In re: Oath Holdings, Inc., No. 18-157 (Fed. Cir. 2018)Annotate this Case
Plaintiffs sued Oath in the Eastern District of New York, alleging patent infringement. Oath conducts business in New York, but is incorporated in Delaware; it does not have “a regular and established place of business” in the Eastern District as defined in the patent statute venue provision, 28 U.S.C. 1400(b) In 2016, Oath moved under FRCP 12(b)(6) to dismiss for failure to state a claim but did not object to venue. Oath withdrew its motion and filed an answer, admitting the complaint’s venue allegations but expressly reserving the right to challenge venue based upon any change in law, including the Supreme Court’s "TC Heartland" decision. The Supreme Court subsequently issued that decision, holding that, under section 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation,” rejecting Federal Circuit precedent that a domestic corporation “resides” in any judicial district in which the defendant is subject to personal jurisdiction. Oath moved to dismiss. Plaintiffs argued that Oath had waived the venue defense because it was “available” in 2016. The district court agreed. In November 2017, the Federal Circuit held (Micron) that “TC Heartland changed the controlling law ... making the waiver rule ... inapplicable” but that venue rights might be forfeited by delay in asserting them in some circumstances. On reconsideration, the district court again denied Oath’s motion. The Federal Circuit remanded with instructions to either dismiss or transfer the case. The district court provided no analysis of why these circumstances supported a finding of forfeiture under section 1406(b) and erred in failing to apply the Micron precedent.