Reported / Citable
Background
VIP Archery, Arrowds, and their owner Matthew Futtere sued Bowmar Archery and related defendants over a bowhunting broadhead called the Beast. Plaintiffs alleged that the Beast infringed VIP Archery’s patent for an arrowhead with collapsible, outwardly biased blades, and that defendants also committed trademark infringement, false advertising, unfair competition, breach of a nondisclosure agreement, fraud, and intentional infliction of emotional distress.
The dispute followed unsuccessful negotiations for Bowmar to acquire some or all of VIP Archery’s assets, including the patent. Plaintiffs alleged that Bowmar released the Beast during those negotiations and that Bowmar later sought, unsuccessfully, to invalidate the patent through inter partes review.
The Court’s Holding
Judge David A. Ezra held that the Western District of Texas was not a proper venue for the patent-infringement claim under 28 U.S.C. § 1400(b). The complaint did not allege that any defendant resided in the district or had committed infringement there while maintaining a regular and established place of business there.
The court declined to apply pendent venue to retain the patent claim based on venue for the other claims. It concluded that, after TC Heartland, § 1400(b) exclusively governs venue in patent cases and that pendent venue does not supply venue for this claim. Rather than dismissing the patent claim, however, the court granted the motion in part and transferred the entire case to the Southern District of Iowa, Central Division, in the interest of justice.
Key Takeaways
- Patent venue must independently satisfy § 1400(b); general venue and pendent-venue theories cannot cure an improperly venued patent claim.
- A defendant’s out-of-state incorporation and the absence of an alleged physical business location in the district defeated patent venue in Texas.
- When related claims arise from the same dispute, transfer of the entire action may better serve justice than splitting claims between districts.
Why It Matters
The order reinforces the narrow scope of patent venue after TC Heartland. Plaintiffs combining patent claims with trademark, contract, and tort claims cannot rely on proper venue for those accompanying claims to keep an otherwise improperly venued patent claim in the chosen district.
It also illustrates that courts may use § 1406(a) to transfer a connected multi-claim case rather than require duplicative litigation, particularly where the parties identify an appropriate transferee forum and the claims share the same factual core.