Russ v. Nike, Inc.

Background

Jamaal Russ, proceeding without a lawyer, filed what the court called a petition for cancellation of patent registration number 6,639,128. He sought an order canceling the registration based on the on-sale bar rule. He sued Nike, Inc., which he alleged was organized under Oregon law and had its principal place of business in Beaverton, Oregon.

Venue analysis

The court considered federal venue rules under 28 U.S.C. § 1391. It explained that a civil action may generally be filed where a defendant resides, where a substantial part of the events or property involved is located, or, if neither applies, where the defendant is subject to the court’s personal jurisdiction.

The court concluded that the District of Oregon was a proper venue under § 1391(b)(1) because Nike was alleged to reside in Oregon, which has one federal judicial district. Russ also alleged that Nike conducted business in the Southern District of New York, but the court said he provided no facts supporting that allegation or showing that Nike was subject to personal jurisdiction there for this action. Russ further alleged that substantial events occurred in the Southern District of New York, but the court said it was unclear whether that venue was proper because he provided no supporting facts.

Transfer ruling

Under 28 U.S.C. § 1404(a), a court may transfer a civil action to another federal district where it could have been brought when doing so would serve the convenience of the parties and witnesses and the interests of justice. The court found transfer appropriate. It reasoned that many decisions concerning the patent appeared to have occurred at Nike’s principal place of business in Beaverton and that relevant documents and witnesses could therefore be located in the District of Oregon.

The court ordered the Clerk to transfer the action to the United States District Court for the District of Oregon. It did not decide whether Russ could proceed without prepaying fees; that decision was left to the transferee court. The court directed that no summons issue from the Southern District of New York and stated that the action was closed there. It also certified that an appeal would not be taken in good faith and denied fee-free status for an appeal.

What the ruling did not decide

The order transferred the case based on venue and convenience. It did not decide whether Russ was entitled to cancellation of the patent registration or resolve the underlying patent issue.