Patent Venue and Transfer Checklist: A Practical Checklist

How to use this checklist

Most venue mistakes come from doing things in the wrong order: an answer filed before anyone asked where the employees live, or a complaint filed before anyone asked who runs the website. Work through the phases in sequence, and print the ones for your side.

Phases 1 and 2 belong to the patent owner. Phases 3 through 6 belong to the accused infringer, though a patent owner should read them to anticipate the motion. Phases 7 and 8 concern both parties. Phase 9 covers special settings. Keep the two main questions separate throughout. Improper venue asks whether the case may be in this court, and the plaintiff carries the burden. Transfer asks whether it should be somewhere else, and the movant carries it.

For the reasoning behind these items, read Patent Venue After TC Heartland: Regular and Established Places of Business, Foreign Defendants, and Transfer. For sample language and worked scenarios, see Choosing or Challenging Venue in a Patent Case: A Practical Guide. For templates, use Patent Venue Toolkit: Venue Discovery, Rule 12(b)(3) Motions, and Section 1404 Transfer Papers. Check the current local rules and general orders of the court involved, since assignment and scheduling practices change more quickly than the case law.

Phase 1: Before filing, map the defendants and the forum (patent owner)

• List every potential defendant as a separate legal entity. Venue must be shown as to each one. Andra Group, LP v. Victoria's Secret Stores, LLC, 6 F.4th 1283 (Fed. Cir. 2021). Note: Record who makes, sells, operates, and hosts the accused product. A shared brand name proves little.
• Confirm each entity's state of incorporation or organization from official filings. A domestic corporation resides only there. TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. 258 (2017). Note: TC Heartland left unincorporated entities open. For an LLC, check how judges in the forum have treated the state of organization.
• For multi-district states, pinpoint the single district of residence. It is the district of the principal place of business in the state, and failing that, the registered office. In re BigCommerce, Inc., 890 F.3d 978 (Fed. Cir. 2018).
• Separate foreign entities. A foreign corporation has no venue defense and may be sued in any district, subject to personal jurisdiction. In re HTC Corp., 889 F.3d 1349 (Fed. Cir. 2018); 28 U.S.C. § 1391(c)(3). Note: Natural persons who are lawful permanent residents are treated differently under § 1391(c)(1). HTC describes this as the one clear change Congress made in 2011.
• For each desired non-home district, list the candidate physical place. The address must exist in the district. In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017). Note: A website, virtual presence, or electronic communication will not qualify.
• Confirm that the place is regular and established. Look for steady operation and permanence, not a trade show or single project. Cray.
• Confirm that the place is the defendant's own. Look for ownership, lease, or possession and control, conditioning employment on residence, storing materials for distribution, and the defendant's public statements. Cray.
• Identify the employee or agent regularly conducting the defendant's business there. In re Google LLC, 949 F.3d 1338 (Fed. Cir. 2020). Note: Maintenance and one-time installation do not count as conducting the business under Google. The business means production, storage, transport, and exchange of goods or services.
• Test any agency theory for interim control. Standards and quality terms are not enough. In re Volkswagen Group of America, Inc., 28 F.4th 1203 (Fed. Cir. 2022).
• Test any affiliate theory for corporate separateness. One affiliate's place is not imputed to another where separateness is maintained. Andra; Celgene Corp. v. Mylan Pharmaceuticals Inc., 17 F.4th 1111 (Fed. Cir. 2021).
• Identify a good-faith act of infringement in the district. The merits are not decided at this stage. In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985).
• Flag method-only cases. District judges disagree on whether one step in the district suffices. SEVEN Networks, LLC v. Google LLC, 315 F. Supp. 3d 933 (E.D. Tex. 2018); NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005); In re Comcast Cable Communications, LLC, No. 2026-104 (Fed. Cir. Dec. 9, 2025) (nonprecedential). Note: The Federal Circuit denied both mandamus and rehearing en banc in Comcast, so appellate risk continues through judgment.
• Do not expect the place to relate to the accused product. No causal connection is required. In re Monolithic Power Systems, Inc., 50 F.4th 157 (Fed. Cir. 2022), n.1.
• Check who will likely hear the case. Read current general orders on assignment. Note: New Waco patent cases have been randomly assigned among Western District judges since the July 25, 2022 order, and the court issued a further patent assignment order on May 30, 2024, and Judge Albright left the bench effective August 31, 2026. The Judicial Conference's March 12, 2024 policy addresses cases seeking to bar or mandate state or federal action.

Red flag: Your venue theory depends on a sales representative working from home with reimbursed phone and internet. Cray rejected that on stronger numbers than most plaintiffs have.

Red flag: Your theory depends on independent dealers, distributors, or a contractor's facility and you have no evidence of day-to-day control. Start with Volkswagen and In re ZTE (USA) Inc., 890 F.3d 1008 (Fed. Cir. 2018).

Phase 2: Stress-test and plead (patent owner)

• Outline the defendant's likely § 1404(a) motion before filing. The statute applies even when venue is proper. 28 U.S.C. § 1404(a).
• List real connections between the forum and this dispute. The local interest factor looks to the events giving rise to the suit, not general presence. In re Apple Inc., 979 F.3d 1332 (Fed. Cir. 2020); In re Juniper Networks, Inc., 14 F.4th 1313 (Fed. Cir. 2021).
• Avoid manufactured ties. Recent offices, document moves, and new entities get little or no weight, and can be disregarded. In re Microsoft Corp., 630 F.3d 1361 (Fed. Cir. 2011); In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Samsung Electronics Co., 2 F.4th 1371 (Fed. Cir. 2021).
• If the client does not compete in a market, do not rest on trial speed. In re Google LLC, 58 F.4th 1379 (Fed. Cir. 2023).
• Plead facts about the place, the defendant's control, and the people. Parroting § 1400(b) fails. Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378 (Fed. Cir. 2019). Note: Drafting a Complaint That Survives a Motion to Dismiss covers plausibility generally.
• Document your Rule 11 basis. Keep dated captures of web pages, postings, and filings.
• Plead personal jurisdiction separately for each defendant. Venue will not supply it. For foreign entities, plead Rule 4(k)(2) in the alternative. Synthes (U.S.A.) v. G.M. Dos Reis Jr. Ind. Com. de Equip. Medico, 563 F.3d 1285 (Fed. Cir. 2009).
• Check joinder. Unrelated accused infringers may not be joined based only on infringing the same patent. 35 U.S.C. § 299.
• Plan service. 28 U.S.C. § 1694 permits service on an agent at the regular and established place of business of a nonresident. Foreign service may take months under Rule 4.
• Calendar and research any fallback. Know where you would ask a court to transfer if venue fails. 28 U.S.C. § 1406(a).

Phase 3: The first days after service (accused infringer)

• Calendar the response date. Ordinarily 21 days after service, or 60 days from the request if service was waived. Rule 12(a); Rule 4(d). Note: If the date has passed, see Missed Federal Deadlines: Rule 6, Excusable Neglect, and the Deadlines a Court Cannot Excuse before doing anything else.
• Send a litigation hold that reaches HR, payroll, facilities, IT, and sales operations. The usual technical custodians will not hold the venue evidence. Litigation Holds, Spoliation, and Rule 37(e): Preserving Electronic Evidence Before It Costs You the Case explains the obligations.
• Stop informal statements about venue. Instruct staff not to discuss where employees work with outsiders.
• Identify which entity was served and which does what. If the wrong one is named, consider how that affects both venue and the merits. Andra.
• Ask whether a foreign parent or affiliate is named. It has no venue objection, though it may still have Rule 12(b)(2) and § 1404(a) arguments. HTC.
• Do not file anything under Rule 12 until the venue decision is made. Fed. R. Civ. P. 12(g)(2) and (h)(1).
• If you need time, reserve your defenses in the stipulation. Forfeiture is discretionary, so make it clear you are not submitting to the forum. In re Micron Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017).
• Avoid changing facts. Do not close offices or move employees in reaction to the suit without advice. The timing rule is unresolved. Google, 949 F.3d 1338, n.1.

Red flag: Someone proposes "just answering to buy time." An answer without the defense waives it unless amended in time. Rule 12(h)(1)(B).

Phase 4: The footprint audit (accused infringer)

Run this under counsel's direction, and draw facts from records.

• Residence. Confirm incorporation and, in a multi-district state, principal place of business and registered office. BigCommerce.
• Facilities. Leases, subleases, coworking, labs, storage, showrooms, retail space, and data center cages in the district. Cray; Google.
• Headcount. Pull employees and contractors by home address from payroll for the filing date and the alleged infringement period. Celgene.
• Location conditions. Search postings, offer letters, territory assignments, and relocation terms for any requirement to live or stay in the district. Cray. Note: Celgene gave an undated posting little weight, but a clear written requirement is a different kind of evidence.
• Payments. Rent, stipends, and reimbursements, and whether they depend on location. Cray treated general reimbursement for phone and internet as insufficient.
• Materials at homes. Inventory, samples, lab equipment, tools, and whether they are required to be kept there. Monolithic Power; Celgene.
• Public statements. Website, directories, signage, business cards, marketing. Cray; Celgene.
• Actual business. Holding out is insufficient unless business is actually done at the place. Cray; Andra.
• Vendors and dealers. Review contracts for interim control, location choice, and movement rights. ZTE; Volkswagen.
• Infrastructure. Identify owned equipment in the district, the host, and who touches it. Google. Note: Google reserved whether a machine alone could ever suffice, so an unstaffed site reduces risk without eliminating it.
• Compare with other locations. A company built around home offices looks different from one with a few remote staff. Cray, n.*.
• Corporate formalities. If affiliates are involved, confirm separate employees, contracts, and books. Andra; Celgene.
• Accused activity in the district. Sales, use, testing, or method steps, for the "acts of infringement" part.
• Candidate transferee districts. Identify where the case might have been brought as to every defendant. Hoffman v. Blaski, 363 U.S. 335 (1960).

Red flag: A job posting says "must reside near [city]" and a home office holds company equipment used for local customers. You are close to Monolithic Power, and a loss may not be reviewable before trial.

Phase 5: Preserving and filing the objection (accused infringer)

• Put every available Rule 12(b)(2) through (5) defense in the first Rule 12 motion. Omitting one waives it. Fed. R. Civ. P. 12(g)(2), (h)(1)(A). Note: Motions to Dismiss Under Rule 12: A Practical Guide for Plaintiffs and Defendants covers how to consolidate them with Rule 12(b)(6).
• If no motion is filed, include improper venue in the answer. Rule 12(h)(1)(B). A timely amendment as of course under Rule 15(a)(1) can add it.
• Do not admit venue in the answer without a deliberate decision. In re Oath Holdings Inc., 908 F.3d 1301 (Fed. Cir. 2018), excused an admission paired with a reservation only because of the TC Heartland change in law.
• Move promptly, and press the motion. Courts may find forfeiture for untimeliness or consent even without Rule 12 waiver. Micron; 28 U.S.C. § 1406(b); Dietz v. Bouldin, Inc., 579 U.S. 40 (2016).
• Avoid wait-and-see. Micron identifies it as an obvious starting point for forfeiture.
• State the burden correctly. Federal Circuit law governs and the plaintiff bears the burden on § 1400(b). ZTE.
• Challenge conclusory pleading. Westech; Ashcroft v. Iqbal, 556 U.S. 662 (2009).
• Attack each requirement separately. If any one fails, venue is improper. Cray.
• Support the motion with a declaration from someone who knows the records. Tie each paragraph to a Cray consideration and to the filing date.
• Say what relief you want. Dismissal or transfer to a named district. § 1406(a).
• Add an alternative § 1404(a) request, and make clear that improper venue should be decided first. ZTE shows the confusion that can result from a court taking them out of order.

Phase 6: Venue discovery (both parties)

• Confirm that discovery is warranted by a genuine fact dispute. Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340 (1978). Matthews's Annotated Patent Digest collects decisions granting and denying venue discovery.
• Plaintiff: tailor written discovery to the Cray and Google requirements. Rule 33; Rule 34; Rule 36.
• Plaintiff: take the declarant and a Rule 30(b)(6) witness on places, people, and control.
• Defendant: propose a limited schedule in writing. Time window, entity, district, number of requests, hours.
• Defendant: seek a protective order for employee home addresses. Rule 26(c). See Negotiating a Protective Order and Filing Under Seal: A Practical Guide.
• Defendant: put a Rule 502(d) order in place before HR and legal files are searched. See Rule 502 and Inadvertent Production: Waiver, Clawback Agreements, and Why Every Case Needs a 502(d) Order.
• Prepare the corporate witness. See Preparing a Witness for Deposition: What Is Proper, What Is Coaching, and What the Other Side Can Discover.
• Both: raise sequencing of merits discovery. In re Apple Inc., 52 F.4th 1360 (Fed. Cir. 2022), requires venue discovery to proceed immediately and the transfer decision to come first, but does not decide how much merits discovery may continue.
• Both: keep it short. Celgene took two years, and most clients do not want that.

Red flag: A plaintiff's evidence after discovery consists of rosters, business cards, and LinkedIn profiles. Celgene found that too speculative.

Phase 7: Transfer under § 1404(a) (both parties)

• Identify the governing regional test. Regional law applies. In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008). For Delaware, see Jumara v. State Farm Insurance Co., 55 F.3d 873 (3d Cir. 1995).
• Fifth Circuit: state the standard. The movant must show the transferee venue is clearly more convenient. In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (en banc).
• Fifth Circuit: prove significant, actual gains. In re Clarke, 94 F.4th 502 (5th Cir. 2024).
• Threshold: show the case might have been brought there, as to every defendant. Blaski; Samsung.
• File early. The motion should be decided first. Apple (2020); In re Horseshoe Entertainment, 337 F.3d 429 (5th Cir. 2003).
• Sources of proof: name evidence, custodians, and access limits. In re TikTok, Inc., 85 F.4th 352 (5th Cir. 2023); Juniper; In re Toyota Motor Corp., 747 F.3d 1338 (Fed. Cir. 2014). Note: Evidence stored elsewhere does not weigh against transfer. Electronic storage does not eliminate the factor.
• Compulsory process: list nonparties in subpoena range. Rule 45(c); In re Google LLC, No. 2026-157 (Fed. Cir. Oct. 6, 2026) (nonprecedential).
• Willing witnesses: identify by name, role, knowledge, and location. In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re SAP America, Inc., 133 F.4th 1370 (Fed. Cir. 2025). Note: The movant need not prove someone will testify, but it must explain what relevant knowledge the person has.
• Do not accept categorical discounts of employees or prior-art witnesses. Juniper; Samsung; In re Hulu, LLC, No. 2021-142, 2021 WL 3278194 (Fed. Cir. Aug. 2, 2021) (nonprecedential).
• Practical problems: analyze overlap in other cases. In re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010); Google (2023); SAP.
• Court congestion: focus on the docket, not a schedule. Juniper; SAP; In re Planned Parenthood Federation of America, Inc., 52 F.4th 625 (5th Cir. 2022).
• Local interest: tie it to where the accused features and alleged wrongs arose. Apple (2020); Defense Distributed v. Bruck, 30 F.4th 414 (5th Cir. 2022).
• Do not use post-motion progress as a reason to deny. TikTok; SAP.
• Intra-district moves: remember divisions are covered too. SAP treated a Marshall to Sherman request under § 1404(a). In re Radmax, Ltd., 720 F.3d 285 (5th Cir. 2013), is the Fifth Circuit's intra-district writ.
• Check any forum-selection clause. It is enforced through § 1404(a), not Rule 12(b)(3). Atlantic Marine Construction Co. v. United States District Court, 571 U.S. 49 (2013). Forum Selection, Transfer, and Parallel Proceedings: Choosing and Keeping the Court You Want covers clauses generally.

Red flag: Your transfer motion says "the majority of documents are in California" with no names, custodians, or categories. Compare Juniper, where a declaration listed categories, with SAP, where the movant identified no specific evidence or custodians.

Red flag: An opposition relies on the defendant's large office in the forum. Ask whether anyone there touched the accused feature. TikTok and Google (2026) both looked past offices unconnected to the case.

Phase 8: After the ruling (both parties)

• Denial of § 1404(a): decide on mandamus within days. Cheney v. United States District Court, 542 U.S. 367 (2004); 28 U.S.C. § 1651; Fed. R. App. P. 21. Interlocutory Appeals and Mandamus: Getting Appellate Review Before Final Judgment explains the general standard.
• Denial of § 1406: assume appeal after judgment is the remedy unless a basic, recurring legal question is presented. HTC; Comcast; Monolithic Power.
• Check whether the question has divided district courts. Google; Volkswagen.
• Do not rely on expense alone. In re BP Lubricants USA Inc., 637 F.3d 1307 (Fed. Cir. 2011).
• Consider reconsideration, but do not let it consume the window. It can be excused as futile. BigCommerce; Apple (2022).
• Seek a stay in the district court first, then in the Federal Circuit if necessary. See Interlocutory Review Toolkit: 1292(b) Certifications, Rule 54(b) Judgments, and Mandamus Petitions for templates.
• If transfer is granted and you oppose it, seek a stay immediately. Clarke shows a file can leave the same day.
• Preserve § 1400(b) in the answer and any later filings. A preserved objection can lead to vacatur after judgment. HTC.
• Plaintiff: choose between refiling and transfer carefully. The six-year damages lookback under 35 U.S.C. § 286 can make dismissal costly.
• Check the transferee court's local patent rules and reset deadlines.

Red flag: A petition for mandamus attacks a fact-bound ruling about employee homes. Monolithic Power denied such a petition and did not reach the merits.

Phase 9: Special settings

Foreign defendants

• Confirm the defendant is not a U.S. resident. § 1391(c)(3); HTC; Brunette Machine Works, Ltd. v. Kockum Industries, Inc., 406 U.S. 706 (1972).
• Analyze personal jurisdiction separately. Rule 4(k)(2); M-I Drilling Fluids UK Ltd. v. Dynamic Air Ltda., 890 F.3d 995 (Fed. Cir. 2018). See Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor.
• Remember that the American subsidiary keeps its § 1400(b) defense. HTC.

Hatch-Waxman

• Locate where the ANDA was prepared and submitted. Venue for a domestic filer lies only where acts related to the submission occurred. Valeant Pharmaceuticals North America LLC v. Mylan Pharmaceuticals Inc., 978 F.3d 1374 (Fed. Cir. 2020).
• Do not rely on a notice letter sent to the forum or on future sales. Celgene; Valeant.
• Check the 45-day clock before picking a forum. 21 U.S.C. § 355(j). Consider protective suits, as in Valeant. Paragraph IV and ANDA Litigation Checklist: A Practical Checklist has the full sequence.

Declaratory judgment actions

• Use § 1391, not § 1400(b). VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990).
• Confirm a case or controversy and jurisdiction over the patent owner. MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007); Trimble Inc. v. PerDiemCo LLC, 997 F.3d 1147 (Fed. Cir. 2021). Declaratory Judgment Checklist: A Practical Checklist has the fuller list.
• Prepare for the first-to-file dispute. Micron Technology, Inc. v. MOSAID Technologies, Inc., 518 F.3d 897 (Fed. Cir. 2008).
• For a foreign patentee, check 35 U.S.C. § 293. It provides for suit in the Eastern District of Virginia where no agent is designated or the agent cannot be found. 35 U.S.C. § 293.

Multiple defendants and customers

• Run venue separately for each. Andra.
• Consider severance and consolidation. § 299; Rule 21.
• Consider the customer-suit exception. In re Nintendo of America, Inc., 756 F.3d 1363 (Fed. Cir. 2014).
• Recognize the limits of multidistrict centralization. Lexecon Inc. v. Milberg Weiss Bershad Hynes & Lerach, 523 U.S. 26 (1998).

This checklist is general information for organizing the work and cannot account for your facts or your court's latest orders, so have counsel confirm how it applies before you act on it.

Related Documents

Related Articles

• Patent Venue After TC Heartland: Regular and Established Places of Business, Foreign Defendants, and Transfer: the reasoning and leading cases behind each item.
• Forum Selection, Transfer, and Parallel Proceedings: Choosing and Keeping the Court You Want: forum clauses and parallel proceedings.
• Interlocutory Appeals and Mandamus: Getting Appellate Review Before Final Judgment: the law of the writ.
• Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor: personal jurisdiction over foreign defendants.
• Inter Partes Review Strategy: Discretionary Denial, Estoppel, and the Parallel District Court Case: how forum schedules affect Patent Office review.
• Missed Federal Deadlines: Rule 6, Excusable Neglect, and the Deadlines a Court Cannot Excuse: consequences of a missed response deadline.
• Preparing a Witness for Deposition: What Is Proper, What Is Coaching, and What the Other Side Can Discover: preparing a venue declarant for deposition.
• Rule 502 and Inadvertent Production: Waiver, Clawback Agreements, and Why Every Case Needs a 502(d) Order: protecting privilege during fast venue discovery.

Related Guides

• Choosing or Challenging Venue in a Patent Case: A Practical Guide: the narrative version, with sample language and worked scenarios.
• Motions to Dismiss Under Rule 12: A Practical Guide for Plaintiffs and Defendants: consolidating defenses in a first motion.
• Filing or Defending a Declaratory Judgment Action: A Practical Guide: suing first as an accused infringer.

Related Checklists

• Venue and Transfer Checklist: A Practical Checklist: general federal venue and transfer tasks.
• Interlocutory Appeal Checklist: A Practical Checklist: appellate review before final judgment.
• Declaratory Judgment Checklist: A Practical Checklist: declaratory judgment tasks.
• Paragraph IV and ANDA Litigation Checklist: A Practical Checklist: generic drug litigation tasks.

Related Toolkits

• Patent Venue Toolkit: Venue Discovery, Rule 12(b)(3) Motions, and Section 1404 Transfer Papers: the working papers that go with this checklist.
• Interlocutory Review Toolkit: 1292(b) Certifications, Rule 54(b) Judgments, and Mandamus Petitions: templates for writs and other interlocutory review.