United States District Court, D. Utah, Central Division
MEMORANDUM DECISION AND ORDER
A. KIMBALL, UNITED STATES DISTRICT JUDGE
matter is before the court on Defendant SalesLoft's Rule
12(b)(3) Motion to Dismiss or Transfer for Improper Venue. On
September 13, 2017, the court held a hearing on the motions.
At the hearing, Plaintiff was represented by Paul B. Gaffney
and Samuel C. Straight, and Defendant was represented by H.
Dickson Burton. The court took the motion under advisement.
After carefully considering the parties' memoranda and
the law and facts relevant to the pending motion, the court
issues the following Memorandum Decision and Order.
August 4, 2016, InsideSales filed its Complaint for alleged
patent infringement against SalesLoft. In the Complaint,
InsideSales alleges that venue is proper in this district
because SalesLoft was subject to personal jurisdiction in
this district and has sold allegedly infringing products in
this district. SalesLoft is a Delaware corporation with its
principal place of business in Atlanta, Georgia. On December
1, 2016, SalesLoft filed two motions to dismiss based on
unpatentability under 35 U.S.C. § 101 and failure to
state a claim upon which relief can be granted.
December 14, 2016, the United States Supreme Court granted
certiorari in TC Heartland LLC v. Kraft Foods Group
Brands LLC, 821 F.3d 1338 (Fed. Cir.), cert.
granted 137 S.Ct. 614 (2016), which raised the issue of
proper venue in patent cases. On May 22, 2017, the Supreme
Court issued its decision in TC Heartland, 137 S.Ct.
1514 (2017), reversing the Federal Circuit and explaining
that venue in a patent case is proper only where a defendant
is incorporated or where its regular and established place of
business is located.
time the Supreme Court decided TC Heartland, this
court had SalesLoft's motions to dismiss under
advisement. Three days after the TC Heartland
decision, SalesLoft filed a notice of supplemental authority
regarding a new case relating to unpatentability under 35
U.S.C. § 101. SalesLoft did not notify this court of the
TC Heartland decision or seek to supplement its
motions to dismiss to add a venue challenge. On June 13,
2017, this court denied SalesLoft's motions to dismiss.
27, 2017, SalesLoft filed the present motion to dismiss based
on improper venue under TC Heartland. SalesLoft has
not yet answered the Complaint.
Motion to Dismiss
moves to dismiss or transfer this action for improper venue
based on the Supreme Court's recent decision in TC
Heartland, 137 S.Ct. 1514 (2017). The patent venue
statute, 28 U.S.C. § 1400(b), provides that “[a]ny
civil action for patent infringement may be brought in the
judicial district where the defendant resides, or where the
defendant has committed acts of infringement and has a
regular and established place of business.” In TC
Heartland, the Supreme Court concluded that “for
purposes of § 1400(b) a domestic corporation
‘resides' only in its State of
incorporation.” 137 S.Ct. at 1517.
TC Heartland, the only proper venues in this case
are the District of Delaware, where SalesLoft is
incorporated, or the Northern District of Georgia, where
SalesLoft has its principal place of business. InsideSales
makes no allegations that SalesLoft has any facilities in the
District of Utah, only that SalesLoft has allegedly sold
infringing products in Utah. Accordingly, SalesLoft brought
this motion to dismiss for improper venue under Rule 12(b)(3)
of the Federal Rules of Civil Procedure.
a Rule 12(b)(3) motion for improper venue is subject to
waiver, and SalesLoft has already brought two prior motions
to dismiss in this case. Under Rule 12(h) of the Federal
Rules of Civil Procedure, “[a] party waives any defense
listed in Rule 12(b)(2) -(5) by: (A) omitting it from a
motion in the circumstances described in Rule
12(g)(2).” Fed.R.Civ.P. 12(h)(1). Rule 12(g)(2)
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.” Id.
12(g)(2) (emphasis added).
argues that it its Rule 12(b)(3) motion is timely because it
was not available to it prior to the TC Heartland
decision. SalesLoft filed its prior motions to dismiss on
December 1, 2016. At that time, the Supreme Court had not
granted certiorari in TC Heartland. InsideSales,
however, argues that SalesLoft waived its venue challenge
because SalesLoft could have advanced the same argument as
was advanced in TC Heartland and SalesLoft should
have notified this court of the TC Heartland
decision prior to this court's ruling on SalesLoft's
original motions to dismiss.
are divided as to whether the improper venue basis for
SalesLoft's motion was available prior to the TC
Heartland decision. “[A]n exception to the general
rule of waiver . . . exists . . . when there has been an
intervening change in the law recognizing an issue that was
not previously available.” Holland v. Big River
Minerals Corp., 181 F.3d 597, 605 (4th Cir. 1999). The
parties, as well as courts around the country, dispute
whether TC Heartland changed the law. The TC
Heartland Court stated that it was not announcing a new
standard but simply reaffirming the venue rule it had
established sixty years prior. 137 S.Ct. at 1520. In
reversing the Federal Circuit, the Supreme Court relied on
its interpretation of the term “resides” in its
decision in Fourco Glass Co. ...