Several months ago I announced the last ruling that dealt with a claim of waiver for failure to assert an improper venue claim timely following TC Heartland. I was premature, because there was still this case, which was stayed due to pending IPR proceedings three months before Heartland was decided. When the stay was lifted several weeks ago, the defendant asserted an improper venue argument, and the plaintiff asserted that the defense had been waived.
One of the more recent examples of the venue order is this one from Judge Payne last month which denies a motion seeking a transfer to Delaware . What makes this order different than the run of the mill orders – what Justice Scalia would have called “mine run” for reasons that still baffle legal scholars – is that it’s based on some forum selection clauses in prior patent license agreements, as well as a judicial economy argument due to prior Delaware cases.
Let’s start the week off with a little palate cleanser in the form of an order dealing with a motion to transfer a patent case to the Northern District of California, but with the added frisson of a different procedural context – this one’s an order on a motion to reconsider the Court’s order granting the motion to transfer.
The Supreme Court’s recent opinion in TC Heartland has had the effect of shifting the focus of venue briefing in many cases from Section 1404 motions to transfer venue to Rule 12(b)(3) motions to dismiss for improper venue, often asserting that the defendant does not have a “regular and established business” in the district, as well as Section 1404 motions seeking a transfer based on convenience.
Because of the similarity of the former improper venue analysis to a motion to dismiss for lack of personal jurisdiction, those motions were sometimes brought together, even though to be successful, the latter had to show the lack of sufficient contacts with the entire state of Texas, not just the district.
This case presents both flavors of motions to dismiss in the case of automobile manufacturers and distributors, and required rebriefing of the convenience issues after the Court’s ruling on the first two motions.
I posted a few weeks ago on an EDTX case finding an objection to improper venue waived in a fairly unique set of circumstances. Yesterday the Federal Circuit denied a petition for a writ of mandamus as to the district court’s ruling affirming the magistrate judge’s decision. In its order, the Court found that the “exacting standard” for mandamus had not been met, and explained why.
In a 43 page opinion (much, much longer if you count the extensive 10 point footnotes) Judge Gilstrap denied defendant Google’s motion to transfer the pending SEVEN litigation to California. The opinion addresses several issues relevant to the transfer analysis post TC Heartland / In re Cray that will be of interest to practitioners, as noted below.
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.