P&G falls foul of SCOTUS patent venue decision

Procter & Gamble (P&G) has failed to sue an alleged patent infringer after falling foul of the US Supreme Court’s clarification on appropriate venues for litigation.

Dismissing the case, Judge Timothy Black at the US District Court for the Southern District of Ohio said his court was not the appropriate venue and that P&G should find an alternative location.

The court relied on the Supreme Court’s decision in TC Heartland v Kraft Foods, handed down in May this year. In TC Heartland the court clarified that defendants in patent infringement cases can only “reside” in the state in which they are incorporated.

Consumer goods company P&G, based in Cincinnati, Ohio, sued oral care specialist Ranir at the Ohio district court in March this year. It accused Ranir of infringing two of its patents related to tooth-whitening products.

P&G claimed the Ohio court had jurisdiction over Ranir because, although Ranir does not have a place of business in Ohio, it has “contracts to supply and has supplied” tooth-whitening strips that infringe P&G’s patents in the state and district.

Ranir, which is incorporated in both Delaware and Michigan, filed a motion to dismiss in April this year on the grounds of improper venue.

Although the Supreme Court had yet to rule on TC Heartland, P&G’s complaint relied on a 1990 ruling from the US Court of Appeals for the Federal Circuit, VE Holding v Johnson Gas Appliance.

After that ruling, Congress amended the statute on patent venue to state “[f]or purposes of venue … a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced”.

Ranir, which argued that the Supreme Court might overturn the VE Holding ruling, said in its motion to dismiss that the proceedings should be stayed until after the Supreme Court’s ruling.

In his decision, handed down on Thursday, August 17, Black said P&G originally argued that Ranir could not “rely on speculation” that the Supreme Court would overturn VE Holding, but noted that the argument fails because “we now know the Supreme Court did overrule it”.

He added: “The fact that P&G filed this case prior to the Supreme Court’s decision in TC Heartland does not mean it may proceed under an improper theory of venue.”

Black declined to transfer the case to a valid venue because he said neither party provided any evidence on potential alternative districts or any argument about why it would be in the interest of justice to transfer the case.

He added that he would allow P&G to choose a proper venue available in light of the Supreme Court’s decision in TC Heartland.