Federal Circuit Holds TC Heartland Is An Intervening Change In The Law

The court offers clarification on a patent litigation venue issue that has caused "widespread disagreement" nationwide.

In May, the US Supreme Court issued its landmark TC Heartland decision, which held that for purposes of patent venue statute 28 U.S.C. § 1400(b), a corporation "resides" in its state of incorporation. On November 15, 2017, in In re: Micron Tech., Inc., the US Court of Appeals for the Federal Circuit ruled that the TC Heartland decision was an intervening change in the law that excuses waiver.1 This decision opens the door for defendants currently involved in patent litigation to challenge venue despite not previously raising the issue in earlier pleadings.

Background

In 1957, in Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court concluded that for purposes of the patent venue statute, a domestic corporation "resides" only in its state of incorporation.2 But in 1988 Congress amended the general venue statute, 28 U.S.C. § 1391(c), to provide that "a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced."3

The Federal Circuit held that this amendment applied to the patent venue statute, so patentees were free to file patent infringement actions anywhere an alleged infringer was subject to personal jurisdiction.4 The Federal Circuit consistently adhered to VE Holding for 27 years.

On May 22, 2017, 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 Although the Federal Circuit previously denied several mandamus petitions on this issue, the court addressed the issue head on in Micron.

Micron's Case

In August 2016, Micron filed an unsuccessful motion to dismiss a patent infringement claim filed by the President and Fellows of Harvard College in the District of Massachusetts, but did not include an objection to venue under Rule 12(b)(3).8 After TC Heartland...

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