In two opinions issued the same day, Chief Judge Leonard P. Stark considered motions to transfer venue in light of TC Heartland and the Federal Circuit’s recent pronouncement on the venue defense in In re Micron Tech, Inc., 875 F.3d 1091 (Fed. Cir. 2017). Koninklijke KPN N.V. v. Kyocera Corporation, et al., C.A. No. 17-87-LPS-CJB (D. Del. Dec. 18, 2017) & 3G Licensing, SA, Koninklijke KPN N.V. and Orange S.A. v. HTC Corporation, et al., C.A. No. 17-83-LPS-CJB (D. Del. Dec. 18, 2017)
In Koninklijke v. Kyocera, the Court concluded that Defendant’s improper venue defense was not untimely as it was not available to it pre-TC Heartland. Id. at 2. Furthermore, Defendants’ filing of a 12(c) motion did not forfeit its improper venue challenge, where Defendants had responded to the complaint with a motion to dismiss for improper venue and “ha[d] repeatedly reaffirmed that it contents venue . . . and even moved to stay the case pending resolution of the instant motion.” Id. at 2-3. The Court then concluded that venue was improper for the domestic defendant headquartered in California, but not for the foreign, Japanese defendant, and further that the Court could exercise personal jurisdiction over the Japanese defendant under a theory of “dual jurisdiction”/”stream of commerce” Id. at 4-7. Accordingly, the Court concluded that
[A]n immediate transfer of the case as to both Defendants is not the most reasonable and appropriate outcome — particularly given [Plaintiff’s] objection, [its] contingent request that its case against [the domestic defendant] be dismissed, and the fact that ten other, related actions (involving the [patent-in-suit]) are pending before the undersigned Judge. . . . [T]he Court will provide Plaintiff an opportunity to dismiss its claims against [the domestic defendant] . . . and will then permit [the foreign defendant] to renew its motion to transfer venue (and address the totality of circumstances), or seek any other appropriate relief.”
Id. at 8.
The Court issued a substantially similar ruling in 3G Licensing (except it only decided the question of untimeliness, not forfeiture based on a 12(c) motion), and issued the same ruling that deferred decision pending Plaintiff’s decision to dismiss the case against the domestic defendant and the foreign defendant’s decision on seeking transfer. Id. at 6-7.