This morning, the Federal Circuit issued one precedential opinion in a patent case and one nonprecedential opinion in a trademark case. The Federal Circuit also issued one Rule 36 judgment. Here are the introductions to the opinions and a link to the Rule 36 judgment.

Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc. (Precedential)

In 2017, the Supreme Court dramatically changed the venue landscape in patent cases. See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017). It held that the general venue provision in 28 U.S.C. § 1391— which provides that a corporation is deemed to “reside” in any judicial district in which it is subject to personal jurisdiction—does not modify the term “resides” in 28 U.S.C. § 1400, the more specific venue statute applicable to patent cases. Specifically, it held that “resides” in § 1400(b) refers only to a corporation’s state of incorporation. That means that a corporation may be sued for patent infringement in only two categories of judicial districts: those in the state in which it is incorporated and those in which it has a regular and established place of business and an act of infringement has occurred. TC Heartland raised more questions than it answered; we and district courts around the country have been working through those questions since 2017. Today we tackle one more.

Today we answer the question of where “acts of infringement” under § 1400(b) occur with respect to infringement claims brought pursuant to the Hatch-Waxman Act. We conclude that, in cases brought under 35 U.S.C. § 271(e)(2)(A), infringement occurs for venue purposes only in districts where actions related to the submission of an Abbreviated New Drug Application (“ANDA”) occur, not in all locations where future distribution of the generic products specified in the ANDA is contemplated.

Given this conclusion, we affirm the district court’s order dismissing the claims against the two U.S.-based defendants pursuant to Rule 12(b)(3) of the Federal Rules of Civil Procedure for improper venue. See Valeant Pharms. N. Am. LLC v. Zydus Pharms. (USA) Inc., No. 18-cv-13635- PGS-LHG, 2019 WL 4179832 (D.N.J. Aug. 14, 2019). For the reasons explained below, however, we vacate and remand the portion of the court’s order dismissing the action against the foreign defendant—as to which venue was unquestionably proper—pursuant to Rule 12(b)(6), because the court failed to address the substance of that motion.

In re Reelex Packaging Solutions, Inc. (Nonprecential)

Reelex Packaging Solutions, Inc. (“Reelex”) appeals from a final decision of the Trademark Trial and Appeal Board (“Board”), affirming the examining attorney’s refusal to register two box designs for electric cables and wire on grounds that the designs are functional under Section 2(e)(5) of the Lanham Act, 15 U.S.C. § 1052(e)(5). In re Reelex Packaging Solutions, Inc., Nos. 87285383, 87285412, 2019 BL 481341 (T.T.A.B. Oct. 23, 2019) (Board Decision). Reelex also appeals the Board’s determination that the designs have not acquired distinctiveness. Because substantial evidence supports the Board’s finding that the designs are functional, we affirm.

Rule 36 Judgment