In a May 24, 2018 ruling, Judge Nathan S. Roman dismissed the plaintiffs’ patent infringement action for improper venue. The defendant conceded that it had committed acts of alleged infringement in the District, but argued that it was incorporated in Ohio and did not have “a regular and established place of business” in the District as required under the patent venue statute, 28 U.S.C. § 1400(b). So, the defendant argued, venue is improper in this District under the Supreme Court’s TC Heartland ruling.Judge Roman first rejected the plaintiffs’ contention that the defendant waived the argument, noting it “is evident that prior to TC Heartland, filing a motion for improper venue based on an argument that Defendant was not incorporated in New York, would have been in direct contravention of Federal Circuit law.” As to the merits of the venue issue, in light of the defendant’s concession of alleged infringing acts in the District, and of the indisputable fact that the defendant is incorporated in Ohio, the Court noted that it need only resolve whether the defendant has a “regular and established place of business” in the District. In making that determination, Judge Nathan considered the impact of the defendant’s maintenance of storage units in New York. The Court rejected these units as a basis for jurisdiction, writing:
First, the storage units identified by Plaintiffs are likely “physical places in the district” prong, insofar as they are “building[s] or []part[s] of a building set apart for any purpose” . . . . Plaintiffs also demonstrated that Defendant pays for these storage units, . . . leading to a conclusion that the storage units are “of the defendant” . . . . Nevertheless, the storage units are not “regular and established places of business”, because Plaintiffs have failed to demonstrate that Defendant “actually engage[s] in business from [either] location.” . . . The question is whether the storage units are “location[s] at which one carries on a business.” . . . They are not. While Defendant’s customer service reps may “typically” retrieve materials from the storage units to visit customers within this District, . . . , no “employee or agent of [Defendant actually] conduct[s] business at” the storage units, whatsoever . . . . Venue is improper.
