Motion to Dismiss for Improper Venue Granted

This is a patent infringement case filed last fall.  By February of this year, only one defendant was left.  That defendant challenged venue in its answer, and five days after the scheduling conference TC Heartland came out.  The remaining defendant filed a motion to dismiss for improper venue shortly afterwards.  Judge Love’s opinion granting the motion addresses a the proffered waiver argument, as well as the plaintiff’s claim that the motion should be denied because multidistrict litigation was “imminent.”

Agreed Transfers Post TC Heartland- Is It Transfer or Dismissal?

What gets attention since TCH is the effect of the decision on new patent case filings in the EDTX, and depending on which week you check filings, they have decreased by around half as plaintiffs voluntarily decide that they don’t have the venue facts to file here and choose to file elsewhere.  What gets less attention is the effect of the decision on pending cases where plaintiffs come to the same conclusion.

These decisions show how those decisions come about, and what the Court does when the parties agree that the plaintiff needs its ticket punched, but can’t decide whether to dismiss or transfer.

EDTX Court Establishes Factors for Evaluating Patent Venue Post-TC Heartland

On May 26, four days after the U.S. Supreme Court issued TC Heartland, Judge Rodney Gilstrap issued an order in a number of cases sua sponte calling for supplemental briefing as to the effect of TCH on motions that were either recently denied or still pending in which the defendants asserted the Fourco improper venue defense.  That briefing would conclude on or about June 15.

Although not included with those cases, the defendant in Raytheon v. Cray had asserted Fourco in a motion which was subsequently denied based on VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) in 2016, and on June 1, 2017, it reurged the improper venue defense approximately three months before trial.  The Court set a briefing schedule concluding on June 22, and seven days later Judge Gilstrap issued a 27 page opinion that denied the motion.

Although a footnote on the last page of the opinion states that the opinion rests on the Federal Circuit’s holding regarding the “regular and established place of business” in In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985), which was its last opinion on the subject before it essentially mooted the language in VE Holdings, the opinion contains an extensive analysis of the issues surrounding this language as a result of the numerous contested motions to dismiss or transfer, and provides guidance and a set of factors to be applied in future cases.

This isn’t unprecedented for common issues – Judge Gilstrap did the same for Section 285 motions earlier this year in Iris Connex, as did Judge Heartfield for motions to transfer a few years back in Mohamed v. Mazda (referred to by some down Beaumont way as the “Magna Carta” of venue jurisprudence for a number of years as it contained state of the art research on every venue issue district courts commonly saw), and Judge Hall on the same subject a few years earlier in 1992 in Box v. Ameritrust – analysis that he revisited in the first Marshall patent case Texas Instruments v. Micron the next year, incidentally).

I wanted to go through the opinion noting the issues it does (and does not) decide, since as the Court notes, they are being raised in numerous cases.

EDTX Court Joins Courts Finding Waiver of Venue Objection First Asserted on Eve of Trial

One of the questions presented after TC Heartland was whether waiver would apply in the cases of defendants who did not assert the Fourco defense of improper venue prior to the Supreme Court’s decision TC Heartland.  In a recent case an EDTX court reviewed recent decisions by other courts finding that waiver does apply and agreed, at least in the situation of a looming trial date.