Federal Circuit Clarifies Waiver of Venue Issue in Light of TC Heartland, but Issues Still Remain For District Courts to Address
November 30 2017
The U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods held that personal jurisdiction alone does not convey venue for patent cases under the patent venue statute. Previously, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute, 28 U.S.C. §1400(b), to allow plaintiffs to bring a patent infringement case against a domestic corporation in any district court where there is personal jurisdiction over that corporate defendant. Specifically, the patent venue statute provides that “[a]ny civil action for patent infringement may be brought in either 1) the judicial district where the defendant resides” or 2) “where the defendant has committed acts of infringement and has a regular and established place of business.” But, TC Heartland, held that a domestic corporation resides only in its state of incorporation for purposes of the patent venue statute, and not just anywhere it is subject to personal jurisdiction as had previously been the case.
Following TC Heartland, corporate defendants filed a flurry of motions to dismiss for lack of venue or, in the alternative, to transfer cases. Corporations argued they had been improperly sued in venues where they had no regular and established place of business, and where they are not incorporated and thus did not reside. But, the Supreme Court’s ruling in TC Heartland led to confusion as to whether such challenges could be made in on-going cases where the defendant had not previously raised the issue of improper venue. Specifically, Federal Rule of Civil Procedure 12(h)(1)(A), provides for waiver, based on the incorporated terms of Rule 12(g)(2), when a defendant omits an available venue defense from an initial motion to dismiss. This confusion led to widespread disagreement among District Courts on the issue.
However, in In re Micron Tech, Inc., No. 2017- 138, 2017 WL 5474215 (Fed. Cir. Nov. 15, 2017) (“In re Micron”) the Federal Circuit recently clarified that TC Heartland was a change-of-law relevant to waiver under Rule 12(g)(2) and (h)(1)(A). The Federal Circuit held that TC Heartland changed the controlling law such that at the time of an initial motion to dismiss, before the Supreme Court decided TC Heartland, a venue defense based on TC Heartland’s interpretation of the venue statute was not “available,” thus making the waiver rule of Rule 12(g)(2) and (h)(1)(A) inapplicable. In other words, the venue objection was not available until the Supreme Court decided TC Heartland because, before then, it would have been improper given controlling precedent, for a district court to dismiss or to transfer for a lack of venue.
In further explaining its reasoning, the Federal Circuit first noted “[t]he crucial condition for Rule 12(g)(2) to apply, and hence for the unmade venue objection to be waived under Rule 12(h)(1)(A), is that the venue defense had to be ‘available to the [defendant]’ when the defendant made the initial Rule 12(b) motion.” The Federal Circuit continued, “[w]here controlling law precluded the district court, at the time of the motion, from adopting a defense or objection and on that basis granting the motion, it is natural to say, in this context, that the defense or objection was not ‘available’ to the movant. The law of precedent is part of what determines what law controls. The language ‘was available’ focuses on the time of the motion in the district court, not some future possibility of relief on appeal, thus pointing toward how the district court may permissibly act on the motion at the time—i.e., where the motion is for dismissal, whether it can dismiss the case and thereby avoid wasting resources on continued litigation. Because what Rule 12(g)(2) addresses is the omission of a defense or objection from an initial motion for one of the forms of relief specified in the Rule, subsection (g)(2) is naturally understood to require the availability of that relief at the time of the initial motion (here, dismissal based on improper venue).”
Importantly, however, the Federal Circuit limited its holding to only waiver under Rule 12(g)(2) and h(1)(A), and said there are still circumstances in which a district court can find that a defendant has forfeited its venue defense. “[T]hat waiver rule, we also conclude, is not the only basis on which a district court might reject a venue defense for non-merits reasons, such as by determining that the defense was not timely presented.” For example, “nothing in the Federal Rules of Civil Procedure would preclude a district court from applying other standards, such as those requiring timely and adequate preservation, to find a venue objection lost if, for example, it was not made until long after the statutory change took effect.” Thus, the Federal Circuit concluded, “it clear that, apart from Rule 12(g)(2) and (h)(1)(A), district courts have authority to find forfeiture of a venue objection.” Moreover, the Federal Circuit also made clear it was not exploring the contours of timeliness outside Rule 12(g)(2) and (h)(1)(A), or how to assess what constitutes consent to venue, or what if any other considerations could justify a finding of forfeiture even when the defendant has not waived its objection under Rule 12(g)(2) and (h)(1)(A). In other words, the Federal Circuit limited its holding and left a number of open issues for District Courts.
Indeed, in Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED November 22, 2017, Order), a District Court in the Eastern District of Texas has already found that defendants waived their venue defense through litigation conduct in light of In Re Micron, and denied defendants’ motion to dismiss plaintiff’s patent infringement action for improper venue. In reaching its decision, the District Court first noted that the Federal Circuit in In re Micron “explained that district courts possess an inherent power to find a venue objection forfeited based on conduct or other circumstances.” The District Court then reasoned that “it was not until a few days after their IPR petitions were denied and more than two months after [TC Heartland LLC] was decided that Defendants finally sought to dismiss this case for improper venue.” The District Court continued that In re Micron “does not invite defendants who have substantially engaged in a case to reassert an abandoned defense once it becomes convenient or advantageous for them. . . . Moreover, before TC Heartland was decided . . . Defendants sought to transfer this case to the Western District of Tennessee under § 1404 rather than § 1406. This is particularly significant because a motion under § 1404 is premised on venue being proper in the transferor court whereas a motion under § 1406 reflects an objection to the current venue as being improper.” Accordingly, the District Court concluded that Defendants’ venue objection has been waived based on their own conduct, the judicial resources already expended in this case by the Court, the prejudice to Plaintiff in reopening a dormant venue dispute simply because it has become convenient for Defendants to litigate the issue now, and in light of all of these considerations taken together.
In sum, although In Re Micron clarified waiver of venue under Rule 12(g)(2) and (h)(1)(A) in light of TC Heartland, there are still a number of issues that need to be worked out at the District Court level. And, it is likely there will be differing application across District Courts until more of these issues are worked out.