United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. FALLON UNITED STATES MAGISTRATE JUDGE.
before the court in this patent infringement action is
defendant TADD, LLC's ("TADD") motion to
transfer venue to the Northern District of Illinois pursuant
to 28 U.S.C. § 1400(b). (D.I. 25) For the following
reasons, I recommend that the court grant TADD's motion
to transfer venue to the Northern District of Illinois.
Blackbird Tech, LLC ("Blackbird") is a Delaware
corporation with its principal place of business in Concord,
Massachusetts. (D.I. 1 at ¶ 1) Blackbird is the owner by
assignment of all right, title, and interest in and to U.S.
Patent No. 7, 086, 747 ("the '747 patent").
(Id. at ¶ 8) The '747 patent, which issued
on August 8, 2006, is entitled "Low-Voltage Apparatus
for Satisfying After-Hours Lighting Requirements, Emergency
Lighting Requirements, and Low Light Requirements."
(Id.) The '747 patent claims linear LED lighting
products. (Id. At ¶ 10)
incorporated in Illinois and maintains its headquarters in
Cary, Illinois. (Id. at ¶ 2) It is undisputed
that TADD does not have a place of business in Delaware, it
is not registered to do business in Delaware, and it has no
other meaningful connection to Delaware. (D.I. 25, Ex. A at
¶¶ 5-12; D.I. 32 at 1 ("Blackbird does not
dispute that, under current law, this case could not be
brought in the District of Delaware.")).
filed this lawsuit on October 19, 2016, accusing TADD of
infringing the '747 patent by making, using, offering to
sell, selling, providing, maintaining, and/or supporting its
allegedly infringing linear LED lighting products (the
"Accused Products"). (Id. at ¶ 10;
Ex. B) This matter was stayed and administratively closed on
February 24, 2017 pending resolution of an appeal to the
Federal Circuit in a related case. (D.I. 17) The Federal
Circuit issued its opinion on July 16, 2018, and a petition
for panel rehearing was made. On September 21, 2018, a
mandate issued from the Federal Circuit enacting the July 16,
2018 opinion. (D.I. 21) The parties submitted a joint letter
on February 5, 2019 requesting that the stay be lifted and
requesting the setting of a scheduling conference.
(Id.) The court entered an order lifting the stay on
February 6, 2019. (D.I. 22) A scheduling conference was held
on March 6, 2019. (D.I. 28)
in a patent infringement action is governed by 28 U.S.C.
§ 1400(b), which provides that "[a]ny 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." This statute constitutes
"the exclusive provision controlling venue in patent
infringement proceedings and [is] not supplemented or
modified" by the broader definition of
"resides" in the general venue statute at 28 U.S.C.
§ 1391. TC Heartland LLC v. Kraft Foods Grp. Brands
LLC, 137 S.Ct. 1514, 1518 (2017) (internal quotation
marks omitted). Federal Circuit law governs venue in patent
infringement cases under 28 U.S.C. § 1400(b), and the
plaintiff bears the burden of establishing proper venue.
In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir.
accordance with the first prong of § 1400(b), the
Supreme Court has held that a corporation resides only in its
state of incorporation. TC Heartland LLC v. Kraft Foods
Grp. Brands LLC, 137 S.Ct. 1514, 1520 (2017). Under the
second prong of § 1400(b), venue is proper in a district
where the defendant has "committed acts of
infringement" and has a regular and established place of
business. 28 U.S.C. § 1400(b). "[T]he regular and
established place of business standard requires more than the
minimum contacts necessary for establishing personal
jurisdiction or for satisfying the doing business standard of
the general venue provision." In re Cray, 871
F.3d 1355, 1361 (Fed. Cir. 2017). Accordingly, the phrase
"regular and established place of business" creates
three distinct requirements: "(1) there must be a
physical place in the district; (2) it must be a regular and
established place of business; and (3) it must be the place
of the defendant." Id. at 1360.
the defense of improper venue is waived if not timely raised
in either a motion to dismiss filed pursuant to Rule
12(b)(3), or in the defendant's answer. Fed.R.Civ.P.
12(g)(2) & 12(h)(1). However, the Federal Circuit has
held that the waiver provision of Rule 12(h) does not apply
to a defendant asserting a venue objection based on TC
Heartland that had not been made in a Rule 12(b) motion
filed prior to the TC Heartland decision. In re
Micron Technology, Inc., 875 F.3d 1091, 1096, 1099-1100
(Fed. Cir. 2017). As the Federal Circuit explained:
"[t]he venue objection was not available until the
Supreme Court decided TC Heartland because, before
then, it would have been improper, given controlling
precedent, for the district court to dismiss or to transfer
for lack of venue." Id. at 1096.
Federal Circuit indicated that a district court may also
utilize its inherent powers and standard procedural devices
to find forfeiture of a venue challenge to facilitate
"the just, speedy, and inexpensive resolution of
disputes," in accordance with Federal Rule of Civil
Procedure 1 and the Supreme Court's decision in Dietz
v. Bouldin. In re Micron, 875 F.3d at 1100 (quoting
Dietz v. Bouldin, 136 S.Ct. 1885, 1891 (2016)). A
timeliness challenge pursuant to these authorities is
appropriate in the venue context because 28 U.S.C. §
1406(b) provides that "[n]othing in this chapter shall
impair the jurisdiction of a district court of any matter
involving a party who does not interpose timely and
sufficient objection to the venue." 28 U.S.C. §
1406(b). Under the Dietz framework, the district
court's use of its inherent power "must be a
reasonable response to the problems and needs confronting the
court's fair administration of justice[, ]" and
"cannot be contrary to any express grant of or
limitation on the district court's power contained in a
rule or statute." Dietz, 136 S.Ct. at 1892
(internal citations and quotation marks omitted); see
also Micron, 875 F.3d at 1100. A district court should
exercise this authority "with caution[, ]" resting
its decision on "sound determinations of untimeliness or
consent." In re Micron, 875 F.3d at 1101.
does not dispute that this action could not be brought in the
District of Delaware following the Supreme Court's
decision in TC Heartland LLC v. Kraft Foods Grp. Brands
LLC,137 S.Ct. 1514 (2017). (D.I. 32 at 1) Instead,
Blackbird argues that TADD waived its objection to venue.
First, Blackbird contends that TADD waived its objection to
venue by declining to pursue the venue defense raised in its
answer to the complaint. (Id. at 3-4) TADD replies
that, under pre-7C Heartland law, it was subject to