Professor John F. Duffy Helps Bring 'Forum Shopping' Case to Supreme Court

John Duffy

Professor John F. Duffy, a patent law expert, is the Samuel H. McCoy II Professor of Law, and the Elizabeth D. and Richard A. Merrill Professor of Law at UVA.

December 16, 2016

On Wednesday, the U.S. Supreme Court granted certiorari in a case being litigated by University of Virginia School of Law professor John F. Duffy that could change where patent infringement cases may be heard. The case, TC Heartland LLC v. Kraft Food Brands Group LLC, could substantially curtail so-called "forum shopping," the practice that allows plaintiffs to file lawsuits in courts viewed as favorable to their case.

Duffy, a patent law expert, and a team of lawyers representing the petitioner in the case, TC Heartland, are arguing that, under a 1957 precedent of the Supreme Court, patent venue is controlled by a specific federal statute that limits the districts in which a patent infringement suit can be brought. Under the approach articulated in that Supreme Court precedent, venue in the Heartland case is proper only in the Southern District of Indiana, which is where the defendant Heartland has its corporate headquarters.   

The plaintiff in the case, Kraft Foods, brought the suit in the District of Delaware, which is Kraft’s state of incorporation. Heartland sought to change venue to the Southern District of Indiana but the district court relied on Federal Circuit precedent to reject Heartland’s request. Heartland appealed, and in a March 11 argument before the U.S. Court of Appeals for the Federal Circuit, Duffy argued that the Federal Circuit should follow the approach set forth in the Supreme Court’s 1957 decision. The court rejected Duffy’s argument and reaffirmed its own precedent, which permits venue wherever a federal court would have personal jurisdiction over a defendant company, not just where the company is headquartered or has a regular place of business. The justices will now mull how the federal patent venue statute should be interpreted.

In its filings at the Supreme Court, TC Heartland has argued the Federal Circuit’s interpretation of the patent venue statute has produced a "plague of forum shopping.”

Dell Inc., the American Bankers Association, 56 law and economics professors and Paul R. Michel '66, a retired chief judge of the Federal Circuit who presided over numerous influential patent law decisions, were among those who submitted briefs of amici in support of Heartland's petition.

Duffy brings distinguished expertise to the case. In the field of intellectual property, he has been identified as one of the 25 most-influential people in the nation by The American Lawyer and one of the 50 most influential people in the world by the U.K. publication Managing Intellectual Property. He has long been influential in important patent cases. In 2007, he was co-counsel for the prevailing petitioner in the Supreme Court case KSR v. Teleflex, which was the first Supreme Court case in decades on the standard of patentability. In 2008, the U.S. Court of Appeals for the Federal Circuit invited him to present oral argument in an important en banc case, In re Bilski, concerning whether novel business methods could be patented.

Duffy is the Samuel H. McCoy II Professor of Law, and the Elizabeth D. and Richard A. Merrill Professor of Law at UVA. He is the co-author of the casebook, “Patent Law and Policy: Cases and Materials.”

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