP statute cuts an ugly gash through this orderly process. . . . Federal courts have no business applying exotic state procedural rules which, of necessity, disrupt the comprehensive scheme embodied in the Federal Rules, our jurisdictional statutes and Supreme Court interpretations thereof.

The D.C. Circuit, citing Judge Kozinski’s concerns, narrowly avoided creating a circuit split with Newsham, Henry, and Godin in Abbas v. Foreign Policy Group, LLC (2015), when it granted dismissal of a lawsuit based on 12(b)(6) but argued in dicta that the D.C. anti-SLAPP statute should not apply in federal court:

Federal Rules 12 and 56 answer the same question as the D.C. Anti-SLAPP Act, and those Federal Rules are valid under the Rules Enabling Act. A federal court exercising diversity jurisdiction therefore must apply Federal Rules 12 and 56 instead of the D.C. Anti-SLAPP Act’s special motion to dismiss provision.

It seems only a matter of time before another Court of Appeals adopts Judge Kozinski’s opinion and Abbas’s dicta into a holding and creates a circuit split with Newsham, Godin, and Henry. The Supreme Court spectacularly failed to clarify the Erie Doctrine in its 2010 case Shady Grove Orthopedic Associates v. Allstate Insurance Co., when the Justices split 4-1-4 with no majority opinion. But with Justice Scalia—author of the Shady Grove plurality—and Justice Stevens—author of the concurrence in judgment—no longer on the Court, we expect the Erie Doctrine to appear again at the high court.

For further reading, see these law review pieces from Boston College and Case Western.