Patent Riffs and Links: CAFC’s Micron on Venue Issues

The Federal Circuit held that the United States Supreme Court’s TC Heartland decision constituted a change in the controlling law. In re: Micron, No. 17-00138 at 13 (Fed. Cir. Nov. 15, 2017).

Federal Circuit Holds TC Heartland Is an Intervening Change in the Law | NATLAWREVIEW
Split: “the Supreme Court issued its decision in TC Heartland, overruling VE Holding and holding that the amendments to Section 1391(c) did not modify the meaning of Section 1400(b), as interpreted by Fourco.[5] After TC Heartland, defendants around the country filed motions to dismiss or transfer their cases on the ground that the cases were not brought in proper venues.[6] This resulted in ‘widespread disagreement among district courts over the change-of-law question of relevant waiver, with many courts finding litigants waived the issue by not challenging venue in their answers before TC Heartland was decided.[7]”

Federal Circuit Concludes that TC Heartland Was a Change in the Law, Reviving Venue Transfer Motions for Defendants Previously Held to Have Waived the Argument | GLOBALIPMATTERS
Split settled. “Micron Technology, Inc. asked the Federal Circuit to set aside the district court’s denial of its motion to dismiss or transfer the case for improper venue. The district court held that Micron waived its objection to venue because it failed to raise an available venue defense in its initial Rule 12 motion to dismiss, and concluded that TC Heartland was not a change in the law…The Federal Circuit disagreed. It reasoned that the Supreme Court clearly rejected V.E. Holding and concluded that the definition of ‘resides in § 1391(c) does not apply to § 1400(b). The Federal Circuit further reasoned that the Supreme Court changed the law by severing § 1400(b) from § 1391(c). As a result, the objection was not ‘available under Rule 12(g)(2) when Defendant filed its motion to dismiss in 2016, before TC Heartland came down.”

Federal Circuit: TC Heartland changed the law; pre-decision waiver of venue challenges are nullified | PATENTLYO
For the right reasoning? “…the major analytical problem with the court’s decision here is its notion that its misinterpretation of Supreme Court law is somehow ‘controlling law. Rather the Supreme Court decided the identical issue in Fourco (1957) and then in TC Heartland (2017) held the minor amendments made to the guiding statutes did not alter the holding of Fourco. In other words, the ‘controlling law this entire time has been the Supreme Court precedent…Regardless of this technicality, the rule appears now that district courts should be considering and granting improper venue decisions moving forward.”

Federal Circuit Finds TC Heartland Was an Intervening Change in the Law of Venue [11/15/2017] | FRIEDFRANK
PDF with solid analysis: “In short, although Micron has resolved the brewing tension over whether TC Heartland was an intervening change in the law, the decision opens the door for plaintiffs to argue waiver based on the courts’ ‘inherent powers to consider ‘timeliness and ‘forfeiture. Going forward, we expect numerous renewed motions to dismiss for improper venue where district courts had erroneously held that TC Heartland was not a change in the law. Plaintiffs, however, may now be able to resist those motions by invoking the courts’ ‘inherent powers to deny untimely motions.'”

CAFC states TC Heartland changed the law so venue waiver under FRCP 12(g)(2)/12(h)(1)(A) not applicable to ‘in between’ cases; but there is a remand… | IPBIZ.BLOGSPOT
The title says it all… “Micron won on the 12(g)(2) issue, which gives some guidance to district courts, BUT the venue matter is not over, so there is still uncertainty”

Federal Circuit Clarifies Venue Waiver After TC Heartland | SWIPLIT
Snell & Wilmer blog:“Recognizing that there has been ‘considerable litigation producing disparate results after TC Heartland, the Federal Circuit held that TC Heartland represents a fundamental change in the controlling law established by the Federal Circuit’s 1990 decision in V.E. Holdings Corp. v. Johnson Gas Appliance Co. The result: defendants may raise defenses to patent infringement claims based on improper venue even if they failed to raise the defense in motions filed before TC Heartland. But the Federal Circuit left open the possibility that district courts can exercise their inherent authority to find waiver in certain circumstances, though the decision leaves unanswered numerous questions concerning the extent of permissible discretion.”

Patent Venue Ruling Gives Another Chance to Transfer Cases | BIGLAWBUSINESS
Some attorneys’ commentary: “The forfeiture discussion may have been the court’s way of reminding courts about the other considerations involved, such as whether granting a motion would be equitable, Rizzolo said…Micron filed its motion about a week after TC Heartland, but if it had, for example, waited months until the eve of trial instead, then the court might say that it would be unfair to grant the request, he said…The Federal Circuit may also be taking the opportunity to emphasize that district court judges have a lot of power and discretion to manage their cases, Jacobs said.”