Jeffri A. Kaminski, Venable LLP
In In re: Micron Technology, Inc., the U.S. Court of Appeals for the Federal Circuit resolved a disagreement among various district courts as to when the U.S. Supreme Court’s ruling in TC Heartland LLC v. Kraft Food Group Brands LLC has changed patent venue law. The Federal Circuit ruled the law had changed, but each federal district court maintains discretion to apply the new rule in accordance with each court’s respective procedures.
In TC Heartland, the Supreme Court clarified where patent owners may file patent-infringement claims. Previously, such suits could be filed in essentially any jurisdiction, allowing patent owners to select the forum of their choice. TC Heartland requires that there be some connection between the accused infringer and the jurisdiction where suit is filed.
In the wake of TC Heartland, many defendants in pending patent litigation moved to transfer their cases to different jurisdictions, arguing that their current venue was no longer proper under TC Heartland. In many instances these motions were filed after the case had been pending for several years. Predictably, patent owners responded by stating that the defendants waited too long to object to the current venue or had otherwise waived such objections.
District courts took diverging views on the issue, some saying that TC Heartland was a change in the law and allowed the venue issue to be raised anew, while other courts, notably the Eastern District of Texas (EDTX), determined that no change in the law had occurred and that the venue objections had been waived.
The Federal Circuit decided that TC Heartland was a change in the law. The court stated “[t]he venue objection was not available until the Supreme Court decided TC Heartland because, before then, it would have been improper given controlling precedent, for the district court to dismiss or to transfer for a lack of venue.”
However, the Micron decision notes that waiver is not the only reason a venue motion may fail, noting timeliness and other factors may come into consideration. The Federal Circuit has left it to the district courts to determine whether the defendant had waived its venue objection in view of the particular circumstances.
It is worth noting that the Fifth Circuit, which includes the EDTX, has yet to decide whether a change in law is an exception to patent-infringement-venue waiver. At least one recent ruling on a venue motion from EDTX states that even if TC Heartland was a change in the law, defendants cannot use this change to “take back” admissions that venue is proper or to correct other procedural defects in raising the venue issue.
Thus, defendants still face an uphill battle in transferring pending patent litigation from EDTX, even after TC Heartland and Micron.