The IP Litigation Team at Fried Frank is continuously tracking the impact of TC Heartland. Every week, we provide a roundup of the courts’ latest orders and opinions concerning venue-related issues in patent infringement cases.
The summaries below are grouped by topic and cover the period August 16 – August 22, 2017.
Meaning of “Regular and Established Place of Business”
A Western District of North Carolina decision granted a defendant’s motion to transfer to a more convenient venue, InVue Security Products Inc. v. Mobile Tech, Inc., 3-15-cv-00610 (W.D.N.C. Aug. 21, 2017) (Order, Judge Max O. Cogburn, Jr., Dkt. 65), but in doing so, also decided that venue was proper in the Western District. Under the second prong of 28 U.S.C § 1400(b), the district court determined that “field technicians who actively engage with customers” show that the defendant has a “regular and established place of business” in the district. For a full summary of the case, please see Field Technicians Can Prove a “Regular and Established Place of Business”.
In NSixty, LLC v. uPost Media, Inc., 1-17-cv-00335 (S.D. Ohio Aug. 22, 2017) (Order, Judge Timothy S. Black, Dkt. 10), the court granted the defendant’s motion to dismiss for improper venue. The court found that the defendant does not maintain a “regular and established place of business” in the Southern District of Ohio because the defendant “submitted affirmative evidence that it has never sold any product or service in this state, does not have any employees or agents in this state, does not own or lease any property in this state, and does not maintain any business operations in this state.” Therefore, it held that venue was improper.
Waiver of Objection to Venue
Magistrate Judge Roy S. Payne of the Eastern District of Texas recommended denying Defendant Yahoo’s motion to dismiss for improper venue in MyMail, Ltd. v. Yahoo!, Inc., 2-16-cv-01000 (E.D. Tex. Aug. 17, 2017) (Report and Recommendation, Judge Roy S. Payne, Dkt. 129). In its complaint, Plaintiff MyMail alleged that venue was proper because the district had personal jurisdiction over Defendant Yahoo. In its answer, Yahoo objected that venue was not proper “for the reasons set forth in the Complaint.” After the Supreme Court issued its TC Heartland decision, Yahoo moved to dismiss for improper venue. Magistrate Judge Payne found that Yahoo had objected to venue only as to personal jurisdiction in its answer and therefore waived its challenge to venue on any other grounds. For a full summary of the case, please see Objecting to Personal Jurisdiction Does Not Preserve Venue Defense; Waiver of Personal Jurisdiction Objection Does Not Establish Venue.
No Waiver of Objection to Venue
The Southern District of Ohio granted Defendant Ranir’s motion to dismiss for improper venue in Procter & Gamble Company v. Ranir, LLC, 1-17-cv-00185 (S.D. Ohio Aug. 17, 2017) (Order, Judge Timothy S. Black, Dkt. 36). In response to Ranir’s motion, Plaintiff Procter & Gamble argued that the Supreme Court’s TC Heartland decision did not apply retroactively to the case and that Ranir had waived its improper venue defense by not challenging personal jurisdiction in its initial motion to dismiss. The court disagreed, concluding that the TC Heartland decision applies to all open patent infringement cases and that objecting to personal jurisdiction is not necessary to challenge venue. For a full summary of the case, please see Objecting to Personal Jurisdiction Does Not Preserve Venue Defense; Waiver of Personal Jurisdiction Objection Does Not Establish Venue.
In Nitto Denko Corp. v. Hutchinson Technology Inc., 2:16-cv-03595 (D.N.J. Aug. 22, 2017) (Order, Judge Claire C. Cecchi, Dkt. 105), the court allowed the defendant to amend its pending motion to dismiss to include a claim for improper venue. The court found that the defendant had not waived its improper venue defense because the Supreme Court’s TC Heartland decision represented a “sea change” in the law of patent infringement venue, and therefore the defense was not available at the time of the initial motion.
In Orthosie Systems, LLC v. Redtail Telematics, Corp., 4:16-cv-00927 (E.D. Tex. Aug. 22, 2017) (Order, Judge Amos L. Mazzant, III, Dkt. 31), the court granted the defendant’s motion to transfer for improper venue. The plaintiff sued the defendant for patent infringement and the defendant filed an answer soon thereafter generally denying venue. Later, after the Supreme Court’s TC Heartland decision issued, the defendant moved to transfer for improper venue. The court found that the motion to transfer was still timely because defendant’s general objection to venue in its answer preserved its improper venue defense. The court also granted the transfer because the plaintiff did not respond to the defendant’s improper venue assertions on the merits.
Discovery Regarding Venue
In RegenLab USA LLC v. Estar Technologies Ltd., 1:16-cv-08771 (S.D.N.Y Aug. 17, 2017) (Order, Judge Andrew L. Carter, Jr., Dkt. 102), the court granted the plaintiff’s requests for discovery in connection with the defendants’ motion to dismiss for improper venue. With respect to what constitutes a “regular and established place of business,” the court noted that prior decisions “suggest that the lack of a defendant-owned or controlled property in the district is not always dispositive.” Therefore, the court ordered for “supplemental declarations that go into greater detail regarding the nature of their employees’ and sales representatives’ roles and duties and their relationship to the respective companies” to aid in evaluating the pending motion to dismiss.
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