President and Fellows of Harvard College v. Micron Technology, Inc.

Filing 109

Judge William G. Young: ORDER entered. MEMORANDUM AND ORDER"For the foregoing reasons, this Court DENIES Micron's motion to dismiss, ECF No. 83 . SO ORDERED."(Sonnenberg, Elizabeth)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS

PRESIDENT AND FELLOWS OF HARVARD
COLLEGE,
Plaintiff,
v.
MICRON TECHNOLOGY, INC.,
Defendant.

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YOUNG, D.J.

CIVIL ACTION
NO. 16-11249-WGY

August 30, 2017
MEMORANDUM & ORDER

I.

INTRODUCTION
President and Fellows of Harvard College (“Harvard”) has

brought this action against Micron Technology, Inc. (“Micron”),
alleging that Micron infringed two of Harvard’s patents.

Micron

previously filed a motion to dismiss for failure to state a
claim, which this Court granted without prejudice.
filed an amended complaint.

Harvard then

About five months later, the

Supreme Court issued its decision in TC Heartland LLC v. Kraft
Foods Group Brands LLC, 137 S. Ct. 1514 (2017), affirming its
previous opinion regarding where a corporate defendant resides
for venue purposes in patent infringement actions.

Micron now

moves to dismiss Harvard’s amended complaint for improper venue,
arguing that TC Heartland constituted a change in the law that

ought be given retroactive effect.

Harvard opposes, arguing

that because TC Heartland merely reaffirmed a previous Supreme
Court holding, the decision is not intervening law sufficient to
preclude Micron’s waiver of its venue challenge.

Because TC

Heartland has resulted in a deluge of similar motions in other
patent cases, this Court takes the opportunity to explain its
reasoning for denying Micron’s motion to dismiss.
A.

Procedural History

Harvard initially filed a complaint against Micron on June
24, 2016.

Compl., ECF No. 1.

Micron responded on August 15,

2016, moving to dismiss the complaint for failure to state a
claim.

Micron’s Mot. Dismiss Compl., ECF No. 19.

After an oral

hearing, the Court granted this motion on October 13, 2016,
giving Harvard thirty days to file a motion for leave to file an
amended complaint.

Electronic Clerk’s Notes, ECF No. 33.

On November 14, 2016, Harvard moved for leave to file an
amended complaint, Pl.’s Mot. Leave File Am. Compl., ECF No. 35,
which Micron opposed, Def. Micron’s Opp’n Pl.’s Mot. Leave File
Am. Compl., ECF No. 39.

On January 30, 2017, this Court granted

Harvard leave to file its amended complaint.
ECF No. 49.

Mem. and Order,

Harvard filed its amended complaint that same day.

Am. Compl., ECF No. 50.
On February 10, 2017, Micron filed a motion to stay the
action, pending inter partes reviews by the United States Patent
[2]

and Trademark Office of the patents at issue in this case.
Micron’s Mot. Stay, ECF No. 54.

On February 27, 2017, Micron

answered Harvard’s amended complaint.
Am. Compl., ECF No. 58.

Def.

Micron’s Answer Harvard’s

On March 20, 2017, Micron filed an

amended answer and counterclaim to Harvard’s amended complaint.
Micron’s First Am. Answer Harvard’s Am. Compl., ECF No. 69.
On March 30, 2017, this Court held a motion hearing
regarding Micron’s motion to stay.
ECF No. 71.

Electronic Clerk’s Notes,

At that time, Micron withdrew the motion to stay

and the Court held a scheduling conference, putting the case on
the running trial list for April 2018.

Id.

The following day,

Harvard filed an answer to Micron’s counterclaim.

Harvard’s

Answer Countercl. Micron, ECF No. 70.
On May 31, 2017, Micron filed a supplemental notice of
request for inter partes review.

Def. Micron’s Suppl. Notice

Req. Inter Partes Review, ECF No. 80.
On June 2, 2017, Micron filed the instant motion to dismiss
for improper venue.

Micron’s Rule 12(b)(3) Mot. Dismiss

Improper Venue, ECF No. 83.
issues.

The parties fully briefed the

Pl.’s Opp’n Def. Micron’s Rule 12(b)(3) Mot. Dismiss

Improper Venue (“Pl.’s Opp’n”), ECF No. 86; Pl.’s Sur-Reply
Opp’n Def. Micron’s Rule 12(b)(3) Mot. Dismiss Improper Venue
(“Pl.’s Sur-Reply”), ECF No. 93; Def. Micron’s Mem. Law Supp.
Rule 12(b)(3) Mot. Dismiss Improper Venue (“Def.’s Mem.”), ECF
[3]

No. 84; Def. Micron’s Reply Supp. Mot. Dismiss Improper Venue
(“Def.’s Reply”), ECF No. 89.

After hearing oral arguments on

July 24, 2017, this Court took the matter under advisement.
Electronic Clerk’s Notes, ECF No. 96.
B.

Background

Harvard is chartered by and has its principal place of
business in the Commonwealth of Massachusetts.

Am. Compl. ¶ 1.

Micron is incorporated in Delaware and has its principal place
of business in Idaho.

Id. ¶ 2; Def.’s Mem. 1.

Harvard has sued

Micron under the patent laws of the United States, Am. Compl.
¶ 3, alleging that Micron has committed acts of patent
infringement within the Commonwealth, id. ¶ 4.

Harvard has

alleged that venue is proper in this district pursuant to 28
U.S.C. sections 1391(b) and 1400.
II.

Id. ¶ 5.

ANALYSIS
Micron argues this Court ought dismiss Harvard’s amended

complaint due to improper venue, Def.’s Mem. 5-6, because Micron
has not waived this argument, id. at 6-7.
Micron has waived the challenge.
A.

Harvard responds that

Pl.’s Opp’n 6-10.

Legal Standard

In patent infringement actions, venue is proper “in the
judicial district where a defendant resides, or where the
defendant has committed acts of infringement and has a regular
and established place of business.”
[4]

28 U.S.C. § 1400(b).

A

party may move to dismiss an action for improper venue, Fed. R.
Civ. P. 12(b)(3), but venue is a personal privilege of the
defendant that can be waived, Leroy v. Great W. United Corp.,
442 U.S. 173, 180 (1979).

Accordingly, a defendant must raise

improper venue in a motion prior to, or in, a responsive
pleading to avoid waiver.

Fed. R. Civ. P. 12(h)(1).

A party

cannot, however, waive a defense if that defense was not
available at the time of the earlier motion.

Fed. R. Civ. P.

12(g)(2).
B.

Waiver of Challenge to Venue

The parties essentially dispute whether Micron waived its
ability to challenge venue by failing to include an objection to
venue in its August 15, 2016 motion to dismiss.

Pl.’s Opp’n 6-

10; Pl.’s Sur-Reply 1-7; Def.’s Mem. 6-7; Def.’s Reply 2-6.
Micron argues that its improper venue challenge was not
available until after the Supreme Court published TC Heartland.
Def.’s Reply 2-5.

Harvard counters that Micron’s improper venue

defense has been available throughout this suit because TC
Heartland only affirmed a previous Supreme Court precedent.
Pl.’s Sur-Reply 2-7.
The Federal Circuit applies the regional circuit’s standard
to address a procedural issue “‘unless the issue pertains to or
is unique to patent law.’”

Intel Corp. v. Commonwealth Sci.,

455 F.3d 1364, 1369 (Fed. Cir. 2006) (quoting Sulzer Textil A.G.
[5]

v. Picanol N.V., 358 F.3d 1356, 1363 (Fed. Cir. 2004)).
Accordingly, the regional circuit’s precedent decides the
question of waiver.

Riverwood Int’l Corp. v. R.A. Jones & Co.,

Inc., 324 F.3d 1346, 1352 (Fed. Cir. 2003).

In the First

Circuit, defendants must object to venue “‘in their first
defensive move, be it a Rule 12 motion or a responsive
pleading.’”

Manchester Knitted Fashions, Inc. v. Amalgamated

Cotton Garment & Allied Indus. Fund, 967 F.2d 688, 691-92 (1st
Cir. 1992) (quoting Glater v. Eli Lilly & Co., 712 F.2d 735, 738
(1st Cir. 1983)).

Otherwise, they have “‘effectively . . .

waived [their] right to obtain a dismissal on the ground of lack
of venue.’”

Id. (quoting Wright & Miller, Federal Practice and

Procedure § 1352 at 273-74 (1990)).

There is an exception,

however, for any defense that was not available when the
defendant made their first defensive move.

Glater, 712 F.2d at

738-39 (holding that a defense was not originally available
where it depended on facts of which a defendant did not and
could not have been expected to have been aware); see also
Holzsager v. Valley Hosp., 646 F.2d 792, 796 (2d Cir. 1981)
(“[A] party cannot be deemed to have waived objections or
defenses which were not known to be available at the time they
could first have been made.”).

[6]

1.

TC Heartland

On May 22, 2017, the Supreme Court published its opinion in
TC Heartland.

The decision examined the question of where

proper venue lies for a patent infringement lawsuit brought
against a domestic corporation.
1516.

TC Heartland, 137 S. Ct. at

More particularly, the court determined the scope of the

patent venue statute, 28 U.S.C. § 1400(b) (“Any civil action for
patent infringement may be brought in the judicial district
where the defendant resides, or where the defendant has
committed acts of infringement and has a regular and established
place of business.”).

TC Heartland, 137 S. Ct. at 1517.

In

1957, the Supreme Court had interpreted this same section,
“conclud[ing] that for purposes of § 1400(b) a domestic
corporation ‘resides’ only in its State of incorporation.”

Id.

(citing Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S.
222, 226 (1957)).
This decision was never overruled by the Supreme Court, nor
was section 1400(b) amended by Congress.

In 1990, however, the

Federal Circuit issued a decision interpreting Congress’s 1988
amendment to the general venue statute, 28 U.S.C. § 1391(c), as
redefining the term “resides” in section 1400(b).

Id. at 1519-

20 (citing VE Holding Corp. v. Johnson Gas Appliance Co., 917
F.2d 1574, 1578-80 (Fed. Cir. 1990), cert. denied, 499 U.S. 922
(1991)).
[7]

Congress again amended section 1391 in 2011.

Id. at 1520

(“Except as otherwise provided by law . . . this section shall
govern the venue of all civil actions brought in district courts
of the United States.” (quoting 28 U.S.C. § 1391)).

Based on

this amendment, the Federal Circuit reaffirmed its decision in
VE Holding.

Id.

The Supreme Court, however, reversed the

Federal Circuit, noting:
In Fourco, this Court definitively and unambiguously held
that the word “reside[nce]” in § 1400(b) has a particular
meaning as applied to domestic corporations: It refers only
to the State of incorporation. Congress has not amended
§ 1400(b) since Fourco, and neither party asks us to
reconsider our holding in that case. Accordingly, the only
question we must answer is whether Congress changed the
meaning of § 1400(b) when it amended § 1391.
Id. (alteration in original).

The court went on to emphasize

that “[t]he current version of § 1391 does not contain any
indication that Congress intended to alter the meaning of
§ 1400(b) as interpreted by Fourco,” id., and that “there is no
indication that Congress in 2011 ratified the Federal Circuit’s
decision in VE Holding.

If anything, the 2011 amendments

undermine that decision’s rationale,” id. at 1521.
In the wake of TC Heartland, a number of district courts
have grappled with the question of whether the decision is
intervening law, rendering an improper venue defense unavailable
prior to its publication.

The majority have held that TC

Heartland does not qualify as intervening law.

[8]

See, e.g.,

Reebok Int’l Ltd. v. TRB Acquisitions LLC, No. 3:16-cv-1618-SI,
2017 WL 3016034, at *3 (D. Or. July 14, 2017) (“The defendant in
TC Heartland believed the defense of improper venue was still
available notwithstanding intervening decisions from the Federal
Circuit, asserted that defense, and successfully prevailed
. . . .

Accordingly, the defense of improper venue was not

impossible or otherwise unavailable to Defendants.”); Navico,
Inc. v. Garmin Int’l, Inc., No. 2:16-CV-190, 2017 WL 2957882, at
*3 (E.D. Tex. July 11, 2017) (“TC Heartland cautions against
analogizing to cases in which courts sometimes allow litigants
to raise new arguments after the Supreme Court divines a
previously unannounced rule or standard.

Defendants here could

have relied on ‘definitive[] and unambiguous[]’ Supreme Court
precedent . . . . other litigants did exactly that.”
(alterations in original) (citations omitted)); Realtime Data
LLC v. Carbonite, Inc., No. 6:17-CV-121 RWS-JDL, slip op. at 3
(E.D. Tex. July 11, 2017) (“This Court agrees with decisions
holding that ‘TC Heartland does not qualify for the intervening
law exception to waiver because it merely affirms the viability
of Fourco.’” (quoting Elbit Sys. Land & C4I Ltd. v. Hughes
Network Sys., LLC, No. 2:15-CV-00037-RWS-RSP, 2017 WL 2651618,
at *20 (E.D. Tex. June 20, 2017))); Diem LLC v. BigCommerce,
Inc., No. 6:17-CV-186-JRG-JDL, slip op. at 3 (E.D. Tex. July 6,
2017) (same); Infogation Corp. v. HTC Corp., No. 16-cv-01902-H[9]

JLB, 2017 WL 2869717, at *4 (S.D. Cal. July 5, 2017) (“[T]he
Court . . . holds that that the Supreme Court’s decision in TC
Heartland does not excuse Defendants’ waiver as to venue in this
District.”); Tinnus Enters., LLC v. Telebrands Corp., No. 6:15CV-00551-RC, slip. op. at 2 (E.D. Tex. July 5, 2017) (“[T]he
Supreme Court’s decision in TC Heartland is not an intervening
change of law.”); The Chamberlain Grp., Inc. v. Techtronic
Indus. Co., Ltd., No. 16 C 6097, slip. op. at 2-3 (N.D. Ill.
June 28, 2017) (“The conflict between Fourco and VE Holding was
a defense that was available to Moving Defendants just as easily
as it was to the plaintiff in TC Heartland.”); iLife Techs.,
Inc. v. Nintendo of Am., Inc., No. 3:13-cv-04987, 2017 WL
2778006, at *5, 7 (N.D. Tex. June 27, 2017) (“TC Heartland does
not qualify as an intervening change in law . . . .”); Elbit,
2017 WL 2651618, at *20 (“TC Heartland does not exempt
[defendant] from the waiver that occurred when [defendant] left
the venue defense out of its motion to dismiss for failure to
state a claim.”); Cobalt Boats, LLC v. Sea Ray Boats, Inc., No.
2:15cv21, 2017 WL 2556679, at *3 (E.D. Va. June 7, 2017) (“Based
on the Supreme Court’s holding in TC Heartland, Fourco has
continued to be binding law since it was decided in 1957, and
thus, it has been available to every defendant since 1957.”).
A handful of district courts have gone the other way.

See,

e.g., Simpson Performance Products, Inc. v. Mastercraft Safety,
[10]

Inc., No. 5:16-CV-00155-RLV-DCK, 2017 WL 3620001, at *5-7
(W.D.N.C. Aug. 22, 2017); Maxchief Invs. Ltd. v. Plastic Dev.
Grp., LLC, No. 3:16-cv-63, 2017 WL 3479504, at *3-4 (E.D. Tenn.
Aug. 14, 2017); Cutsforth, Inc. v. Lemm Liquidating Co., No. 12cv-1200 (SRN/LIB), 2017 WL 3381816, at *3-4 (D. Minn. Aug. 4,
2017);

OptoLum, Inc. v. Cree, Inc., No. CV-16-03828-PHX-DLR,

2017 WL 3130642, at *3-5 (D. Ariz. July 24, 2017); Westech
Aerosol Corp. v. 3M Co., No. C17-5067-RBL, 2017 WL 2671297, at
*2 (W.D. Wash. June 21, 2017).

In Westech, the court noted:

TC Heartland changed the venue landscape. For the first
time in 27 years, a defendant may argue credibly that venue
is improper in a judicial district where it is subject to a
court’s personal jurisdiction but where it is not
incorporated and has no regular and established place of
business. Defendants could not have reasonably anticipated
this sea change, and so did not waive the defense of
improper venue by omitting it from their initial pleading
and motions.
Id.; accord OptoLum, 2017 WL 3130642, at *3.

In contrast, Judge

Gorton -- in this Court’s district -- has reasoned:
Since 1957, the Supreme Court has consistently held that
venue in patent cases is determined by 28 U.S.C. § 1400(b).
The Federal Circuit is not empowered to overturn a decision
of the Supreme Court. Accordingly, the objection to
improper venue was available to defendant and, by not
raising it, defendant waived that objection.
Amax, Inc. v. ACCO Brands Corp., No. 16-10695-NMG, 2017 WL
2818986, at *3 (D. Mass. June 29, 2017) (Gorton, J.) (citations
omitted).

[11]

This Court declines to join the majority view simply
because it is the more popular approach.
analysis, however, is more persuasive.

The majority’s

Westech’s holding

suggests that the Federal Circuit has the power to overturn or
abrogate Supreme Court precedent, or that the Supreme Court’s
denial of certiorari may be interpreted as a statement on the
validity of the decision below, Westech, 2017 WL 2671297, at *2;
an idea this Court hesitates to encourage, as it likely
conflicts with Supreme Court jurisprudence, see, e.g., Thurston
Motor Lines, Inc. v. Jordan K. Rand, Ltd., 460 U.S. 533, 535
(1983) (“Needless to say, only this Court may overrule one of
its precedents.”); United States v. Carver, 260 U.S. 482, 490
(1923) (“The denial of a writ of certiorari imports no
expression of opinion upon the merits of the case . . . .”).
Accordingly, this Court adopts the majority’s approach, holding
that TC Heartland does not qualify as intervening law.
2.

Equity

Waiver is not a procedural game, but rather an equitable
doctrine, cf. Zipes v. Trans World Airlines, Inc., 455 U.S. 385,
398 (1982) (holding that compliance with requirements to file a
Title VII suit be waived “when equity so requires”), which
allows a court discretion to transfer venue when justice so
requires, see 28 U.S.C. §§ 1404, 1406.

Thus, where

circumstances urge transfer despite waiver, this Court has
[12]

obliged, understanding that the patent venue landscape prior to
TC Heartland was not understood with the same clarity that we
benefit from today.

See, e.g., SecureNet Sols. Grp., LLC v.

Panasonic Corp. of N. Am., No. 1:17-cv-10732-WGY (D. Mass. June
22, 2017) (order granting motion to transfer where defendant
initially moved to transfer venue to District of New Jersey,
then withdrew motion when parties agreed to transfer to District
of Massachusetts); see also Hand Held Prods., Inc. v. Code
Corp., No. 2:17-167-RMG, 2017 WL 3085859, at *3-4 (D.S.C. July
18, 2017) (holding that “even if TC Heartland was not a change
in law,” equity merited holding defendant had not waived venue
challenge).

Here, however, equity does not dictate that this

Court allow Micron’s belated challenge.

Thus, because Micron

filed a motion to dismiss in August 2016, but did not assert an
objection to venue, Micron waived any challenge to venue.

See

Manchester Knitted, 967 F.2d at 691-92.
III. CONCLUSION
For the foregoing reasons, this Court DENIES Micron’s
motion to dismiss, ECF No. 83.
SO ORDERED.
/s/ William G. Young
WILLIAM G. YOUNG
DISTRICT JUDGE

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