Without exception, each of the panels or talks I have been involved with since TC Heartland came out have agreed that waiver isn’t really worth talking about because as an issue it would go away with time as improper venue became a standard issue for defendants to analyze under the new cases.
This may, therefore, be one of the last cases where a court specifically finds that a proper venue defense was forfeited as a result of delay raising it after the change in the law, although the facts are a little unusual, given that the improper venue defense had already been raised by motion twice, denied twice, and mandamus sought and denied. This, the third motion, was raised seven months after In re Micron was decided, and was denied as well.
In recent weeks I have been looking at various venue opinions over the past few months, and realized that I’ve been giving Section 1404 motions asserting inconvenience short shrift since improper venue post Heartland/Cray is sort of the new black in venue law. This opinion remedies that somewhat with an opinion from a few weeks back that has some really useful insights into the relevant analysis.
A familiar feature on the 100 block of East Austin in Marshall is the something called “the Hub”. The Hub is a large wagon wheel hub symbol used by the Hub Shoe Store that occupied my offices from 1897-2009. About once a century the Hub (which is actually a 19th century wooden barrel skinned with metal to look like a wagon wheel without its spokes) needs more than just a paint job and has to be take down for repairs.
Today was that day, so after removing rivets and nails from the McKinley Administration we made sure it was belted in properly for its trip to the local metalsmith. It’ll be back in a couple of weeks.
What will not be back in a couple of weeks is this patent infringement action brought by a medical device company against a competitor in which it asserted that the defendants’ distributors satisfied the “regular and established business” prong of the venue statute.
The most important Marshall venue opinion today is the news that we’re getting a Dairy Queen, after decades without one. We actually had two when I was growing up – but no McDonalds – when that opened around 1980 the MHS band played at its dedication and I was honking away back in the trombone section. And I’m old enough to remember when my grandfather had to drive us to Longview to go to an El Chico’s. We don’t have that now either, but it was replaced with one of many quality chicken establishments. (Candidly, I still recommend the pizza).
But I digress.
As I mentioned the other day, we’re seeing a number of new venue opinions in recent weeks, and I wanted to start analyzing the ones coming out of Marshall, albeit from different judges. The first is by Judge Gilstrap, but I’ll be following up with decisions by Judge Payne and visiting Judge William Bryson of the Federal Circuit, as well as more by Judge Gilstrap. But this is one you’ll want to study for your form files as it has new language and analysis that litigants will find useful.
This venue opinion is sort of a double-header, since it includes an order from Magistrate Judge Love, followed by a second order overruling objections to a different report & recommendation from Judge Love by Judge Schroeder. So maybe that’s a tripleheader, but the middle one is secret.
There are a number of significant recent venue opinions in the past few days – significant because they’re all from different judges. The week is getting busy with hearings and hearing prep, but I wanted to start rolling out commentary, beginning with this one from Judge Mazzant in Sherman.
It’s hard to believe that it’s been six weeks since I spoke on venue post-TC Heartland at the ABA IP meeting in Crystal City, but one thing I said is probably worth repeating – take your notes on venue in pencil. Because there have already been three important Federal Circuit venue opinions since then. For the same reason, it’s always worth reading the most current venue opinions coming out of local courts because they implement the new decisions pretty quickly. The attached is a good example, as it address several hot topics, including venue statutes not applying to foreign defendants and personal jurisdiction arising from products sold into the forum state, as well as the evergreen issues regarding transfer under Section 1404. Oh, and it’s a Hatch-Waxman case too, so the analysis in places is sort of backwards and in high heels, as the Ginger Rogers reference would say.
Motions to transfer alleging inconvenience aren’t as common as they were before TC Heartland, but you still see them from time to time. In this case, Judge Mitchell concluded that the relevant factors made the proposed transferee forum in California “clearly more convenient.
Earlier today Judge Gilstrap granted a motion staying a consolidated patent case pending the resolution by the Federal Circuit of a mandamus petition that has been filed in another case. The Court declined to stay the case pending resolution of two IPR proceedings. The ruling is worth studying because of what the motion sought, as discussed below.
This is a patent infringement case involving medical devices that are currently in clinical trials across the country, including at sites in the Eastern District of Texas. The original motion to dismiss for improper venue was denied pre-TC Heartland. The renewed motion was denied because the issue of improper venue could not be addressed at the motion to dismiss stage because the basis for the defense depended on factual questions that could not be resolved at that stage.
But once further discovery into the infringing acts in the EDTX was conducted, at the summary judgment stage the Court could address the question of the relevance of the § 271(e)(1) safe harbor defense in determining whether venue was proper.