United States District Court, E.D. Texas, Sherman Division
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE
before the Court is Defendant Actsoft, Inc.'s
(“Actsoft”) Motion to Dismiss With Prejudice
Second Amended Complaint for Patent Infringement Based on
Improper Venue (Dkt. #39). The Court, having considered the
relevant pleadings, finds that Actsoft's motion should be
November 14, 2016, Orthosie Systems, LLC
(“Orthosie”) sued Actsoft for infringement of
U.S. Patent No. 7, 430, 471 (“the '471
Patent”) (Dkt. #1). In response, Actsoft filed its
Motion to Dismiss and Alternative Motion for More Definite
Statement on January 31, 2017 (Dkt. #7). The basis for
Actsoft's motion to dismiss was failure to state a claim
upon which relief can be granted under Rule 12(b)(6). Actsoft
made no assertion that venue was improper in this motion. On
February 6, 2017, Orthosie amended its complaint (Dkt. #13).
Following the amendment, Actsoft filed its Motion to Dismiss
Amended Complaint for Patent Infringement and Alternative
Motion for More Definite Statement (Dkt. #15). Again, Actsoft
made no assertion that venue was improper. Instead, pursuant
to Federal Rule of Civil Procedure 12(b)(6), Actsoft argued
that Orthosie failed to meet the pleading standard
established by Federal Rule of Civil Procedure 8(a). Then,
Orthosie requested leave to file a second amended complaint
(Dkt. #16), which the Court granted on March 20, 2016 (Dkt.
#22). Subsequently, Actsoft filed its Motion to Dismiss with
Prejudice Second Amended Complaint for Patent Infringement
arguing that Orthosie's claims are based on legally
insufficient allegations under Federal Rule of Civil
Procedure 12(b)(6) (Dkt. #24). Actsoft made no argument that
venue was improper.
the Supreme Court issued its opinion in TC Heartland LLC
v. Kraft Food Brands Group LLC, Actsoft filed the
present motion to dismiss arguing that the Supreme
Court's new holding made venue improper in the Eastern
District of Texas (Dkt. #39).
venue is not proper in the district or division where the
case is filed, the case may be dismissed under Federal Rule
of Civil Procedure 12(b)(3). Alternatively, under §
1406(a), “[t]he district court of a district in which
is filed a case laying venue in the wrong division or
district shall dismiss, or if it be in the interest of
justice, transfer such case to any district or division in
which it could have been brought.” 28 U.S.C. §
Federal Rule of Civil Procedure 12(h)(1) “advises a
litigant to exercise great diligence in challenging personal
jurisdiction, venue, or service of process. If he wishes to
raise any of these defenses he must do so at the time he
makes his first defensive move.” Golden v. Cox
Furniture Mfg. Co. Inc., 683 F.2d 115, 118 (5th Cir.
1982). Under Federal Rule of Civil Procedure 12(h)(1),
“[a] party waives any defense listed in rule
12(b)(2)-(5) by . . . omitting it from a motion in the
circumstances described in Rule 12(g)(2).” Fed.R.Civ.P.
12(h)(1)(A). Federal Rule of Civil Procedure 12(g) provides
that “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.” Fed.R.Civ.P. 12(g)(2).
Accordingly, a party must assert any Rule 12(b)(3) motion
that is available at the time it files any Rule 12 motion.
Elbit Sys. Land & C41 Ltd. v. Hughes Network
Sys, LLC, No. 2:15-cv-37, 2017 WL 2651618, at *20 (E.D.
Tex. June 20, 2017) (citing e.g., Peacock v.
Ins. & Bonds Agency of Tex., PLLC, No.
3:12-CV-1710-D, 2012 WL 3702920, at *1 (N.D. Tex. Aug. 28,
filed its first Rule 12 motion on January 31, 2017, by filing
a 12(b)(6) motion to dismiss for failure to state a claim
upon which relief can be granted, and, in the alternative, a
12(e) motion for a more definite statement. At that time,
Actsoft did not attempt to file a motion to dismiss under
Federal Rule of Civil Procedure 12(b)(3) for improper venue.
Moreover, Actsoft filed two additional Rule 12 motions after
Orthosie amended its complaint, neither of these motions were
based on improper venue under 12(b)(3). Thus, Actsoft waived
its defense to improper venue by failing to timely move or
plead such a defense, assuming that such a defense was
available at the time Actsoft filed its 12(b)(6) motion.
Fed.R.Civ.P. 12(g)(2); Fed.R.Civ.P. 12(h)(1)(A).
argues that “the defense of improper venue was not
available to Actsoft until very recently.” (Dkt. #39 at
1). Actsoft contends that the Supreme Court's recent
holding in TC Heartland changed the law because it
overruled the Federal Circuit's decision in VE
Holding Corporation v. Johnson Gas Appliance Company,
917 F.2d 1574, 1584 (Fed. Cir. 1990). As such, Actsoft
maintains that it did not waive its improper venue defense.
the Supreme Court's decision in TC Heartland
does not constitute a change in the law. See Elbit
Sys., 2017 WL 2651618, at *20 (citing Cobalt Boats,
LLC v. Sea Ray Boats, Inc., No. 2:15-cv-21, 2017 WL
2556679, at *3 (E.D. Va. June 7, 2017)); Navico, Inc. v.
Garmin Int'l, Inc., No. 2:16-cv-190, Dkt. #163 (E.D.
Tex. July 11, 2017) (citing Cobalt Boats, 2017 WL
2556679, at *3; Elbit Sys., 2017 WL 2651618, at *20;
Chamberlin Grp., Inc. v. Techtronic Indus. Co., No
1:16-cv-6097, Dkt. #407 (N.D. Ill. June 28, 2017); iLife
Techs. Inc. v. Nintendo of America, Inc., No.
3:13-cv-4987, 2017 WL 2778006, at *7 (N.D. Tex. June 27,
2017); Amax, Inc. v. ACCO Brands Corp., No.
16-CV-10695-NMG, 2017 WL2818986, at *3 (D. Mass. June 29,
2017); Infrogation Corp. v. HTC Corp.,
16-CV-01902-H-JLB, 2017 WL 2869717, at *4 (S.D. Cal. July 5,
2017)); see also Koninklijke Philips v. ASUSTeK Computer
Inc., No. 1:15-cv-1125-GMS, Dkt. #215 (D. Del. July 19,
2017). Contra Westech Aersol Corp. v. 3M Co.,
3:13-cv-5067, 2017 WL 2671297, at *2 (E.D. Wash. June 21,
2107); Hand Held Prods. Inc. v. Code Corp.,
2:17-cv-167, Dkt. # 63 (D.S.C. July 18, 2017). The Supreme
Court in TC Heartland reaffirmed its earlier holding
found in Fourco Glass Company v. Transmirra Products
Corporation that 28 U.S.C. § 1400(b) is the
“sole and exclusive provision controlling venue in
patent infringement actions.” 353 U.S. 222, 229 (1957).
Accord Elbit Sys., 2017 WL 2651618, at *20 (citing
Cobalt Boats, 2017 WL 2556679, at *3);
Navico, No. 2:16-cv-190, Dkt. #163, at *5. Further,
the Supreme Court in TC Heartland explained that in
“Fourco, this Court definitively and
unambiguously held that the word ‘reside[nce]' in
§ 1400(b) has a particular meaning as applied to
domestic corporations: It refers only to the State of
incorporation.” TC Heartland LLC v. Kraft Food
Group Brands LLC, 137 S.Ct. 1514, 1520 (2014)
(alteration in original).
VE Holding allowed parties to use 28 U.S.C. §
1391(c) to establish venue, this holding did not overrule
Fourco “because the Federal Circuit cannot
overturn Supreme Court precedent.” Elbit Sys.,
2017 WL 2651618, at *20 (citing Thurston Motor Lines,
Inc. v. Jordan K. Rand, Ltd., 460 U.S. 533, 535 (1983)).
Accord Navico, Inc., No. 2:16-cv-190, Dkt. #163.
Accordingly, the defense of improper venue, based on §
1400(b)'s definition of residence established in
Fourco, was available to Actsoft, and has been
available to all defendants, since 1957. Thus, even though
Actsoft initially relied on the Federal Circuit's holding