United States District Court, W.D. Virginia, Charlottesville Division
Glen E. Conrad United States District Judge
13, 2016, Smart Wearable Technologies Inc. ("Smart
Wearable") filed this action for patent infringement
against TomTom, Inc. ("TomTom"). Based on the
United States Supreme Court's recent decision in TC
Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct.
1514 (2017), TomTom has moved to transfer venue. TomTom
argues that venue is improper, since it is not incorporated
in the Commonwealth of Virginia and has no regular and
established place of business in this district. See
28 U.S.C. § 1400(b) ("Any civil action for patent
infringement may be brought in the judicial district where
the defendant resides, or where the defendant has committed
acts of infringement has a regular and established place of
business."); TC Heartland, 137 S.Ct. at 1517
(holding that "a domestic corporation 'resides'
only in its State of incorporation for purposes of the patent
response to the motion, Smart Wearable acknowledges that
venue is improper in this district. Smart Wearable argues,
however, that TomTom waived the defense of improper venue by
not challenging venue in a motion previously filed under Rule
12(c) of the Federal Rules of Civil Procedure or asserting
improper venue as an affirmative defense in the
defendant's answer. In reply, TomTom argues that the
defense of improper venue was not available until the Supreme
Court decided TC Heartland, and thus that the
defense was not waived.
reasons stated in the memorandum opinion issued on August 29,
2017 in the related case of Smart Wearable Technologies
Inc. v. Fitbit, Inc., the court agrees with TomTom that
TC Heartland significantly changed the law of venue
in actions for patent infringement. See Fitbit, No.
3:16CV00077, 2017 U.S. Dist. LEXIS 138969 (W.D. Va. Aug. 29,
2017) (Conrad, J.). For the first time in nearly three
decades, a defendant can successfully argue that venue is
improper in a district where it is subject to personal
jurisdiction but is not incorporated and has no regular and
established place of business. This precise argument was
previously foreclosed by controlling precedent. See In re
TC Heartland LLC, 821 F.3d 1338, 1345 (Fed. Cir. 2016),
rev'd, 137 S.Ct. 1514 (2017) (reaffirming VE
Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d
1574, 1584 (Fed. Cir. 1990), in which the United States Court
of Appeals for the Federal Circuit held that, in actions for
patent infringement, venue is proper in any judicial district
in which a corporate defendant is subject to personal
jurisdiction). Thus, as a practical matter, the legal basis
for TomTom's motion was unavailable until the Supreme
Court decided TC Heartland. TomTom therefore did not
waive the venue challenge by failing to assert improper venue
as an affirmative defense in its answer or as a basis for
judgment on the pleadings under Rule 12(c). See Holland
v. Big River Minerals Corp., 181 F.3d 597, 605 (4th Cir.
1999) (explaining that an exception to waiver exists
"when there has been an intervening change in the law
recognizing an issue that was not previously
available"); Gucci Am., Inc. v. Weixing Li. 768
F.3d 122, 135-36 (2d Cir. 2014) (holding that a defendant
cannot be deemed to have waived a defense that would have
been directly contrary to then-existing circuit precedent).
even if the court were to accept the plaintiffs argument that
the defense of improper venue was technically available to
TomTom, the court's decision on the issue of waiver would
remain the same. Based on the particular facts and
circumstances of this case, the court finds that TomTom did
not act unreasonably in failing to raise the issue earlier
and that granting the motion to transfer will not unduly
prejudice the plaintiff. As was true in Fitbit, this case is
still in the relatively early stages of litigation. The
Markman hearing is three months away and the trial
is not scheduled to begin until October of 2018. Moreover,
there is no indication of any intentional delay on the part
of TomTom in seeking to transfer venue. TomTom expressly
denied the venue allegation in its answer to the complaint
and then filed the instant motion less than twelve weeks
after TC Heartland was decided. Under these
circumstances, the court finds that TomTom has not waived the
defense of improper venue.
it is undisputed that TomTom is not incorporated in Virginia
and does not maintain a regular and established place of
business in this district, venue is improper. See 28 U.S.C.
§ 1400(b); TC Heartland, 137 S.Ct. at 1517. The
court finds that the interest of justice would be served by
transferring the case to a district in which it could have
been brought initially. See 28 U.S.C. § 1406(a).
Specifically, the court will transfer the case to the
District of Massachusetts, where TomTom is incorporated and
has its principal place of business.
reasons stated, the court will grant TomTom's motion to
transfer venue. The Clerk is directed to send copies of this
memorandum opinion and the accompanying order to all counsel
 The court notes that while TomTom did
not include improper venue in its list of affirmative
defenses, it expressly denied Smart Wearable's allegation
that venue is proper in this district. See Answer ¶ 4,
ECF No. 12.
Markman v. Westview Instruments.
52 F.3d 967 (Fed. Cir. 1995) (en banc),
affd.517 U.S. ...