United States District Court, D. Massachusetts
MEMORANDUM & ORDER
WILLIAM G. YOUNG, DISTRICT JUDGE.
and Fellows of Harvard College (“Harvard”) has
brought this action against Micron Technology, Inc.
(“Micron”), alleging that Micron infringed two of
Harvard's patents. Micron previously filed a motion to
dismiss for failure to state a claim, which this Court
granted without prejudice. Harvard then filed an amended
complaint. About five months later, the Supreme Court issued
its decision in TC Heartland LLC v.
Kraft Foods Group Brands LLC, 137 S.Ct. 1514 (2017),
affirming its previous opinion regarding where a corporate
defendant resides for venue purposes in patent infringement
actions. Micron now moves to dismiss Harvard's amended
complaint for improper venue, arguing that TC
Heartland constituted a change in the law that ought be
given retroactive effect. Harvard opposes, arguing that
because TC Heartland merely reaffirmed a previous
Supreme Court holding, the decision is not intervening law
sufficient to preclude Micron's waiver of its venue
challenge. Because TC Heartland has resulted in a
deluge of similar motions in other patent cases, this Court
takes the opportunity to explain its reasoning for denying
Micron's motion to dismiss.
initially filed a complaint against Micron on June 24, 2016.
Compl., ECF No. 1. Micron responded on August 15, 2016,
moving to dismiss the complaint for failure to state a claim.
Micron's Mot. Dismiss Compl., ECF No. 19. After an oral
hearing, the Court granted this motion on October 13, 2016,
giving Harvard thirty days to file a motion for leave to file
an amended complaint. Electronic Clerk's Notes, ECF No.
November 14, 2016, Harvard moved for leave to file an amended
complaint, Pl.'s Mot. Leave File Am. Compl., ECF No. 35,
which Micron opposed, Def. Micron's Opp'n Pl.'s
Mot. Leave File Am. Compl., ECF No. 39. On January 30, 2017,
this Court granted Harvard leave to file its amended
complaint. Mem. and Order, ECF No. 49. Harvard filed its
amended complaint that same day. Am. Compl., ECF No. 50.
February 10, 2017, Micron filed a motion to stay the action,
pending inter partes reviews by the United States
Patent and Trademark Office of the patents at issue in this
case. Def. Micron's Mot. Stay, ECF No. 54. On February
27, 2017, Micron answered Harvard's amended complaint.
Micron's Answer Harvard's Am. Compl., ECF No. 58. On
March 20, 2017, Micron filed an amended answer and
counterclaim to Harvard's amended complaint. Micron's
First Am. Answer Harvard's Am. Compl., ECF No. 69.
March 30, 2017, this Court held a motion hearing regarding
Micron's motion to stay. Electronic Clerk's Notes,
ECF No. 71. At that time, Micron withdrew the motion to stay
and the Court held a scheduling conference, putting the case
on the running trial list for April 2018. Id. The
following day, Harvard filed an answer to Micron's
counterclaim. Harvard's Answer Countercl. Micron, ECF No.
31, 2017, Micron filed a supplemental notice of request for
inter partes review. Def. Micron's Suppl. Notice
Req. Inter Partes Review, ECF No. 80.
2, 2017, Micron filed the instant motion to dismiss for
improper venue. Micron's Rule 12(b)(3) Mot. Dismiss
Improper Venue, ECF No. 83. The parties fully briefed the
issues. Pl.'s Opp'n Def. Micron's Rule 12(b)(3)
Mot. Dismiss Improper Venue (“Pl.'s
Opp'n”), ECF No. 86; Pl.'s Sur-Reply Opp'n
Def. Micron's Rule 12(b)(3) Mot. Dismiss Improper Venue
(“Pl.'s Sur-Reply”), ECF No. 93; Def.
Micron's Mem. Law Supp. Rule 12(b)(3) Mot. Dismiss
Improper Venue (“Def.'s Mem.”), ECF No. 84;
Def. Micron's Reply Supp. Mot. Dismiss Improper Venue
(“Def.'s Reply”), ECF No. 89. After hearing
oral arguments on July 24, 2017, this Court took the matter
under advisement. Electronic Clerk's Notes, ECF No. 96.
is chartered by and has its principal place of business in
the Commonwealth of Massachusetts. Am. Compl. ¶ 1.
Micron is incorporated in Delaware and has its principal
place of business in Idaho. Id. ¶ 2; Def.'s
Mem. 1. Harvard has sued Micron under the patent laws of the
United States, Am. Compl. ¶ 3, alleging that Micron has
committed acts of patent infringement within the
Commonwealth, id. ¶ 4. Harvard has alleged that
venue is proper in this district pursuant to 28 U.S.C.
sections 1391(b) and 1400. Id. ¶ 5.
argues this Court ought dismiss Harvard's amended
complaint due to improper venue, Def.'s Mem. 5-6, because
Micron has not waived this argument, id. at 6-7.
Harvard responds that ...