Massachusetts Court Decides to Transfer Case in View of TC Heartland Venue Standard
Less than two months ago, the Supreme Court handed down its decision in TC Heartland v. Kraft Food Group Brands LLC—which significantly changed the way that venue in patent infringement cases would be determined. Under TC Heartland, infringement actions can only be filed where the defendant is incorporated, or where the defendant has committed acts of infringement and has a regular and established place of business. Since TC Heartland was decided, the district courts have been flooded with motions to transfer cases to different venues.
In what could be the first post-TC Heartland venue decision rendered there, a District of Massachusetts court recently granted a defendant’s motion to transfer a patent infringement case to New Jersey. The plaintiff had originally sued the defendant for patent infringement in the Eastern District of Texas, despite the fact that the defendant is a Delaware corporation with its principal place of business in Newark, New Jersey. Soon thereafter, the defendant moved to transfer the case to the District of New Jersey—but while that motion was pending, the parties instead agreed to transfer the case to Massachusetts, a venue that was proper under pre-TC Heartland case law.
However, once TC Heartland changed the venue calculus, the defendant quickly filed a motion to dismiss for improper venue in the Massachusetts court, arguing that under the standard set forth by the Supreme Court, only Delaware (where the defendant is incorporated) or New Jersey (where the defendant has its principal place of business) are proper locations for the patent infringement case to proceed.
In its opposition briefing, the plaintiff argued two different points in asserting that the defendant’s motion should be denied. First, the plaintiff claimed that the defendant had waived its defense of improper venue because the defense was not raised in the defendant’s first responsive pleading to the complaint, and because the defendant had previously agreed to move the case to Massachusetts. Second, the plaintiff argued that the parties’ joint motion to transfer to Massachusetts should amount to an enforceable forum selection agreement.
In an electronic docket order without any opinion, Judge Young subsequently granted the defendant’s motion and transferred the case to New Jersey.
The case is SecureNet Solutions Group, LLC v. Panasonic Corporation of North America, Civil Action No. 1:17-cv-10732-WGY, before Hon. William G. Young.