United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE.
to the FedEx Defendants' advertising, they are
“everywhere” you need them to be. However, in
their Motion to Dismiss (Dkt. No. 84) (“the
Motion”) Defendants argue that they are everywhere but
this District, at least with respect to venue. The Court
disagrees. Accordingly, and for the reasons set forth herein,
Defendants' Motion is DENIED.
case relates to allegations of patent infringement by
Plaintiff Intellectual Ventures II LLC (“Intellectual
Ventures” or “Plaintiff”) against FedEx
Corporation (“FedEx Corp.”), Federal Express
Corporation (“FedEx Express”), FedEx Ground
Package System, Inc. (“FedEx Ground”), FedEx
Freight, Inc. (“FedEx Freight”), FedEx Custom
Critical, Inc. (“FedEx Custom Critical”), FedEx
Office and Print Services, Inc. (“FedEx Office”),
and GENCO Distribution System, Inc. (now known as
“FedEx Supply Chain”) (collectively
“Defendants”). (Dkt. No. 1.)
alleges that Defendants infringe five different patents: U.S.
Patent Nos. 6, 633, 900 (“the '900 Patent”);
6, 909, 356 (“the '356 Patent”); 7, 199, 715
(“the '715 Patent”); 8, 494, 581 (“the
'581 Patent”); and 9, 047, 586 (“the '586
Patent”) (collectively “the Asserted
Patents”). These patents generally relate to shipping
and transportation technology.
Corp. is a Delaware corporation with its principal place of
business in Memphis, Tennessee. (Dkt. No. 84 at 3.) It
operates as a holding company for a variety of wholly-owned
subsidiaries, including the other defendants in this case, to
which the parent FedEx Corp. provides “general
financial, legal, and business guidance . . . in the
logistics, freight, and package transportation, and print and
copying fields.” (Dkt. No. 32 ¶ 2.) These
subsidiaries are organized into several business segments
that all operate under the “FedEx” brand,
including FedEx Services, FedEx Express, FedEx Ground, and
FedEx Freight. (Dkt. No. 86-30.) However, each defendant in
this case, including those organized in the same business
segment, are separately incorporated. (Dkt. No. 84 at 3.)
Office is a Texas corporation with its principal place of
business in Plano, Texas. (Dkt. No. 84 at 4.) It exists as
part of the FedEx Services business segment. (Dkt. No.
86-30.) Plaintiff alleges that FedEx Office operates at least
17 locations in this District and that FedEx Office engages
in infringing activity from these locations. (See,
e.g., Dkt. No. 85 at 6 (“FedEx Office uses the
Accused Instrumentalities in the District at those stores . .
Express is a Delaware corporation with its principal place of
business in Memphis, Tennessee. (Dkt. No. 84 at 3.) It exists
as part of its own FedEx Express business segment. (Dkt. No.
86-30.) Plaintiff alleges that FedEx Express provides
infringing services in this District, including from FedEx
Office Print and Ship Centers. (Dkt. No. 85 at 5.)
Ground is a Delaware corporation with its principal place of
business in Moon Township, Pennsylvania. (Dkt. No. 84 at 3.)
It exists as part of its own FedEx Ground business segment.
(Dkt. No. 86-30.) Plaintiff alleges, inter alia,
that FedEx Ground infringes the Asserted Patents through the
use of instrumentalities, such as the MC9500, which FedEx
Ground uses as part of services carried out in this District,
including as part of services it offers from physical
locations in this District. (Dkt. No. 85 at 6.)
Supply Chain, formerly known as GENCO Distribution Systems,
Inc., is a Pennsylvania corporation with its principal place
of business in Pittsburgh, Pennsylvania. (Dkt. No. 84 at 4.)
It operates as part of the FedEx Ground business segment.
(Dkt. No. 86-30.) Plaintiff alleges that FedEx Supply Chain
provides infringing services in this District through the use
of, inter alia, RFID tags. (Dkt. No. 1 at
¶¶ 16, 61.)
Freight is an Arkansas corporation with its principal place
of business in Harrison, Arkansas. (Dkt. No. 84 at 3.) It
exists as part of its own FedEx Freight business segment.
(Dkt. No. 86-30.) Defendants admit that FedEx Freight
operates several service centers throughout Texas, including
at least six locations in this District. (Dkt. No. 32 at
¶ 16.) Plaintiff further alleges that FedEx Freight
infringes the Asserted Patents at these service centers and
in distributing freight in this District. (Dkt. No. 85 at 6.)
Custom Critical is an Ohio corporation with its principal
place of business in Uniontown, Ohio. (Dkt. No. 84 at 4.) It
operates as part of the FedEx Freight business segment. (Dkt.
No. 86-30.) Plaintiff alleges that FedEx Custom Critical
provides infringing products and services from and in this
District. (Dkt. No. 85 at 7.)
filed this case on August 31, 2016. (Dkt. No. 1.) Defendants
filed their Answer on November 10, 2016. (Dkt. No. 32.) In
that Answer, Defendants included a single sentence objecting
to venue: “FedEx denies that venue is proper in this
District under 28 U.S.C. § 1400(b). See In re TC
Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016),
petition for cert. filed, No. 16-341 (Sept. 15,
2016).” (Id.) Defendants did not file any
other motion under Rule 12.
November 11, 2016, Defendant filed a Motion to Transfer under
§ 1404. (Dkt. No. 34.) A hearing was held on this motion
on February 16, 2016. (Dkt. Nos. 56, 60). However, at the
hearing Defendants never raised an objection to venue, never
mentioned § 1406, and never discussed the petition in
TC Heartland. (Dkt. No. 60.) Moreover, for the next
several months, Defendants actively litigated this case.
(Dkt. No. 86-1.) For example, Defendants agreed to the
appointment of a mediator (id. at 2), served initial
disclosures (id.), appeared before this Court
multiple times (Dkt. Nos. 35, 36, 54), engaged in extensive
discovery, including document and source code production
(Dkt. No. 86-1 at 2-6), and filed a joint claim construction
statement with the Court (id. at 6). During this
same time, Defendants filed several petitions for Inter
Partes Review (“IPR”) of the Asserted
Patents. (Id. at 2.) Institution decisions on these
petitions, granting in part and denying in part, were
announced on July 25, 2017. (Id. at 6.)
27, 2017, after litigating this case for more than a year and
more than two months after the Supreme Court decided TC
Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct.
1514 (2017), Defendants filed the instant Motion asserting
that venue in the Eastern District of Texas was improper and
seeking dismissal or transfer under 28 U.S.C. § 1406.
(Dkt. No. 84 at 2 (“Because venue is improper, 28
U.S.C. § 1406(a) mandates that the Court either dismiss
the case, or transfer to where it could have been brought, if
in the interests of justice.”).)
relates to the locale in which a suit may properly be
instituted, and not to the power of the court to hear the
case or reach the parties.” Minnesota Min. &
Mfg. Co. v. Eco Chem, Inc., 757 F.2d 1256, 1264 (Fed.
Cir. 1985) (citing Neirbo Co. v. Bethlehem Corp.,
308 U.S. 165, 167- 68 (1939)). For this reason, the venue
requirement is regarded as a “privilege” afforded
to defendants, a privilege that may be surrendered “by
failure to assert [an objection] seasonably, by formal
submission in a cause, or by submission through
conduct.” Neirbo, 308 U.S. at 168. See
also 28 U.S.C. § 1406(b) (“Nothing in ...