Rothschild accuses Fingent of infringing U.S. Patent No. 7,456,872 by sales of its “ReachOut Suite,” a field service management software application. It is not clear why Rothschild, a Texas entity, is suing Fingent, a New York business, in Massachusetts, and it is equally unclear why venue in Massachusetts is appropriate, as the pleadings related to venue do not appear consistent with the TC Heartland line of cases.
In December 2016, Caffeinate Labs sued New York’s Vante Inc. and Alexander Shlaferman, also a New York resident, for patent infringement, trademark infringement, and ancillary state law claims related to Vante’s sale of the “Wallet Ninja” in competition with Caffeinate’s PocketMonkey®. Schlaferman filed a motion to dismiss for failure to state a claim of design patent infringement in May; while that motion was pending, Caffeinate Labs voluntarily dismissed the design patent claim with prejudice. Shlaferman then moved in to transfer the case to the Eastern District of New York. Judge O’Toole granted that motion in light of the In re Micron Technology decision, finding that the defendants timely moved for transfer after the TC Heartland decision and thus did not waive a venue challenge. Judge O’Toole found the case to be “primarily one alleging patent infringement,” thus making the patent venue statue the applicable touchstone for venue.
Micron Technology was sued in 2016 by Harvard College, prior to the issuance of the Supreme Court’s TC Heartland decision on venue in a patent infringement lawsuit. Following the TC Heartland decision, Micron moved to dismiss for improper venue. Judge Young denied the motion as waived, finding that TC Heartland had not changed the venue laws, but had merely reaffirmed prior Supreme Court case law on the subject. Micron petitioned the Federal Circuit for a writ of mandamus to set aside this ruling, noting the disagreement among many district courts on the subject of whether the venue laws were changed by TC Heartland. Today the Federal Circuit held that TC Heartland did change the controlling venue law, in that it made available and interpretation of the venue statute that was not previously available. The Court found that the rarely-applied remedy of mandamus relief was appropriate here to resolve the split in district courts over the issue, and was important to proper judicial administration. Looking to Rule 12, the Court noted that, for waiver to apply, a defense under that rule must have been “available to the [defendant] when the defendant made the initial Rule 12(b) motion. As a matter of law, the venue defense made possible by TC Heartland was not “available” prior to that decision’s issuance, given the controlling precedent at the time. The Court interpreted “available” to mean available at the district court, not available after going through one or more levels of appeal, and under Federal Circuit precedent, the venue defense at issue was not something that could be granted by the district court. Accordingly, the venue defense was not waived.
This was not, however, a clean win for Micron. The Court remanded the case for consideration of whether Micron’s subsequent venue motion was filed sufficiently soon after the TC Heartland decision so as to preserve the issue, indicating that the district court has discretion under its inherent powers to deem the venue challenge nonetheless waived. To that end, the Court noted that it had denied mandamus in cases where a post-TC Heartland challenge was brought close to trial.
Canon initially sued Avigilon for infringement of five Canon patents in New York; it voluntarily dismissed that complaint after Avigilon gave notice that it intended to move to transfer to Massachusetts. Canon immediately refiled in the Northern District of Texas on October 5, 2017, alleging infringement of five Canon patents. Later that day, Avigilon brought this declaratory judgment action in Massachusetts on the same five patents, which Canon promptly moved to transfer to N.D. Texas. Avigilon, contending that venue is not proper in Texas and that other factors should create an exception to the “first-to-file” rule, moved for an expedited determination on Canon’s motion to transfer, seeking to have resolution before the date by which it must answer the Texas complaint (presumably with a motion to dismiss or transfer on the same grounds). Judge Talwani denied this motion, noting that the Northern District of Texas, as the court in which claims relating to the five patents was first raised, should be the court to determine whether venue is proper and whether any exceptions to the first-to-file rule apply. Judge Talwani stayed the Massachusetts case pending determination by the Texas court on any venue or transfer related pleadings or motions in the Texas case.
Teva sued Eli Lilly, accusing it of infringing five Teva patents covering humanized monoclonal antibodies that can be used to treat migrane sufferers. This month, Teva submitted a Biologics License Application (“BLA”) to the FDA seeking approval to market their product, known as “fremanezumab.” Eli Lilly recently stated that it had filed its own BLA for a monoclonal antibody, to be called “Galcanezumab,” that targets the same peptide that Teva’s product targets. Based on Eli Lilly’s completion of Phase III clinical trial, its filing of the BLA, and its extensive press statements that it intends to make and sell the product upon receiving approval, Teva asserts that its cause of action is ripe for consideration by the courts. Regarding venue (Eli Lilly is not alleged to be a Massachusetts corporation), Teva asserts that Eli Lilly is registered to do business in the Commonwealth, has a registered agent and a Foreign Corporation Certificate of Registration in the Commonwealth, described its business in Massachusetts as “pharmaceutical manufacturing and sales” in 2017 Annual Report filed with the state, and employs consultants and sales people in Massachusetts to work with Massachusetts health care providers. Moreover, Eli Lilly is asserted to have a facility in Cambridge (in a building, coincidentally, that resides directly behind my firm’s office in Kendall Square) at which it does research and development work, including work on delivery of biologics and pain treatment, which Teva suggests meets the “committed acts of infringement” part of the patent venue statute.
RW IP Holdings sued Standard Innovation Corp. for infringement of U.S. Patent No. 6,028,531, “Terminal Units for a Mobile Communications System” by its sales of We-Vibe® adult toys that can be controlled remotely through a smartphone or the like. Direct, contributory and induced infringement are alleged, and damages, enhancement for willfulness, and attorneys’ fees are sought; no injunction is being sought however, as it appears the patent (which has a priority date of October 12, 1996) has expired.
Potentially of interest, Standard Innovation is alleged to be a Canadian corporation located in Ontario. While the complaint alleges advertising and sales into Massachusetts, there are no allegations that Standard Innovation has a regular and established place of business in the state. At present, it is unclear whether the venue requirements of TC Heartland will apply to foreign corporations, which previously could be sued in any venue in which personal jurisdiction could be established – the TC Heartland decision notes that the Court was not expressing an opinion on the subject. It will be interesting to see whether a venue challenge is made in this case.
Judge Zobel allowed Hybrid Audio’s motion to transfer this case to the Northern District of California and denied ASUS’ motion to dismiss. The ASUS defendants are a Taiwanese corporation and its U.S. subsidiary, which is incorporated in and resides in California. The parties agreed that venue in Massachusetts is no longer proper, pursuant to TC Heartland; the real action in this issue was ASUS’ desire that the case be dismissed, forcing Hybrid Audio to refile in California – as the asserted patent expired prior to the filing of the lawsuit, and ASUS’ first notice of infringement was on January 5, 2011, refiling would eliminate ten months of damages that were available pursuant to the six-year limit on damages set forth in 35 U.S.C. § 286. Hybrid Audio sought to have the case transferred “in the interest of justice.” Judge Zobel endorsed Hybrid’s motion, rather than authoring an opinion of her own.