1. Jared Bobrow Advanced Patent Law Institute
Forfeiture of Improper-Venue Challenges Following In re Micron Technology, Inc.
Jared Bobrow Advanced Patent Law Institute
December 14, 2017

2. TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct
1990: VE Holding (Fed. Cir.) held that proper venue in patent cases extends as far as personal jurisdiction.
Ensuing 27 years: Federal Circuit and district courts uniformly followed VE Holding.
2017: TC Heartland (S. Ct.) abrogated VE Holding and revived the venue holding in Fourco (1957), which limited corporate “residence” in §1400(b) to a defendant’s state of incorporation.
Immediate Effect: Many patent cases were venued where defendants did not have “a regular and established place of business.”

3. Motions to Dismiss and Transfer Venue Following TC Heartland
Following TC Heartland, dozens of defendants in cases across the country filed motions to dismiss or transfer for improper venue under Federal Rule 12(b)(3).
Plaintiffs opposed on the ground that defendants could not challenge venue because the challenge had been waived.
Defendants responded that the venue challenge was not “available” prior to TC Heartland because TC Heartland changed the law.
Plaintiffs replied that TC Heartland did not change the law because it merely affirmed Fourco.

4. District Courts Split on Whether Improper-Venue Motions Following TC Heartland Are Excepted from Waiver
The majority of courts held there was waiver because, prior to TC Heartland, the venue challenge was available under Fourco, which VE Holding did not (and could not) overrule.
See, e.g., Realtime Data LLC v. Carbonite, Inc., No. 6:17-CV-121 RWS-JDL, 2017 WL (E.D. Tex. Aug. 21, 2017); Aralez Pharms. Inc. v. Teva Pharms. USA, Inc., No. 2:17-CV JRG-RSP, 2017 WL (E.D. Tex. Aug. 10, 2017), adopting WL (E.D. Tex. July 17, 2017); Tinnus Enters., LLC v. Telebrands Corp., No. 6:15-CV-551-RC, 2017 WL (E.D. Tex. Aug. 8, 2017); Diem LLC v. BigCommerce, Inc., No. 6:17-CV-186-JRG-JDL, 2017 WL (E.D. Tex. July 26, 2017); Orthosie Sys. LLC v. Actsoft, Inc., No. 4:16-CV-00873, 2017 WL (E.D. Tex. July 25, 2017); McRo, Inc. v. Valve Corp., No. SACV GW(FFMx), 2017 WL (C.D. Cal. July 24, 2017); Skyhawke Techs., LLC v. DECA Int’l Corp., No. 3:10-cv-708-TSL-RHW, 2017 WL a (S.D. Miss. July 21, 2017); Koninklijke Philips NV v. AsusTek Comp. Inc., No. 1: GMS, 2017 WL (D. Del. July 19, 2017); Fox Factory, Inc. v. SRAM, LLC, Nos. 3:16-cv WHO, 3:16- cv WHO, 2017 U.S. Dist. LEXIS (N.D. Cal. July 18, 2017); Reebok Int’l Ltd. v. TRB Acquisitions LLC, Civ. No , 2017 WL , at *3 (D. Ore. July 14, 2017); Navico, Inc. v. Garmin Int’l, Inc., Civ. No , 2017 WL , at *2 (E.D. Tex. July 11, 2017); Infogation Corp v. HTC Corp., Civ. No , 2017 WL , at *4 (S.D. Cal. July 5, 2017); Amax, Inc. v. ACCO Brands Corp., Civ. No , 2017 WL , at *3 (D. Mass. June 29, 2007); Chamberlain Grp., Inc. v. Techtronic Indus. Co., Case No. 16-CV-6097, 2017 WL (N.D. Ill. June 28, 2017); iLife Techs., Inc. v. Nintendo of Am., Inc., Civ. No , 2017 WL , at *5-7 (N.D. Tex. June 27, 2017); Elbit Sys. Land v. Hughes Network Sys., LLC, No. 2:15-CV-00037, 2017 WL , at *18 (E.D. Tex. June 20, 2017); Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2:15-CV HCM-LRL, 2017 WL (E.D. Va. June 7, 2017).

5. District Courts Split on Whether Improper-Venue Motions Following TC Heartland Are Excepted from Waiver
Some courts held there was no waiver because, prior to TC Heartland, the venue challenge was precluded by VE Holding.
See, e.g., See Boston Sci. Corp. v. Cook Grp. Inc., No LPS-CJB, 2017 WL , at *5-10 (D. Del. Sep. 11, 2017); Simpson Performance Prods., Inc. v. Mastercraft Safety, Inc., No. 5:16-cv RLV-DCK, 2017 WL , at *5-7 (W.D.N.C. Aug. 22, 2017); Maxchief Invs. Ltd. v. Plastic Dev. Grp., LLC, No. 3:16-cv-63, 2017 WL , at *3-4 (E.D. Tenn. Aug. 14, 2017); Cutsforth, Inc. v. LEMM Liquidating Co., LLC, No. 12-cv-1200(SRN/LIB), 2017 WL (D. Minn. Aug. 4, 2017); IPS Grp., Inc. v. CivicSmart, Inc., No. 3:17-cv-0632-CAB-(MDD), ECF No. 65 (S.D. Cal. Aug. 1, 2017); CG Tech. Dev., LLC v. Fanduel, Inc., No , 2017 WL , at *1-2 (D. Nev. July 27, 2017); OptoLum, Inc. v. Cree, Inc., No. 16-cv-3828, WL , at *3-*5 (D. Ariz. July 24, 2017); Hand Held Prods., Inc. v. Code Corp., No , 2017 WL , at *3 (D.S.C. July 18, 2017); Westech Aerosol Corp. v. 3M Co., No , 2017 WL , at *2 (W.D. Wash. June 21, 2017); Fusilamp, LLC v. Littelfuse, Inc., No CIV-ALTONAGA, 2017 WL (S.D. Fla. June 12, 2017).

6. In re Micron Technology, Inc., No. 2017-138, 2017 WL 5474215 (Fed. Cir. Nov. 15, 2017)
The Federal Circuit held:
VE Holding was controlling precedent that precluded Micron’s venue challenge before TC Heartland.
The Supreme Court changed the controlling law in TC Heartland.
Micron’s venue challenge was not “available” under Rule 12(g)(2), so the Rule 12(h)(1) waiver rule does not apply.

7. In re Micron Technology, Inc., No. 2017-138, 2017 WL 5474215 (Fed. Cir. Nov. 15, 2017)
But the Federal Circuit also held:
A district court may find “forfeiture” of a venue challenge apart from Rule 12(h)(1).
The authority to find forfeiture must be exercised within the two-principle “framework” of Dietz v. Bouldin, Inc., 136 S. Ct. 1885, 1891 (2016):
exercise of inherent power must be a reasonable response to a specific problem; and
the power cannot contradict any express rule or statute.

8. In re Micron Technology, Inc., No. 2017-138, 2017 WL 5474215 (Fed. Cir. Nov. 15, 2017)
The Federal Circuit provided only “observations” on considerations that may be relevant to forfeiture:
“Timeliness,” where the objection is presented “close to trial”
“Consent” to venue
“Tactical wait-and-see bypassing of an opportunity to declare a desire for a different forum, where the course of proceedings might well have been altered by such a declaration”

9. Possible “Forfeiture” Considerations for pre-TC Heartland Cases
Timeliness
What is the stage of the case: have the parties completed substantial fact and expert discovery; have the parties briefed and has the court decided claim construction and summary judgment; is it close to trial?
Consent or submission
Has the defendant expressly or impliedly consented to venue by some affirmative act or omission?
Has the defendant requested decisions on the merits?
Has the defendant filed counterclaims in the venue?
Tactics
E.g., “wait-and-see approach”

10. Possible “Forfeiture” Considerations for pre-TC Heartland Cases
Fairness
Could the challenge have been raised earlier, or would applying waiver unfairly demand clairvoyance?
Prejudice
Would the plaintiff be unfairly prejudiced if venue were transferred?
Notice
Had the defendant given any notice of its intention to challenge venue?
Judicial economy
E.g., has the court decided claim construction and pre-trial motions?

11. Possible “Forfeiture” Considerations for post-TC Heartland Cases
Defendants with genuine venue objections should challenge venue in their “first defensive move” through a Rule 12(b)(3) motion
Defendants may object to venue in their answer (assuming they didn’t waive their venue challenge through pre-answer motion practice), but the risk of forfeiture grows rapidly as the case proceeds.
Consent: e.g., requests for decisions on the merits?
Submission: e.g., filing permissive counterclaims?
Tactics: e.g., filing an improper-venue motion after an adverse decision?