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Tennessee District Courts Remain Split on TC Heartland and Waiver of Improper Venue Defense

The Supreme Court’s decision five months ago in TC Heartland v. Kraft Food Group Brands was a sea change in the way courts interpret venue for patent infringement cases.  Since the Federal Circuit’s decision in VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), venue in patent infringement cases has been determined using 28 U.S.C. § 1391(c), which equates a corporate defendant’s residence with personal jurisdiction.  In TC Heartland, the Supreme Court effectively abrogated VE Holding by finding that a corporate defendant “resides” only in its State of incorporation for venue purposes.

In the wake of TC Heartland, district courts have dealt with a flurry of motions to dismiss based on improper venue under 28 U.S.C. § 1400(b).  A major question presented by these motions is whether corporate defendants have waived their venue defense by failing to contest venue under § 1400(b) earlier.  District courts are currently split on the issue.  Some courts have found TC Heartland to be an intervening change in the law, such that an improper venue argument based on § 1400(b) was unavailable before TC Heartland issued and therefore not waived.  Other courts have found that TC Heartland merely reaffirmed the Court’s previous ruling that a domestic corporation “resides” only in its State of incorporation in Fourco Glass Co. v. Transmirra Products Corp. 353 U.S. 222 (1957), that VE Holdingdid not overrule Fourco and thus that a § 1400(b) venue defense remained available and was therefore waived by failure to move previously.

Recently, Judge Phillips in the Eastern District of Tennessee tackled TC Heartlandissues in a motion to dismiss for improper venue.  Maxchief Investments Ltd. v. Plastic Development Group, LLC, No. 3L16-cv-63 (E.D. Ten. Aug. 14, 2017).  The court first addressed the applicability of TC Heartland to unincorporated associations, like limited liability companies.  Though TC Heartland is limited to proper venue for corporations, Judge Phillips explained that unincorporated associations are generally treated like corporations for venue purposes and that the very language of § 1400(b) refers to “defendants,” not just corporations.  The court next addressed whether the defendant had waived venue by failing to assert a § 1400(b) defense previously.  The court found that venue had not been waived, specifically stating “it is difficult to describe TC Heartland as anything other than a significant change in the law on venue. To do otherwise would ignore the long-standing significance of the VE Holding decision and the reliance upon it for many years.”  Maxchief Investments Ltd. v. Plastic Development Group, LLC, No. 3L16-cv-63, ECF No. 57 at 7 (E.D. Ten. Aug. 14, 2017).  To this end, the court ordered the case be transferred to Eastern District of Michigan.

Undoubtedly, TC Heartland will continue to make waves in patent infringement litigation and the district court split on the issue of waiver will continue to deepen.  Until either the Supreme Court or Federal Circuit steps in to clarify this issue for district courts, patent litigators with pending cases should be mindful of how their chosen venue has been disposing of TC Heartland-based motions to dismiss, and whether the case is susceptible to such a motion.

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About this Author

Brad Scheller Patent Litigation Attorney Mintz Law Firm

Brad Scheller is a trial attorney who focuses his patent litigation practice on representing clients in the automotive devices, thermoplastics, electronic components and consumer products industries in federal district court, before the Patent Trial and Appeal Board and at the International Trade Commission. With a background in mechanical engineering and over 14 years of experience practicing law, Brad has successfully represented patent owners in enforcing their rights against infringers and protecting those rights from challenges of invalidity, and has also successfully defended and...

Tiffany Knapp, Mintz Levin Law Firm, Intellectual Property Attorney

Tiffany concentrates her practice on intellectual property litigation, with an emphasis on patent cases. She uses her background in computer science and mathematics to help clients in matters at the International Trade Commission and in Federal District Courts.

Prior to joining Mintz as an Associate, Tiffany was a law clerk to Clerk Joseph Stanton of the Massachusetts Appeals Court. During her last year in law school, prior to graduation, Tiffany worked as an Intern to Mintz’s IP practice. She assisted with the preparation of and research for documents to help clients strategize the use of their patent portfolio, such as a market-specific patent litigation and damages awards report. Tiffany researched effects of Supreme Court decisions and the America Invents Act on the rights and litigation strategies of patent holders, and prepared memoranda and drafted publications related to the development of standard setting organizations and their impact on patent policies.

Tiffany was involved with the New England Law Review while earning her degree at New England Law as an associate member and later as the Executive Online Editor and a published author. Tiffany was also a research assistant for Trademark matters while attending New England Law.