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Navico, Inc. v. Garmin International, Inc.

United States District Court, E.D. Texas, Marshall Division

July 11, 2017

NAVICO, INC. and NAVICO HOLDING AS Plaintiffs,
v.
GARMIN INTERNATIONAL, INC. and GARMIN USA, INC. Defendants.

          MEMORANDUM OPINION AND ORDER

          RODNEY GILSTRAP UNITED STATES DISTRICT JUDGE.

         Before 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.

         I. BACKGROUND

         Plaintiffs 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 . . . .”).)

         Plaintiffs 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.)

         After 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.)

         II. LEGAL STANDARD

         A. Applicable Law

         Generally, 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 through conduct”).

         B. Applicable Standard

         Under 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 motion.”).

         Courts 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) ...


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