Technology Licensing Corporation v. Pelco, Inc.

Filing 11

MEMORANDUM Order Signed by the Honorable Milton I. Shadur on 12/7/2011:Mailed notice(srn, )

IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION
TECHNOLOGY LICENSING
CORPORATION,
Plaintiff,
v.
PELCO, INC.,
Defendant.

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No.

11 C 8544

MEMORANDUM ORDER
This patent infringement action by Technology Licensing
Corporation (“Technology”) has just been reassigned to this
Court’s calendar as the result of the exercise by its colleague
Honorable Marvin Aspen of his 28 U.S.C. §294(b)1 prerogative as a
senior judge.

Although this Court’s usual procedure with all

newly-assigned cases is to issue an initial scheduling order, its
threshold examination of the Original Complaint for Patent
Infringement has identified a threshold problem that should be
addressed.
Complaint ¶2 seeks to invoke both Sections 1391 and 1400(b)
as the predicate for bringing suit against Pelco, Inc. (“Pelco”)
in this judicial district.

But more than a half century ago

Fourco Glass Co. v. Transmirra Corp., 353 U.S. 222, 224-29 (1957)
reconfirmed the even-earlier-established principle that the
limited provision in Section 1400(b) “is the sole and exclusive

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All further references to Title 28’s provisions will
simply take the form “Section--.”

provision controlling venue in patent infringement actions” (id.
at 229), trumping the general venue provisions of Section 1391--a
proposition again reconfirmed (en passant) in Brunette Mach.
Works, Ltd. v. Kockum Indus., Inc., 406 U.S. 706, 711-13 (1972).
Here then are the venue limitations imposed by Section 1400(b):
Any civil action for patent infringement may
in the judicial district where the defendant
or where the defendant has committed acts of
ment and has a regular and established place
business.

be brought
resides,
infringeof

What is critical to the first Section 1400(b) alternative is
that under that statute a defendant “resides” only in its state
of incorporation (see, e.g., Dual Mfg. & Eng’g, Inc. v. Burris
Indus., Inc., 531 F.2d 1382, 1385 (7th Cir. 1976), relying both
on Fourco and on the even more hoary precedent of Shaw v. Quincy
Mining Co., 145 U.S. 444 (1892)).

On that score Complaint ¶4

alleges that Pelco is a Delaware corporation, which eliminates
that first alternative for bringing suit here.
As for Section 1400(b)’s second alternative, the Complaint
says nothing at all about Pelco’s commission of acts of
infringement in this judicial district, and the Complaint ¶4
reference to “an address of 1415 South Roselle Road, Palatine,
Illinois” falls short of identifying that location as “a regular
and established place of business.”

Both of those ingredients

are essential to that alternative basis for venue in this
district, and so Technology has not brought itself within the

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statute’s terms.

What has been said here is not of course jurisdictional (see
Section 1406(b)), but it unquestionably demonstrates that
Technology’s counsel have chosen the wrong place to bring suit.
To avoid a waste of time and resources, this Court sets a status
hearing at 8:45 a.m. December 14, 2011 (or if that is too early
to make the arrangements with Pelco described in the next
sentence, then at 8:45 a.m. December 20) to discuss whether this
action is to remain in this District Court.

Technology’s counsel

is ordered to take whatever steps may be necessary to alert Pelco
to the need to have counsel representing it present (or available
telephonically, pursuant to advance notice to this Court’s minute
clerk) at that status hearing, even though Pelco need not have
filed any responsive pleading or motion by that date.

________________________________________
Milton I. Shadur
Senior United States District Judge
Date:

December 7, 2011

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