In re Micron Tech., Inc.

• Decision Date: 15 November 2017
• Docket Number: 2017-138
• Citation: 875 F.3d 1091
• Parties: IN RE: MICRON TECHNOLOGY, INC., Petitioner
• Court: U.S. Court of Appeals — Federal Circuit

875 F.3d 1091

IN RE: MICRON TECHNOLOGY, INC., Petitioner

2017-138

United States Court of Appeals, Federal Circuit.

Decided: November 15, 2017

Jared Bobrow, Weil, Gotshal & Manges LLP, Redwood Shores, CA, for petitioner. Also represented by Michele Gauger, Aaron Y. Huang, Jeremy Jason Lang; Megan Wantland, Washington, DC.

William D. Belanger, Pepper Hamilton LLP, Boston, MA, for respondent President and Fellows of Harvard College. Also represented by Ryan C. Deck, Maia H. Harris, Gregory D. Len.

Before Taranto, Chen, and Hughes, Circuit Judges.

ON PETITION

Taranto, Circuit Judge.

Micron Technology, Inc., petitions for a writ of mandamus to set aside the district court's denial of Micron's motion, made pursuant to 28 U.S.C. § 1406(a), to dismiss or to transfer the case for improper venue. The district court held that Micron had waived its venue objection. The court relied on the waiver rule of Federal Rule of Civil Procedure 12(h)(1)(A), which, as relevant here, provides for waiver, based on the incorporated terms of Rule 12(g)(2), when a defendant omits an available venue defense from an initial motion to dismiss. The court concluded that the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands LLC , ––– U.S. ––––, 137 S.Ct. 1514, 197 L.Ed.2d 816 (2017), was not a change of law that would make Rule 12(g)(2) and hence Rule 12(h)(1)(A) inapplicable.

Many district courts have faced similar situations since TC Heartland was decided, and the result has been widespread disagreement over the change-of-law question relevant to waiver under Rule 12(g)(2) and (h)(1)(A). We answer that question and clarify the basic legal framework governing determinations of forfeiture of a venue defense. We conclude that TC Heartland changed the controlling law in the relevant sense: at the time of the initial motion to dismiss, before the Court decided TC Heartland , the venue defense now raised by Micron (and others) based on TC Heartland 's interpretation of the venue statute was not "available," thus making the waiver rule of Rule 12(g)(2) and (h)(1)(A) inapplicable. But that waiver rule, we also conclude, is not the only basis on which a district court might reject a venue defense for non-merits reasons, such as by determining that the defense was not timely presented. A less bright-line, more discretionary framework applies even when Rule 12(g)(2) and hence Rule 12(h)(1)(A) does not. We grant the petition, vacate the order, and remand for consideration of forfeiture under that framework.

I

In June 2016, President and Fellows of Harvard College (Harvard) filed this patent-infringement case in the District of Massachusetts against Micron, which is incorporated in Delaware and has its principal place of business in Idaho. Harvard alleged that venue in the District of Massachusetts is proper in this matter under 28 U.S.C. §§ 1391(b) and 1400. On August 15, 2016, Micron moved under Federal Rule of Civil Procedure 12(b)(6) to dismiss the complaint for failure to state a claim, but it did not include an objection to venue under Rule 12(b)(3).

In December 2016, the Supreme Court granted review in the TC Heartland case to address the correct interpretation of the term "resides" in 28 U.S.C. § 1400(b), which addresses venue in patent cases. Under that provision, patent-infringement actions "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 late May 2017, the Court held that, under § 1400(b), "a domestic corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute." TC Heartland , 137 S.Ct. at 1517.

After the decision in TC Heartland , Micron filed a motion, pursuant to 28 U.S.C. § 1406(a) and Rule 12(b)(3), to dismiss or to transfer the case on the ground that the District of Massachusetts is not a proper venue for this case. The district court denied the motion. It concluded that, under Rule 12(g)(2) and (h)(1)(A), Micron had waived its venue defense by not objecting to venue in its first motion to dismiss filed in August 2016. The court rejected Micron's contention that TC Heartland was a change of law that made the Rule 12(h)(1)(A) waiver rule inapplicable. President & Fellows of Harvard Coll. v. Micron Tech., Inc. , No. 1:16-cv-11249-WGY, 2017 WL 3749419, at *2, 4 (D. Mass. Aug. 30, 2017).

Micron petitions for a writ of mandamus, asking us to reverse the district court's order and direct that the case either be dismissed for improper venue or transferred to the District of Delaware or the District of Idaho. Harvard asks this court to deny the petition or, if we do not deny it outright, to vacate the order and to remand for consideration of the portion of § 1400(b) that allows venue "where the defendant has committed acts of infringement and has a regular and established place of business." The district court, having found that Micron waived its venue objection, did not decide whether venue is proper under that part of § 1400(b).

II

A

The court may issue a writ of mandamus as "necessary or appropriate in aid of [its] ... jurisdiction[ ] and agreeable to the usages and principles of law." 28 U.S.C. § 1651(a). Traditionally, the writ has been used "to confine [the court to which the requested mandamus would be directed] to a lawful exercise of its prescribed jurisdiction." Cheney v. U.S. Dist. Court for Dist. of Columbia , 542 U.S. 367, 380, 124 S.Ct. 2576, 159 L.Ed.2d 459 (2004) (quoting Roche v. Evaporated Milk Ass'n , 319 U.S. 21, 26, 63 S.Ct. 938, 87 L.Ed. 1185 (1943) ). "Although courts have not confined themselves to an arbitrary and technical definition of ‘jurisdiction,’ only exceptional circumstances amounting to a judicial usurpation of power or a clear abuse of discretion will justify" issuance of the writ. Id. (internal citations and quotation marks omitted).

There are three general requirements for mandamus. First, the petitioner must "have no other adequate means to attain the relief" desired. Id. Second, the petitioner must show that the "right to issuance of the writ is ‘clear and indisputable.’ " Id. at 381, 124 S.Ct. 2576 (quoting Kerr v. U.S. Dist. Court for N. Dist. of Cal. , 426 U.S. 394, 403, 96 S.Ct. 2119, 48 L.Ed.2d 725 (1976) ). Third, "the issuing court, in the exercise of its discretion, must be satisfied that the writ is appropriate under the circumstances." Id.

Mandamus may be used in narrow circumstances where doing so is important to "proper judicial administration." La Buy v. Howes Leather Co. , 352 U.S. 249, 259–60, 77 S.Ct. 309, 1 L.Ed.2d 290 (1957). More specifically, the Supreme Court has confirmed that, in some circumstances, mandamus can be an appropriate means for the appellate court to correct a district court's answers to "basic, undecided" legal questions. Schlagenhauf v. Holder , 379 U.S. 104, 110, 85 S.Ct. 234, 13 L.Ed.2d 152 (1964). This court has applied those standards, including, recently, in the venue context. E.g. , In re Cray Inc. , 871 F.3d 1355, 1358–59 (Fed. Cir. 2017) ; see also In re Queen's Univ. at Kingston , 820 F.3d 1287, 1291 (Fed. Cir. 2016) (noting that mandamus may be appropriate to "further supervisory or instructional goals" regarding "issues [that] are unsettled and important") (citation omitted); In re BP Lubricants USA Inc. , 637 F.3d 1307, 1313 (Fed. Cir. 2011) ; In re Volkswagen of Am., Inc. , 545 F.3d 304, 319 (5th Cir. 2008) (en banc) (issuing writ of mandamus regarding venue-transfer order and noting that such writs "are supervisory in nature and are particularly appropriate when the issues also have an importance beyond the immediate case").

We find this case to present special circumstances justifying mandamus review of certain basic, unsettled, recurring legal issues over which there is considerable litigation producing disparate results. After the Supreme Court decided TC Heartland , corporate defendants in many pending patent cases newly presented venue objections under 28 U.S.C. § 1400(b), asserting lack of residence in the judicial district where the case was filed. In many of those cases, the timing of the venue objection presented a question about waiver under Rule 12(g)(2) and (h)(1)(A) —in particular, whether TC Heartland effected a change of controlling law such that the Rule 12(h)(1)(A) waiver rule was inapplicable. The district courts have deeply split on the answer. All of that is made clear in the district court's decision in this case, so we need not multiply citations. Harvard , 2017 WL 3749419, at *3–4.

Answering the fundamental change-of-law question regarding the applicability of Rule 12(g)(2) and (h)(1)(A) —as well as the equally fundamental question whether those provisions provide the only basis for finding that a defendant can no longer make a venue objection—is important to proper judicial administration. Doing so would reduce the widespread disparities in rulings on the fundamental legal standards, while leaving the exercise of such discretion as is available in applying those standards subject to case-by-case review. In these circumstances, we think that mandamus is a proper vehicle for considering the fundamental legal issues presented in this case and many others.

B

Section 1406(a) of Title 28 of the United States Code provides that "[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." A defendant objecting to venue may file a motion to dismiss for improper venue under Federal Rule of Civil Procedure 12(b)(3). The ability to file a Rule 12(b)(3) motion, however, is constrained by other provisions of that Rule.

What is key for present purposes is Rule 12(h)(1), which provides:

When Some [Defenses] Are Waived. A party waives any defense listed in Rule 12(b)(2)–(5) by:

(A)

...