United States District Court, S.D. Texas, Houston Division
MEMORANDUM AND ORDER
Hanovice Palermo United States Magistrate Judge
before the Court in this patent infringement suit is
Defendant Ondot Systems, Inc.'s "Rule 12(c) Motion
for Judgment on the Pleadings for Improper Venue, and, in the
alternative, Motion for Severance and Transfer of
Venue." ECF No. 101. As explained below, the Court
DENIES that motion.
Mantissa Corporation ("Mantissa") is the exclusive
licensee of, and holds all substantial rights and interests
in, U.S. Patent No. 7, 779, 456 (the '456 Patent) and
U.S. Patent No. 8, 353, 027 (the '027 Patent)
(collectively, the "patents-in-suit"). Mantissa
brings this suit under 35 U.S.C. § 271, alleging that
Defendants Ondot Systems, Inc. ("Ondot"), Lone Star
National Bank, and Lone Star National Bancshares-Texas, Inc.
(collectively, "Defendants")"have committed,
and continue to commit, direct acts of infringement of the
'456 Patent and the '027 Patent by making, using,
offering to sell and selling products, systems and services
embodying the patented invention." ECF No. 38 at ¶
Rule 12(c) of the Federal Rules of Civil Procedure, Ondot
moves to be dismissed from this suit on grounds that the
Southern District of Texas is an improper venue as to it. ECF
No. 101 at 1. In the alternative, Ondot requests, pursuant to
28 U.S.C. § 1406(a),  that the case as to it be severed from
the case against the other Defendants and transferred to the
Northern District of California. ECF No. 101 at 1, 4.
patent venue statute, codified at 28 U.S.C. § 1400(b),
provides that an action for patent infringement may be
brought in a judicial district where either: (1) "the
defendant resides" or (2) "the defendant has
committed acts of infringement and has a regular and
established place of business.
In Fourco Glass Co. v. Transmirra Products Corp.,
353 U.S. 222 (1957), the Supreme Court held that, for
purposes of § 1400(b), a domestic corporation
"resides" only in its state of incorporation.
Id. at 226. In so holding, the Supreme Court
rejected the argument that a provision of the general venue
statute, 28 U.S.C. § 1391(c), modified the patent venue
statute. Fourco, 353 U.S. at 228. On the contrary,
§ 1400(b) "is the sole and exclusive provision
controlling venue in patent infringement actions, and ... it
is not to be supplemented by the provisions of 28 U.S.C.
§ 1391(c)." Fourco, 353 U.S. at 229.
sixty years since Fourco was decided, the text of
§ 1400(b) has remained the same. In 1988, however,
Congress amended § 1391(c) to state:
(c) For purposes of venue under this chapter, a defendant
that is a corporation shall be deemed to reside in any
judicial district in which it is subject to personal
jurisdiction at the time the action is commenced....
Improvements and Access to Justice Act, Pub. L. No. 100-702,
§ 1013(a), 102 Stat. 4642(1988). Soon after the 1988
amendment took effect, the Federal Circuit, in VE Holding
Corp. v.Johnson Gas Appliance Co., 917 F.2d 1574 (Fed.
Cir. 1990), interpreted the phrase "[f]or purposes of
venue under this chapter" to mean that, "[o]n its
face, § 1391(c) clearly applies to § 1400(b), and
thus redefines the meaning of the term 'resides' in
that section." VE Holding at 1578. Concluding
that "[§] 1391(c) as it was in Fourco is
no longer, " id. at 1579, the Federal Circuit
held that, under § 1400(b), "venue in a patent
infringement case includes any district where there would be
personal jurisdiction over the corporate defendant at the
time the action is commenced." Id. at 1583.
Supreme Court did not grant review of the Federal
Circuit's decision in VE Holding. See 499 U.S.
922 (1991) (denying petition for writ of certiorari). But
neither did it affirm VE Holding's conclusion
that Congress, in enacting the 1988 amendment to the general
venue statute, effectively overruled Fourco's
interpretation of § 1400(b). See Missouri v.
Jenkins, 515 U.S. 70, 85 (1995) ("[T]he denial of a
writ of certiorari imports no expression of opinion upon the
merits of the case . . . ." (quoting United States
v. Carver, 260 U.S. 482, 490 (1923))); Maryland v.
Baltimore Radio Show, 338 U.S. 912, 919 (1950)
("[A]ll that a denial of a petition for a writ of
certiorari means is that fewer than four members of the Court
thought it should be granted, . . . such a denial carries
with it no implication whatever regarding the Court's
views on the merits of a case which it has declined to
22, 2017, the Supreme Court issued a decision in TC
Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct.
1514. In TC Heartland, the Supreme Court abrogated
VEHolding and reaffirmed
Fourco's holding that "the word
'residence' in § 1400(b) has a particular
meaning as applied to domestic corporations: It refers only
to the State of incorporation." TC Heartland,
137 S.Ct. at 1520 (brackets and footnote omitted). In its
decision, the Supreme Court rejected the argument that
"Congress changed the meaning of § 1400(b) when it
amended § 1391, " explaining that "[t]he