Courts May Not Exercise Pendant Venue Over Third Parties

The court granted defendant's motion to dismiss for improper venue because plaintiff provided no authority for the court to exercise pendant venue over defendant to further judicial economy in a two-defendant action. "Plaintiff argues that judicial economy considerations favor the Court’s exercise of pendent venue, as granting [defendant's] motion would effectively bifurcate this matter into two separate actions. . . . Plaintiff fails to present any authority, binding or otherwise, suggesting that courts after [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] exercise pendent venue over third parties in patent infringement actions. . . . Plaintiff asserts that declining pendent venue over its claims against [defendant] would waste time and resources by bifurcating this matter into two separate suits on 'opposite sides of the country.' But, at this stage, Plaintiff’s argument is pure conjecture: Plaintiff does not claim, nor does it appear, that it has initiated this separate suit."

Olivia Garden, Inc. v. Stance Beauty Labs, LLC et al, 4-17-cv-05778 (CAND July 12, 2018, Order) (Gilliam, USDJ)

Failure to Request Indicative Ruling During Pendency of Appeal Waives Objection to Venue

Following a jury trial, a bench trial, appeal, and remand, the court denied defendant's motion to transfer for improper venue because defendant waived its venue defense through litigation conduct. "⁠During the pendency of [defendant's] appeal to the Federal Circuit, the United States Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) . . . . [T]he court finds it inarguable that [defendant] wanted to wait for the outcome of the Federal Circuit appeal prior to raising its venue objections. . . . [Defendant] could have requested an indicative ruling from the district court under Fed. R. Civ. P. 62.1 during the pendency of the appeal. . . . This case has been through dispositive motion practice, jury trial, bench trial, post-trial motions, appeal and remand. It has been pending for more than eight years. In fact, this case predates every filing in TC Heartland, including the original pleadings that gave rise to the Supreme Court’s ultimate change of law. . . . [T]he age and breadth of this litigation would pose a novel -- and in this court’s view, unreasonable -- toll on judicial economy when compared with maintaining the case here."

Exmark Manufacturing Company Inc. v. Briggs & Stratton Corporation, 8-10-cv-00187 (NED June 28, 2018, Order) (Zwart, MJ)

Delay in Objecting to Venue Not Excused by Existence of Foreign Defendant

The magistrate judge recommended denying defendant's motion to dismiss or transfer for improper venue and rejected defendant's argument that it did not waive its objection to venue because the objection was not available until the court dismissed another defendant. "The holding of [TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S. Ct. 1514 (2017)] applied to domestic corporations. At the time that TC Heartland issued, then, regardless of whether the claims against the foreign defendant would ultimately be rejuvenated by the District Court, it should have been clear to [defendant] that venue in this District was not proper as to it. And so there is no reason why the venue defense was not 'available' to [defendant] until [the district judge] affirmed the Court's motion to dismiss R&R in December 2017."

Princeton Digital Image Corporation v. Ubisoft Entertainment SA, 1-13-cv-00335 (DED June 25, 2018, Order) (Burke, MJ)

Seven Month Delay While Actively Litigating Waives Venue Challenge

The court denied defendants' motion to dismiss or transfer for improper venue because defendants waived their venue challenge through their litigation conduct. "⁠[D]uring the seven months after the [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] decision, [defendants] were actively litigating this case in this District. . . . [M]otions for summary judgment were denied. . . . A Claim Construction Order was issued shortly thereafter. . . . [Defendants] also filed two new motions for summary judgment before filing this Motion. . . . This procedural history reflects the type of 'tactical wait-and-see bypassing of an opportunity to declare a desire for a different forum' expressly identified in [In re Micron Tech., Inc., 875 F.3d 1091 (Fed. Cir. 2017)] as a paradigm for when an objection to venue could be waived notwithstanding the new law as to Rule 12(h). . . . TC Heartland changed the law with respect to the definition of corporate residence for the purposes of patent venue. However, it did not change the underlying prudential framework for the assessment of challenges to venue like the one raised here."

Adrian Rivera v. Remington Designs, LLC d/b/a iCoffee, 2-16-cv-04676 (CACD June 19, 2018, Order) (Kronstadt, USDJ)

Seven Month Delay Alone Does Not Waive Venue Challenge

The court granted defendant's motion to transfer for improper venue and rejected plaintiff's argument that defendant waived its venue challenge. "Plaintiff does not appear to challenge the contention that venue in this Court is improper. Rather, Plaintiff argues that . . . Defendant forfeited its privilege to challenge venue by waiting nearly seven months after the [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] decision to file its motion. . . . [D]espite Defendant’s delay in filing the instant motion, Plaintiff cites no undue prejudice caused by the delay; nor can the Court discern any such prejudice to Plaintiff. Specifically, there has been no additional motion practice, an initial pretrial conference has not yet been scheduled, discovery has not yet commenced, and no trial date has yet been set."

Blue Rhino Global Sourcing, Inc. v. Sky Billiards, Inc. d/b/a Best Choice Products, 1-17-cv-00069 (NCMD June 20, 2018, Order) (Biggs, USDJ)

Doctrine of "Ancillary" Venue Does Not Provide Independent Basis for Venue

The court granted counterclaim defendants' motion to dismiss for improper venue because defendants lacked a regular and established place of business in the district and ancillary venue did not apply. "Even assuming that [defendants] have committed acts of infringement in the Northern District of Illinois, venue would still be improper because neither maintains a 'regular and established place of business' in the District. [One defendant] has no offices or property in the District, and no phone number or mailing address here. [The other defendant] likewise does not have a regular and established place of business in the District. . . . [Counterclaimant] cites no authority for the proposition that the doctrine of ancillary venue (whatever that really is) can override the clear terms of the patent venue statute. And [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)] puts the nail in the coffin: if the general federal venue statute does not supplement the patent venue statute, then it is unclear why a nonstatutory doctrine could do so."

Shure Incorporated v. ClearOne, Inc., 1-17-cv-03078 (ILND March 16, 2018, Order) (Chang, USDJ)

District Court Split Excuses Pre- In re Micron Delay Asserting Venue Challenge

The court transferred plaintiff's patent infringement action in response to defendant's motion to dismiss and rejected plaintiff's argument that defendant's venue challenge was untimely. "⁠[Defendant] concedes that its motion came six months after [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct 1514 (2017)], but the delay was due to the fact that other courts interpreted TC Heartland differently. There was a district court split over whether a challenge to venue was waived if the moving party delayed in raising this issue. . . . Once the Federal Circuit issued its opinion in [In re Micron Technology, Inc., 875 F.3d 1091 (Fed. Cir. 2017)] holding that 'TC Heartland changed the controlling law,' [defendant] filed the instant motion within a week. . . . To hold that [defendant] was required to immediately file its change of venue motion after TC Heartland was issued, but prior to the definitive guidance in Micron Technology, when the only law in this circuit at the time held that TC Heartland did not change the law, would be patently unfair to [defendant]."

SCVNGR, Inc. d/b/a LevelUp v. DailyGobble, Inc. d/b/a Relevant, 1-16-cv-00134 (RID December 27, 2017, Order) (McConnell, Jr., USDJ)

Post-TC Heartland Delay Waives Venue Challenge

The magistrate judge recommended denying defendants' motion to dismiss or transfer for improper venue because defendants waived their venue defense due to their delay. "Defendants have waived their venue because of their untimely challenges combined with the inefficiencies a transfer would cause on the judicial system. Even after the Supreme Court's decision in TC Heartland, [one defendant] waited nearly four months before raising the issue with the Court, and [the other] waited over five months. . . . But by then, the parties were to have been immersed in claim construction discovery, have exchanged proposed claim terms and preliminary constructions, and proffered a joint claim construction statement. . . . Regardless of any venue-related conversations between the parties, Defendants (not [plaintiff]) chose to wait months before raising the issue with the Court."

Kaist IP US LLC v. Samsung Electronics Co., Ltd. et al, 2-16-cv-01314 (TXED December 18, 2017, Order) (Payne, MJ)

In re Micron Notwithstanding, Substantial Engagement in Litigation Waives Venue Objection

The court denied defendants' motion to dismiss plaintiff's patent infringement action for improper venue and found that defendants waived their venue defense through litigation conduct. "⁠[I]t was not until a few days after their IPR petitions were denied and more than two months after [TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017)] was decided that Defendants finally sought to dismiss this case for improper venue. [In re Micron Tech., Inc., No. 2017-138 (Fed. Cir. Nov. 15, 2017)] 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."

Intellectual Ventures II LLC v. FedEx Corporation et al, 2-16-cv-00980 (TXED November 22, 2017, Order) (Gilstrap, USDJ)

Omission of Venue Challenge From First Rule 12(b) Motion Precludes Defendant From Invoking Intervening Change of Law to Excuse Waiver

The court denied defendant's motion to dismiss or transfer plaintiff's consolidated patent infringement actions for improper venue because defendant waived its venue defense. "It is well settled that an improper venue defense is waived if it is not included in 'a responsive pleading or in an amendment allowed by Rule 15(a)(1) as a matter of course.' [Defendant's] Motion to Dismiss the Complaint in [the first action] did not raise a defense of improper venue. The defense was therefore waived. . . . Even if the TC Heartland decision was an intervening change in law, the 'omission of improper venue from [a party]⁠'s first 12(b) motion constitutes a "procedural misstep,"' which precludes a party from '"invok[ing] intervening Supreme Court case law" in order to "correct" it.'. . . As to [defendant's] venue challenge in [the second action], [defendant] has already admitted that venue is proper. It may not now 'take back' this admission or otherwise seek to avoid its effects."

Nichia Corporation v. VIZIO, Inc., 2-16-cv-01453 (TXED November 15, 2017, Order) (Gilstrap, USDJ)

TC Heartland Does Not Apply to Cases Filed Before January 6, 2012

The magistrate judge recommended denying one defendant's renewed motion to dismiss or transfer for improper venue because TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017) applied only to cases filed after the effective date of the December 7, 2011 amendment to 28 U.S.C. §1391 and the moving defendant's was filed prior to that date. "Because TC Heartland was commenced in January 2014, only the 2011 amendments to §1391 were directly involved in that case. Nowhere did TC Heartland take issue with [VE Holding Corp. v. Johnson Gas Appliance Corp., 917 F. 2d 1574 (Fed. Cir. 1990)]'s analysis of the 1988 amendments to § 1391. . . . In any event, regardless of what the Supreme Court might have decided about the 1988 amendments' effect on [Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957)] had the question been presented to it, that question was not before the Court in TC Heartland, and was therefore not decided. Accordingly, VE Holding's treatment of the 1988 amendments remains unaffected by TC Heartland, and since [movant] was sued while the 1988 amendments were in effect, there is no reason to revisit [the court's] previous denial of its motion to dismiss."

Steuben Foods, Inc. v. Shibuya Hoppmann Corporation and HP Hood LLC, 1-10-cv-00781 (NYWD October 19, 2017, Order) (McCarthy, MJ)

Waiting for Outcome of Rule 12 Motion Waives Objection to Improper Venue

The court denied defendant's motion to dismiss or transfer plaintiff's patent infringement action for improper venue because defendant waived its venue defense by waiting for the outcome of its earlier Rule 12 motion before raising its venue defense. "The rules specifically provide a system in which venue challenges are not available for tactical deployment. A party cannot wait to see how a motion to dismiss on the merits turns out before challenging venue. . . . [Defendant] had several weeks in which to notify the court that it wanted to supplement its pending motions to dismiss. During that time period, [defendant] notified the court of other recent decisions impacting the [35 U.S.C. §101] motion. [Defendant] similarly could have, and should have, notified the court of the [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)] decision if it did not want to waive the venue challenge. By waiting to see how the court would come out on its unpatentability motion, [defendant] waived its venue challenge."

InsideSales.com v. SalesLoft, 2-16-cv-00859 (UTD September 26, 2017, Order) (Kimball, SJ)

Majority Position that TC Heartland Does Not Qualify as Intervening Law "More Persuasive" Than Opposing View​

The court denied defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant waived its venue defense by filing a previous Rule 12(b)(6) motion. "In the wake of [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)], a number of district courts have grappled with the question of whether the decision is intervening law, rendering an improper venue defense unavailable prior to its publication. The majority have held that TC Heartland does not qualify as intervening law. . . . This Court declines to join the majority view simply because it is the more popular approach. The majority’s analysis, however, is more persuasive. . . . [E]quity does not dictate that this Court allow [defendant's] belated challenge. Thus, because [defendant] filed a motion to dismiss [a year ago], but did not assert an objection to venue, [it] waived any challenge to venue."

President and Fellows of Harvard College v. Micron Technology, Inc., 1-16-cv-11249 (MAD August 30, 2017, Order) (Young, USDJ)

TC Heartland Applies to Unincorporated Associations, Such as LLCs​

The court transferred plaintiff's patent infringement action for improper venue and rejected plaintiff's argument that TC Heartland did not apply to limited liability companies like defendant. "The Supreme Court explicitly limited its analysis in [TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017)]: 'we confine our analysis to the proper venue for corporations' and reserved the applicability of its holding to unincorporated entities. . . . Unincorporated associations, such as limited liability companies, are generally treated like corporations for purposes of venue, whereby the 'residence' is the association’s principle place of business. Now that the Supreme Court has reinforced that 'residence' for corporate defendants in a patent infringement case is limited to the state of incorporation, [plaintiff] is hard-pressed to present a reason why unincorporated associations should be treated differently."

Maxchief Investments Limited v. Plastic Development Group, LLC (TWP2), 3-16-cv-00063 (TNED August 14, 2017, Order) (Phillips, USDJ)

Failure to Challenge Venue in First-Filed Motion to Dismiss Does Not Waive Venue If Defendant Supplements the Motion Prior to Decision​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), the court denied defendant's motion to dismiss plaintiff's patent infringement action for improper venue but rejected plaintiff's argument regarding waiver because defendant's motion to dismiss under Rule 12(b)(6) remained pending. "There is authority supporting both sides of the waiver issue. But the Court need not choose a side, because [defendant's] original motion to dismiss is still pending. . . . [A] party that files a Rule 12(b) motion and fails to raise the issue of improper venue can avoid waiving that issue if the party supplements its motion 'before the . . . court [takes] up the matter.' To the extent that 'prompt' amendment is a requirement to avoid waiver, the Court finds that [defendant's] filing of a motion raising improper venue within a month of the Supreme Court’s decision in TC Heartland is sufficiently prompt as this case has not progressed past the pleading stage."

Lit v. Zazzle, Inc., 1-16-cv-07054 (ILND August 3, 2017, Order) (Durkin, USDJ)

Lack of Physical Presence Alone Does Not Establish Lack of Regular and Established Place of Business​

Following the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017), the magistrate judge recommended denying defendant's motion to dismiss plaintiff's patent infringement action for improper venue because defendant did not establish that it did not have a regular and established place of business in the forum. "[Defendant's] underlying affidavit to support this assertion simply states, '[Defendant] does not directly or indirectly own business, sales, or distribution locations or other physical facilities in the Eastern District of Texas.' But lack of physical presence in the District is insufficient to establish improper venue. . . . By solely making statements regarding physical facilities in the District, [defendant] fails to set forth sufficient facts to support its argument that it lacks a regular and established place of business in the District."

Realtime Data LLC d/b/a IXO v. Exinda Inc., 6-17-cv-00124 (TXED August 1, 2017, Order) (Love, MJ)

Failure to Challenge Venue Before TC Heartland Does Not Waive Venue Objection​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the court granted defendants' motions to transfer for improper venue and rejected plaintiffs' arguments that defendants waived their defense. "Federal Circuit precedent clearly foreclosed the venue defense. It would be inequitable to expect Movants to have objected to venue, especially where the Supreme Court had already denied certiorari on the exact question in [VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990)] itself. . . . Both reconsideration of certiorari and reconsideration of merits rulings are, strictly speaking, possibilities, so arguments directed to those results are, strictly speaking, available. But in fairness, neither possibility is great enough upon which to base a finding of waiver where circuit precedent forecloses an argument, particularly in cases such as this one where the relevant circuit is the only one with jurisdiction over the issue, such that even the possibility of a future circuit split does not exist."

CG Technology Development, LLC et al v. FanDuel, Inc., 2-16-cv-00801 (NVD July 27, 2017, Order) (Jones, USDJ)

Prejudice Irrelevant to Waiver of Venue Analysis Under TC Heartland​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the court denied defendant's motion for judgment on the pleadings that venue was improper and rejected defendant's argument that there was no waiver because plaintiff was not prejudiced. "[Defendant] contends that 'waiver typically requires a showing of prejudice to the other party' and that '[plaintiff] will not be prejudiced by a change in venue given the substantial amount of work that remains' to be done in this case. . . . Courts have found prejudice to be a relevant consideration in determining whether waiver by implication has occurred, but [defendant] cites no apposite caselaw holding that prejudice is relevant to waiver under the express terms of Rule 12. The Court therefore declines to consider whether [plaintiff] would suffer prejudice from a transfer of venue in this case."

Mantissa Coporation v. Ondot Systems, Inc. et al, 4-15-cv-01133 (TXSD July 26, 2017, Order) (Palermo, MJ)

Defendant’s Counterclaim Asserting Venue in Forum Court Does Not Waive Objection to Venue​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017), the court granted defendant's motion to dismiss plaintiff's patent infringement action for improper venue and found that defendant did not waive its venue defense through its counterclaim. "[Plaintiff's] argument that [defendant] waived its improper venue defense by virtue of its Counterclaim is unpersuasive. [Defendant's] Counterclaim states, '[b]ased solely on [plaintiff's] filing of this action, venue is proper, though not necessarily convenient, in this District pursuant to at least 28 U.S.C. §§ 1391 and 1400.'. . . As long as [defendant] otherwise preserved its improper venue defense, its counterclaims -- directed at [plaintiff's] conduct and connections with the forum -- do not create a waiver."

Blue Spike, LLC v. Contixo Inc. et al, 6-16-cv-01220 (TXED July 26, 2017, Order) (Love, MJ)

Defendant Did Not Waive Venue Objection by Failing to Contest Venue Prior to TC Heartland​

Following the Supreme Court decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), the court granted defendant's motion to amend its answer to contest venue and rejected plaintiff's argument that TC Heartland was not an intervening change of law that excused defendant's waiver of its objection to venue. "[Plaintiff] argues, and several district courts have found, that the defense of improper venue has always been available because other patent defendants would have 'ultimately succeeded in convincing the Supreme Court to reaffirm [Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957)], just as the petitioner in TC Heartland did.' But this would have taken some convincing, and until TC Heartland, no defendant succeeded in doing so in the 27 years following [VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990)]. To suggest that the defense of improper venue has always been available, and that TC Heartland did not effect a change in the law 'because it merely affirms the viability of Fourco[,]' ignores the significant impact of VE Holding and the patent bar’s reliance on the case for nearly three decades."

OptoLum Incorporated v. Cree, Inc., 2-16-cv-03828 (AZD July 24, 2017, Order) (Rayes, USDJ)