On September 22, 2017, Judge Paul G. Byron of the Middle District of Florida denied a post-trial motion in Omega Patents, LLC v. CalAmp Corp., 6:13-cv-1950 (M.D. Fla. Sept. 22, 2017), where the defendant had sought to vacate a jury verdict due to improper venue. In denying the motion, Judge Byron relied on the rarely-used doctrine of "pendent venue." In particular, the court found that venue was proper with respect to all of the plaintiff's claims because the defendant had previously consented to venue with respect to one of the claims. Judge Byron's opinion raises an interesting question: may plaintiffs use "pendent venue" to avoid post-TC Heartland challenges to venue?
Omega Patents, LLC brought suit against CalAmp Corp. in 2013 asserting infringement of five patents. One patent, U.S. Patent No. 6,737,989 (the ’989 patent), was the subject of a prior settlement agreement entered into three years before suit commenced. In the agreement, CalAmp stipulated that it would not challenge venue in the Middle District of Florida for subsequent claims of infringement of the ‘989 patent. When the suit was filed, CalAmp admitted that venue was proper with respect to the ’989 patent, but denied that venue was proper with respect to the remaining patents-in-suit.
The case proceeded to trial and—just prior to opening statements on February 16, 2016—Omega announced that it would “no longer [pursue] the ‘989 patent.” As a result, the trial concerned only the patents for which CalAmp denied venue was proper. After a seven-day trial, the jury returned a verdict for Omega.
Several months after the final judgment, and following the Supreme Court’s decision in TC Heartland, CalAmp moved to vacate the jury award. CalAmp argued that Omega’s non-‘989 patent claims “never should have been filed” in the Middle District of Florida based on the TC Heartland decision. CalAmp therefore asked the Court to dismiss the case or transfer it to the Central District of California for a new trial.
The court rejected CalAmp’s arguments. The court first stated that venue must be determined at the time a lawsuit is filed. The court noted that, when Omega filed the Complaint, it alleged infringement of the ’989 patent and CalAmp admitted that venue was proper with respect to that claim. The court found that it was immaterial to the venue analysis that Omega later dropped the claims based on the ’989 patent. The court thus explained that there was only “one question” to resolve: whether the court had properly exercised “pendent venue” over the other patents-in-suit at the time the suit was filed.
The court explained that the doctrine of “pendent venue” allows a case to proceed where venue is proper as to one claim and “all claims arise out of a common nucleus of operative facts.” Here, the court found a common nucleus of facts between the claims based on the ’989 patent and the four other patents-in-suit. The court noted that the patents “all pertain[ed] to various components of the infringing devices,” used “several similar terms to describe a vehicle’s data communications bus,” and were all “based on continuations-in-part of earlier applications.” Therefore, the court found that it had appropriately exercised pendent venue even if venue would otherwise have been improper under TC Heartland.
In apparent dicta, the Court also concluded that TC Heartland was not an intervening change in the law and, as a result, CalAmp would also have waived its objection to venue. As explained in our recent survey, What Is the “Majority” Position on Whether TC Heartland Changed the Law of Venue, courts are split on this issue. The Middle District of Florida now joins several other districts, including the Eastern District of Texas and the Northern District of California, in holding that TC Heartland was not an intervening change in the law of venue in patent cases.
The court’s reliance on the doctrine of “pendent venue” may signal another avenue for plaintiffs seeking to avoid the full effects of TC Heartland. If a plaintiff can establish venue over one claim, then the plaintiff may seek to add other claims for which venue would otherwise be improper under TC Heartland. Courts will need to explore the boundaries of this rarely-invoked doctrine. For example, could a plaintiff assert a non-patent claim—where venue would be determined under the broader provisions of § 1391—and then argue there is “pendent venue” over additional patent claims? There are at least a few decisions suggesting that the doctrine of “pendent venue” may not be as broad as it seems on the face of the Omega Patents decision. See, e.g., PKWare, Inc. v. Timothy L. Meade & Ascent Solutions, 79 F. Supp. 2d 1007, 1019 (E.D. Wis. Jan. 7, 2000) (“Patent infringement cases are governed by a specific venue statute, § 1400(b), and courts have expressed the view that application of the doctrine of pendent venue is inconsistent with the specific requirements of the statute.”); Network Sys. Corp. v. Masstor Sys. Corp., 612 F. Supp. 438, 440 (D. Minn. 1984) (“The growing line of authority holds that a court may not entertain a patent claim when the specific requirements of the patent venue statute are not satisfied notwithstanding proper venue over related claims.”); Hoffacker v. Bike House, 540 F. Supp. 148, 150 (N.D. Cal. 1981) (“[A] court may not entertain a patent claim when the specific requirements of the patent venue statute are not satisfied notwithstanding proper venue over other related claims for relief.”).