United States District Court, E.D. Texas, Marshall Division
NAVICO, INC. and NAVICO HOLDING AS Plaintiffs,
GARMIN INTERNATIONAL, INC. and GARMIN USA, INC. Defendants.
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE.
the Court is Defendants' Motion to Dismiss for Improper
Venue, or Alternatively to Transfer Venue to the District of
Kansas Pursuant to 28 U.S.C. § 1406 (Dkt. No. 132)
(“the Motion”). Having considered the
Parties' arguments, the Court DENIES the Motion.
Navico, Inc. and Navico Holding AS (collectively
“Navico”) filed the instant suit against
Defendants Garmin International, Inc. and Garmin USA, Inc.
(collectively “Garmin”) on March 4, 2016 alleging
infringement of U.S. Patent No. 9, 223, 022 (“the
'022 Patent”) and U.S. Patent No. 9, 244, 168
(“the '168 Patent”). (Dkt. No. 1.) Garmin
filed its Answer to Plaintiffs' Complaint, in which it
admitted that venue was proper in the Eastern District of
Texas, on April 1, 2016. (Dkt. No. 8 at ¶ 12
(“Garmin admits that venue is proper in this judicial
district . . . .”).)
filed an Amended Complaint on November 18, 2016. (Dkt. No.
50.) Garmin then filed an Answer to this Amended Complaint,
in which it again admitted that venue was proper in the
Eastern District of Texas, on December 2, 2016. (Dkt. No. 51
at ¶ 12.)
Garmin admitted, for the second time, that venue was proper
in the Eastern District of Texas, the case proceeded through
claim construction, (Dkt. Nos. 55, 57, 68), as well as
substantial motion practice. However, on June 21, 2017,
Garmin filed the instant Motion seeking to dismiss this case
for improper venue under Federal Rule of Civil Procedure
12(b)(3) or, in the alternative, to transfer it to the
District of Kansas pursuant to § 1406. (Dkt. No. 132.)
the Court of Appeals for the Federal Circuit applies
“the law of the regional circuit to the procedural
question of waiver.” Riverwood Int'l Corp. v.
R.A. Jones & Co., 324 F.3d 1346, 1352 (Fed. Cir.
2003); Ultra-Precision Mfg., Ltd. v. Ford Motor Co.,
411 F.3d 1369, 1376 (Fed. Cir. 2005) (“Regional circuit
law governs the question of waiver of a defense.”).
However, the Federal Circuit has applied its own law in
certain cases where the underlying argument found to have
been waived was unique to patent law. See, e.g., Rates
Tech. Inc. v. Nortel Networks Corp., 399 F.3d 1302, 1307
(Fed. Cir. 2005) (applying Federal Circuit law in assessing
whether objections to personal jurisdiction were waived). In
Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed.
Cir. 2005), for example, now-Chief Judge Prost explained this
approach in the context of deciding whether a claim
construction argument had been waived:
Waiver is a procedural issue, but if one views the issue more
narrowly as ‘waiver of a claim construction argument,
' rather than the more general ‘waiver of an
appellate argument, ' it seems indisputably unique to
patent law. In our estimation, the narrower of these two
views is more appropriate.
417 F.3d at 1250. In light of Rates Tech. and
Harris, the Court is persuaded that the appropriate
view of the issue here is whether Defendants have waived
their objections to venue based on § 1400(b). Any
determination of venue in light of § 1400(b) is
necessarily unique to patent law because the statute itself
is unique to patent law. 28 U.S.C. § 1400(b) (“Any
civil action for patent infringement . . . .”). See
also TC Heartland LLC v. Kraft Foods Grp. Brands LLC,
137 S.Ct.1514, 1519 (2017) (holding that § 1400(b)
“‘is the sole and exclusive provision controlling
venue in patent infringement actions.'” (quoting
Fourco Glass Co. v. Transmirra Products Corp., 353
U.S. 222, 229 (1957))). Therefore, Federal Circuit law should
control whether an objection to venue based on § 1400(b)
has been waived. But see Cobalt Boats, LLC v. Sea Ray
Boats, Inc., No. 2:15CV21, 2017 WL 2556679, at *2 (E.D.
Va. June 7, 2017) (Fourth Circuit law applies because waiver
is not unique to patent law); Infogation Corp. v. HTC
Corp., No. 16-CV-01902-H-JLB, 2017 WL 2869717, at *2
(S.D. Cal. July 5, 2017) (discussing Ninth Circuit law, but
not addressing the question of whether Ninth Circuit law
controls). Notwithstanding the above, applying
either Fifth Circuit or Federal Circuit law compels
the conclusion that Garmin has waived its objection to venue.
See Neirbo Co. v. Bethlehem Shipbuilding Corp., 308
U.S. 165, 167-68 (1939) (concluding that the right to object
to venue can be waived “by failure to assert it
seasonably, by formal submission in a cause, or by submission
Federal Rule of Civil Procedure 12(h)(1), a defendant may
waive the affirmative defense of improper venue under three
circumstances. Fed.R.Civ.P. 12(h)(1); Biomedical Patent
Mgmt. Corp. v. California, Dep't of Health Servs.,
505 F.3d 1328, 1340 (Fed. Cir. 2007) ([V]enue . . . is, of
course, a waivable defense.”). First, an objection to
venue may be waived by failing to make a motion under Federal
Rule of Civil Procedure 12. Fed.R.Civ.P. 12(h)(1)(B)(i).
Second, it may be waived by failing to object “in a
responsive pleading or in an amendment allowed by Rule
15(a)(1) as a matter of course.” Fed.R.Civ.P.
12(h)(1)(B)(ii). Finally, it may be waived by making a motion
under Federal Rule of Civil Procedure 12 without also
objecting to venue. Fed.R.Civ.P. 12(h)(1)(A); Fed.R.Civ.P.
12(g)(2) (“Except as provided in Rule 12(h)(2) or (3),
a party that makes a motion under this rule must not make
another motion under this rule raising a defense or objection
that was available to the party but omitted from its earlier
have also found that a defendant may waive an objection to
venue by litigating a case without contesting venue. See,
e.g., Infogation, No. 16-CV-01902-H-JLB, 2017 WL
2869717, at *3 (finding waiver where a defendant
“litigated the consolidated action . . . for
approximately a year, including by serving invalidity
contentions . . . and participating in claim construction . .
. .”). This follows from the general rule that an
affirmative defense, such as an objection to venue, may be
waived “by actively litigating [a] suit.”
United States v. Ziegler Bolt & Parts Co., 111
F.3d 878, 882 (Fed. Cir. 1997) ...