Petition for Writ of Mandamus to the United States District
Court for the District of Massachusetts in No.
1:16-cv-11249-WGY, Judge William G. Young.
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.
Taranto, Chen, and Hughes, Circuit Judges.
TARANTO, CIRCUIT JUDGE
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, 137 S.Ct. 1514 (2017), was not a
change of law that would make Rule 12(g)(2) and hence Rule
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.
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).
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.
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).
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
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 (2004) (quoting Roche
v. Evaporated Milk Ass'n, 319 U.S. 21, 26 (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).
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
(quoting Kerr v. U.S. Dist. Court for N. Dist. of
Cal., 426 U.S. 394, 403 (1976)). Third, "the
issuing court, in the exercise of its discretion, must be
satisfied that the writ is appropriate under the
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
(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
(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
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.
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.