A recent decision from the
The plaintiffs filed suit in their home district, the
Under 35 U.S.C. § 1400(b), venue is proper in the judicial district (1) where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business.
A "place of business" under 35 U.S.C. § 1400(b) must be:
(1) A physical place in the district from which the defendant actually engages in business;
(2) regular and established; and
(3) the place of the defendant.
In re
The court found several facts persuasive to its holding:
First, Amazon.com exerted control over the space by contracting with the owners of the properties on which Lockers were installed. Specifically, Amazon.com received a license or lease to occupy a certain space, and prohibited the property owners from moving or relocating the Lockers without Amazon.com's permission. Amazon.com branded the Lockers with its logo. Further, in at least two instances, Amazon.com chose to have the Lockers physically bolted to the ground. In this way, Amazon.com, through the Lockers, occupies physical and permanent space in the district.
Second, Amazon.com's agents maintain a significant presence in the district. Amazon.com contracted with third-parties to install and maintain the Lockers. Although third-party contractors provided the actual services, Amazon.com indicated publicly to prospective property owners that Amazon.com itself handles all installation, service, and maintenance. Further, Amazon.com developed procedures for installation, service, and maintenance of the Lockers, as well as a scheduling system, that the third-party contractors were required to use. Amazon.com gave internal Amazon credentials to some of the third-party contractors and added them to Amazon.com's internal organization charts alongside employees. Thus, the court found that the third-party contractors performed their work on the Lockers on Amazon.com's behalf.
Third, the Lockers' purpose furthered Amazon.com's primary business - delivering goods to buyers. In other words, installing, servicing, and using the Lockers is integral to Amazon.com's package distribution business. The court concluded that this showed the Lockers are a place of Amazon.com's business.
Companies with equipment that is physically located in other jurisdictions should pay careful attention to this case. The court distinguished the Amazon.com Lockers from leased equipment and vending machines, in part, due to the facts discussed above. However, any company that owns large installed equipment in other jurisdictions, where such equipment is for the company's own use or benefit, and where the company maintains significant control over that equipment, may be vulnerable to 35 U.S.C. § 1400(b) venue in that jurisdiction.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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