Summary of PKWare v. Meade, U.S. District Court, Eastern District of WI (2000)
Cause of action: The following is a cause of action for nine separate federal and state claims against both DF and his corporation; DF’s moved to dismiss for lack of personal jurisdiction and improper venue, or in the alternative to transfer venue to Southern District of OH.
Procedural History: Trial court found WI’s long arm statute incorporated due process standards and that the cause of action arose out of both DF’s continuous and systematic business contacts with the forum state; statutory and constitutional requirements for exercising personal jurisdiction over each DF were satisfied. In this court, Meade’s motion to dismiss is granted.
Facts: Meade is an OH resident who translates and sells software. PL is the company to which DF had some business dealings with. 9/92: PL and DF entered into business K. In 1993, DF incorporated his business and changed the name to ASI. PL alleges DF purported to assign his rights and duties under the agreement to ASI. DF and PL negotiated a royalty agreement. The agreement by both parties were stipulated to be governed by WI law.
Issue(s): Under federal law of civil procedure, may PL’s causes of action for various state and federal claims be brought to federal court when the DF and his corporation reside in OH an do business there?
Under federal law of civil procedure, may patent infringement claims be brought in the state in which other state and federal charges were taken?
Court’s Rationale/Reasoning: BOP of showing that venue is proper is on PL. For venue to lie it must be proper as to both DF’s and as to all claims. The court, in applying the rule, looked to the actions of the DF, as the determination is a federal issue whose answer depends on federal law.
After applying the substantial part test of 1391(b) to the facts, they agreed that (1) PL’s state law and trademark claims were relevant to the suit, as were (2) the federal copyright claims, (3) patent infringement claim, and (4) claim against ASI to all be fine under the law (claim vs. ASI depended upon where it might be subject to PJ when the action was commenced). However, the court was not pleased with PL’s claims against Meade.
Venue for Meade is only proper be/c it does not apply to the “resides” clause of 1400(b) [patent and copyright law claims], and wouldn’t lie under 1400(b) unless DF committed the acts in question there, and had a regular and established place of business. PL’s request for pendent venue is denied, for the court is reluctant to address patent claims within pendent venue.
Rule: Doctrine of pendent venue: venue may be proper in more than one district as long as a “substantial” part of the key events or omissions occurred in the district. (28 U.S.C. §1391(b)(2)). Generally, pendent venue will be applied if a court may also exercise supplemental jurisdiction. However, patent claims are state specific.
Holding: Yes. As long as there is a substantial part of key events or omissions which occurred in the district in question, pendent venue jurisdiction does apply.
No. Patent infringement claims are state specific, and thus may not be attached to any other state claims for reasons of convenience.