DC is Improper Venue for Appeal of PTO Petition by Foreign Patentee

Michilin Prosperity v. Dudas (D.D.C 2007)

Michilin’s patented shredder is designed for handling both paper and CDs. Michilin’s claim 1 requires a “paper touch switch” and a “disc touch switch.” Claim 4, which depends upon claim 1, indicates a “single touch switch.”  Seeing a technical error, Michilin filed for a certificate of correction to transform claim 4 into an independent claim.  The PTO denied that request — indicating that a reissue may be the proper recourse. Michilin, a Taiwanese company, appealed the PTO’s denial to district court in the District of Columbia.

On appeal, the PTO quickly requested dismissal based on venue — arguing that the case must be brought in Virginia.

Venue Statutes:

• 28 U.S.C. § 1391(e): Actions against a US Gov’t officer acting in his official capacity must be filed in a jurisdiction where (1) the defendant resides; (2) a substantial part of the claim arises; (3) the property is located; or (4) where the plaintiff resides if no real property is at issue.
• 35 U.S.C. § 1(b): The residence of an official defendant is the “official residence” of the officer or agency.

The PTO’s Virginia headquarters is both Mr. Dudas’s official residence and the site of the denial of Michilin’s request. That, according to the court makes Virginia the only proper venue for an appeal of this case. Case transferred to E.D.Va.

Two failed arguments:

1. Dudas is also an officer in the Department of Commerce, which is located in DC. This fails because Dudas is being sued in his capacity as Director of the USPTO.
2. The patent is “located” in DC because Michilin had filed parallel patent infringement litigation in DC. This argument may have some weight, but failed here because that case had already been dismissed.

Cite: Michilin Prosperity Co. v. Dudas, 2007 U.S. Dist. LEXIS 55216 (D.D.C. July 31, 2007).