TC Heartland Venue Argument Was Not “Available” Before TC Heartland Opinion Issued

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TC Heartland Venue Argument Was Not “Available” Before TC Heartland Opinion Issued


In this week’s episode of Patent Venue, when is a change in the law a change in the law?

On May 22, 2017, the Supreme Court issued its opinion in TC Heartland, reversing the Federal Circuit and reaffirming that a corporate defendant can only be sued for patent infringement either in its state of residence or a judicial district in which alleged acts of infringement have occurred and the business has a “regular and established place of business.”

The opinion provided clarity on the venue rules in patent cases, but left open the question of what district courts were to do with cases already pending when TC Heartland was decided, in which accused infringers had not raised challenges to venue because Federal Circuit law at the time did not permit such a challenge. Could those defendants newly raise the issue in a post–TC Heartland world, or were they stuck where they were because they hadn’t raised the issue earlier? Different district courts reached different conclusions, some concluding that TC Heartland did not count as a change in the law, and so that defendants were stuck; others reached the opposite judgment, noting that it’s not reasonable to require defendants to have raised an argument that was directly barred by then–current Federal Circuit precedent.

This week, the Federal Circuit gave its final answer in In re Micron Technology. Without doing a deep dive into the finer points of federal waiver doctrine, suffice it to say that the appellate court concluded that the TC Heartland venue defense was not available to accused infringers before the Supreme Court’s opinion in TC Heartland came out. It wasn’t available because a controlling Federal Circuit case held otherwise, and was binding on the parties and the lower courts. Because of this “sufficiently sharp change of law,” parties who had not previously raised the defense can potentially raise it now. (Which is not to say that other highly technical restrictions might not still prevent them from doing so.)

So accused infringers sued in venues in which they do not have a regular and established place of business may raise the venue defense made available by TC Heartland, even though the cases against them were filed before that opinion was published.

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