In Re: Micron Technology, Inc. , 875 F.3d 1091 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
IN RE: MICRON TECHNOLOGY, INC.,
Petitioner
______________________
2017-138
______________________
On 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.
______________________
Decided: November 15, 2017
______________________
JARED BOBROW, Weil, Gotshal & Manges LLP, Red-
wood 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.
______________________
ON PETITION
______________________
Before TARANTO, CHEN, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
2 IN RE: MICRON TECH., INC.
Micron Technology, Inc., petitions for a writ of man-
damus 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 Heart-
land 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 12(h)(1)(A) inapplicable.
Many 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 frame-
work 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 waiv-
er 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 considera-
tion of forfeiture under that framework.
IN RE: MICRON TECH., INC. 3
I
In June 2016, President and Fellows of Harvard Col-
lege (Harvard) filed this patent-infringement case in the
District of Massachusetts against Micron, which is incor-
porated in Delaware and has its principal place of busi-
ness 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).
In December 2016, the Supreme Court granted review
in the TC Heartland case to address the correct interpre-
tation 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.
After the decision in TC Heartland, Micron filed a mo-
tion, 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).
4 IN RE: MICRON TECH., INC.
Micron 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 considera-
tion 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 § 1400(b).
II
A
The court may issue a writ of mandamus as “neces-
sary 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 Co-
lumbia, 542 U.S. 367, 380 (2004) (quoting Roche v. Evapo-
rated 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).
There 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)).
IN RE: MICRON TECH., INC. 5
Third, “the issuing court, in the exercise of its discretion,
must be satisfied that the writ is appropriate under the
circumstances.” Id.
Mandamus may be used in narrow circumstances
where doing so is important to “proper judicial admin-
istration.” 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 ques-
tions. Schlagenhauf v. Holder, 379 U.S. 104, 110 (1964).
This court has applied those standards, including, recent-
ly, 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 appropri-
ate when the issues also have an importance beyond the
immediate case”).
We find this case to present special circumstances jus-
tifying 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 objec-
tions under 28 U.S.C. § 1400(b), asserting lack of resi-
dence 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
6 IN RE: MICRON TECH., INC.
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.
Answering 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. In these circumstances,
we think that mandamus is a proper vehicle for consider-
ing the fundamental legal issues presented in this case
and many others.
B
Section 1406(a) of Title 28 of the United States Code
provides that “[t]he district court of a district in which is
filed a case laying venue in the wrong division or district
shall dismiss, or if it be in the interest of justice, transfer
such case to any district or division in which it could have
been brought.” A defendant objecting to venue may file a
motion to dismiss for improper venue under Federal Rule
of Civil Procedure 12(b)(3). The ability to file a Rule
12(b)(3) motion, however, is constrained by other provi-
sions of that Rule.
What is key for present purposes is Rule 12(h)(1),
which provides:
When Some [Defenses] Are Waived. A party waives
any defense listed in Rule 12(b)(2)–(5) by:
IN RE: MICRON TECH., INC. 7
(A) omitting it from a motion in the cir-
cumstances described in Rule 12(g)(2); or
(B) failing to either:
(i) make it by motion under this
rule; or
(ii) include it in a responsive
pleading or in an amendment al-
lowed by Rule 15(a)(1) as a matter
of course.
As relevant here, Rule 12(h)(1)(A) says that a venue
defense under Rule 12(b)(3) is waived if it is omitted from
a motion in the circumstances described in Rule 12(g)(2).
Rule 12(g)(2), in relevant part, states that “a party
that makes a motion under this rule must not make
another motion under this rule raising a defense or objec-
tion that was available to the party but omitted from its
earlier motion.” 1 In particular, subject to one crucial
condition, Rule 12(g)(2) covers a situation in which a
defendant has made a Rule 12(b) motion to dismiss but
omitted from that motion a venue objection under Rule
12(b)(3)—which is what Micron did in August 2016. The
crucial condition for Rule 12(g)(2) to apply, and hence for
the unmade venue objection to be waived under Rule
12(h)(1)(A), is that the venue defense had to be “available
to the [defendant]” when the defendant made the initial
Rule 12(b) motion.
Accordingly, the Rule 12 waiver question presented
here is whether the venue defense was “available” to
Micron in August 2016. We conclude as a matter of law
that it was not. The venue objection was not available
1 Rule 12(g)(2) excepts objections based on Rule
12(h)(2) and (3), which are not applicable here.
8 IN RE: MICRON TECH., INC.
until the Supreme Court decided TC Heartland because,
before then, it would have been improper, given control-
ling precedent, for the district court to dismiss or to
transfer for lack of venue.
This is a common-sense interpretation of Rule
12(g)(2). Where controlling law precluded the district
court, at the time of the motion, from adopting a defense
or objection and on that basis granting the motion, it is
natural to say, in this context, that the defense or objec-
tion was not “available” to the movant. The law of prece-
dent is part of what determines what law controls. The
language “was available” focuses on the time of the mo-
tion in the district court, not some future possibility of
relief on appeal, thus pointing toward how the district
court may permissibly act on the motion at the time—i.e.,
where the motion is for dismissal, whether it can dismiss
the case and thereby avoid wasting resources on contin-
ued litigation. Because what Rule 12(g)(2) addresses is
the omission of a defense or objection from an initial
motion for one of the forms of relief specified in the Rule,
subsection (g)(2) is naturally understood to require the
availability of that relief at the time of the initial motion
(here, dismissal based on improper venue). That under-
standing is supported by the purpose of Rule 12(g)(2),
which is to consolidate defenses and to promote early
resolution of such issues. See Fed. R. Civ. P. 12 advisory
committee notes (1966) (“[Rule 12(g)’s] required consolida-
tion of defenses and objections in a Rule 12 motion is
salutary in that it works against piecemeal consideration
of a case.”); see also id. (“Amended subdivision (h)(1)(A)”
specifies waiver of available defenses not raised in a pre-
answer Rule 12 motion because “[a] party who by motion
invites the court to pass upon a threshold defense should
bring forward all the specified defenses he then has and
thus allow the court to do a reasonably complete job.”).
This straightforward, relatively bright-line reading
reflects, as well, the waiver consequence stated in Rule
IN RE: MICRON TECH., INC. 9
12(g)(2) and (h)(1)(A): in declaring an objection waived,
those provisions mention no considerations except the
availability of the objection when it was omitted from the
specified Rule 12 motion. 2 This reading is also supported
by the instruction stated in Federal Rule of Civil Proce-
dure 1—that the Rules “should be construed, adminis-
tered, and employed by the court and the parties to secure
the just, speedy, and inexpensive determination of every
action and proceeding.” When a defense or objection is
futile in the sense that the law bars the district court from
adopting it to dismiss, to require the assertion of the
defense or objection in an initial motion to dismiss, on
pain of waiver, would generally be to require the waste of
resources, contrary to Rule 1.
No decision of the Supreme Court or a circuit court to
which we have been pointed runs counter to this common-
sense interpretation. 3 The rationale for this interpreta-
tion, moreover, is consistent with the general approach,
which is neither rigid nor context-independent, that is
reflected in opinions from the Supreme Court and the
circuit courts in various settings—i.e., a sufficiently sharp
change of law sometimes is a ground for permitting a
party to advance a position that it did not advance earlier
in the proceeding when the law at the time was strongly
enough against that position. See, e.g., Blonder-Tongue
Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 350 (1971)
(vacating and remanding to allow petitioner to amend
pleadings to include estoppel argument that was futile
2 As explained infra, a less bright-line standard for
forfeiture applies in particular circumstances even when
there is no waiver under Rule 12(g)(2) and (h)(1)(A).
3 We therefore need not decide whether this cir-
cuit’s law or the relevant regional circuit’s law governs
the particular waiver question presented.
10 IN RE: MICRON TECH., INC.
under earlier controlling precedent but now available by
partial overruling of precedent); Curtis Publ’g Co. v.
Butts, 388 U.S. 130, 143–44 (1967) (opinion for four
Justices) (allowing late raising of First Amendment
objection to libel liability, where, at the time of trial,
“there was strong precedent indicating that civil libel
actions were immune from general constitutional scruti-
ny”); Bennett v. City of Holyoke, 362 F.3d 1, 7 (1st Cir.
2004); Gucci Am., Inc. v. Li, 768 F.3d 122, 135–36 (2d Cir.
2014); Holzsager v. Valley Hosp., 646 F.2d 792, 796 (2d
Cir. 1981); Chassen v. Fidelity Nat’l Fin., Inc., 836 F.3d
291, 293 (3d Cir. 2016) (“Every circuit to have answered
this question has held that a litigant [need not] engage in
futile gestures merely to avoid a claim of waiver.” (brack-
ets in original) (internal quotation marks omitted));
Beazer E., Inc. v. Mead Corp., 525 F.3d 255, 263 (3d Cir.
2008); Holland v. Big River Minerals Corp., 181 F.3d 597,
605 (4th Cir. 1999); Carroll v. Gen. Accident Ins. Co. of
Am., 891 F.2d 1174, 1175 n.1 (5th Cir. 1990); Sambo’s
Rests., Inc. v. City of Ann Arbor, 663 F.2d 686, 692–93
(6th Cir. 1981); Brown v. M & M/Mars, 883 F.2d 505,
512–13 (7th Cir. 1989); Ackerberg v. Johnson, 892 F.2d
1328, 1332–33 (8th Cir. 1989); Big Horn Cty. Elec. Coop.,
Inc. v. Adams, 219 F.3d 944, 953–54 (9th Cir. 2000);
Fisher v. A.G. Becker Paribas Inc., 791 F.2d 691, 697 (9th
Cir. 1986); Peterson v. Shearson/Am. Exp., Inc., 849 F.2d
464, 466 (10th Cir. 1988); Benoay v. Prudential-Bache
Secs., Inc., 805 F.2d 1437, 1440 (11th Cir. 1986); Miller v.
Drexel Burnham Lambert, Inc., 791 F.2d 850, 854 (11th
Cir. 1986); Fed. Election Comm’n v. Legi-Tech, Inc., 75
F.3d 704, 707 (D.C. Cir. 1996); Chatman-Bey v. Thorn-
burgh, 864 F.2d 804, 813 n.9 (D.C. Cir. 1988); see also 18B
Charles A. Wright & Arthur R. Miller, Federal Practice &
Procedure § 4478 (2d ed., Apr. 2017 update).
This case is one in which controlling precedent pre-
cluded the district court from adopting an objection to
venue before the Supreme Court decided TC Heartland—
IN RE: MICRON TECH., INC. 11
specifically, from adopting such an objection in August
2016, when Micron made its first Rule 12 motion. On the
patent-specific issue of the proper interpretation of 28
U.S.C. § 1400(b), the district court was bound by this
court’s precedent. See In re Cray, 871 F.3d at 1360 (“Fed-
eral Circuit law, rather than regional circuit law, governs
[the] analysis of what § 1400(b) requires.”); see also Foster
v. Hallco Mfg. Co., Inc., 947 F.2d 469, 475 (Fed. Cir.
1991); Panduit Corp. v. All States Plastic Mfg. Co., Inc.,
744 F.2d 1564, 1573 (Fed. Cir. 1984). Circuit-court prece-
dent is binding on district courts notwithstanding the
mere possibility that the Supreme Court might come to
disapprove that precedent. See Eulitt ex rel. Eulitt v.
Maine, Dep’t of Educ., 386 F.3d 344, 349 (1st Cir. 2004).
It does not appear, indeed, that Harvard disputes those
propositions.
This court held in V.E. Holding Corp. v. Johnson Gas
Appliance Co., 917 F.2d 1574, 1575 (Fed. Cir. 1990), that
the 1988 amendments to 28 U.S.C. § 1391(c) furnished a
definition of “resides” that applied to § 1400(b). In so
ruling, this court recognized that the Supreme Court had
held in Fourco Glass Co. v. Transmirra Products Corp.,
353 U.S. 222, 229 (1957), that the then-current version of
§ 1391(c) did not apply to § 1400(b); but this court con-
cluded that the 1988 amendments to § 1391(c)—which of
course were not before the Court in Fourco—produced a
different statutory prescription. V.E. Holding, 917 F.2d
at 1579–80. Under the 1988 version of § 1391(c), a corpo-
rate defendant was “‘deemed to reside in any judicial
district in which it [wa]s subject to personal jurisdiction
at the time the action [wa]s commenced.’” Id. at 1578
(quoting statute). It is undisputed that Micron comes
within that broad definition.
The 1988 version of § 1391(c) does not itself apply in
this case. Filed in 2016, this case is subject to the version
of § 1391(c) that resulted from amendments adopted by
Congress in 2011. Under this (the current) version, “an
12 IN RE: MICRON TECH., INC.
entity with the capacity to sue and be sued in its common
name under applicable law, whether or not incorporated,
shall be deemed to reside, if a defendant, in any judicial
district in which such defendant is subject to the court’s
personal jurisdiction with respect to the civil action in
question.” 28 U.S.C. § 1391(c). Although the language is
slightly different from the 1988 version, it is undisputed
that Micron comes within the definition of “resides” stated
in the current version of § 1391(c).
The crucial holding of V.E. Holding was that
§ 1391(c)’s definition of “resides,” after the 1988 amend-
ments, applied to § 1400(b). On that crucial point, there
is no substantial argument for distinguishing the 2011
amendments to § 1391(c) from the 1988 amendments that
V.E. Holding addressed. Indeed, we so held in In re TC
Heartland LLC, 821 F.3d 1338, 1341–43 (Fed. Cir. 2016),
rev’d on other ground, 137 S. Ct. 1514 (2017), and the
Supreme Court in TC Heartland did not disturb that
conclusion.
Thus, if V.E. Holding is taken as a binding precedent,
§ 1391(c)’s current definition of “resides” applies to
§ 1400(b). It follows that controlling precedent, which the
district court here was bound to follow, would plainly
have barred the district court from adopting a venue
objection had Micron made one before the Supreme Court
decided TC Heartland. The 1957 Fourco decision had not
(and could not have) addressed the post-1988 versions of
§ 1391(c), and no intervening Supreme Court decision had
undermined V.E. Holding before the Court decided TC
Heartland. The V.E. Holding precedent, applied to the
2011 version of § 1391(c), therefore precluded the district
court in this case from finding venue improper until the
Court decided TC Heartland. Harvard does not appear to
dispute those conclusions.
The Supreme Court changed the controlling law when
it decided TC Heartland in May 2017. The Court ob-
IN RE: MICRON TECH., INC. 13
served that Congress “has amended § 1391 twice” since
Fourco, 137 S. Ct. at 1517, and the Court described both
the 1988 and 2011 amendments, id. at 1519–20. The
Court then encompassed both amendments within its
statement of its holding: “We conclude that the amend-
ments to § 1391 did not modify the meaning of § 1400(b)
as interpreted by Fourco.” Id. at 1517. Similarly, the
Court did not distinguish the two amendments when,
having stated the Fourco-declared meaning of § 1400(b), it
said that “the only question [it] must answer is whether
Congress changed the meaning of § 1400(b) when it
amended § 1391.” Id. at 1520. The answer was no. Id. at
1520–21. The Court thus clearly (if not quite expressly)
rejected V.E. Holding and concluded that the definition of
“resides” in § 1391(c) does not apply to § 1400(b).
That change of law, by severing § 1400(b) from
§ 1391(c), made available to Micron in this case the objec-
tion that it does not come within the meaning of “resides”
for purposes of venue under § 1400(b). That position was
not available for the district court to adopt before the
Court decided TC Heartland, because controlling prece-
dent precluded adoption of the position. For that reason,
the objection was not “available” under Rule 12(g)(2)
when Micron made its motion to dismiss in 2016. Accord-
ingly, contrary to the district court’s conclusion, Rule
12(h)(1)(A)’s waiver rule is inapplicable here.
C
Although we agree with Micron as to the inapplicabil-
ity of Rule 12(h)(1), we do not agree that we should order
dismissal or transfer for lack of venue, or even remand for
proceedings limited to consideration of the merits of the
venue question. Rule 12(h)(1) is not the sole basis on
which a district court might, in various circumstances,
rule that a defendant can no longer present a venue
defense that might have succeeded on the merits. We
briefly clarify the fundamental reasons for that conclusion
14 IN RE: MICRON TECH., INC.
and the framework governing forfeiture even where Rule
12(h)(1) is inapplicable.
Rule 12(h)(1) identifies certain situations as trigger-
ing a conclusion of waiver. It does not state that there is
no other basis on which a district court might find a
defendant to have forfeited an otherwise-meritorious
venue defense. And it makes little sense to treat Rule
12(h)(1) as excluding other grounds for such a forfeiture.
Consider a scenario in which a statute clearly allowed
venue in the forum at the time of a first Rule 12 motion,
but the statute was later changed so as to forbid venue in
the forum, with application of the changed statute to
pending cases. Rule 12(g)(2) and (h)(1)(A) would not
apply to a new motion to dismiss or transfer for lack of
venue (because the ground was not available when the
first Rule 12 motion was filed), but nothing in the Federal
Rules of Civil Procedure would preclude a district court
from applying other standards, such as those requiring
timely and adequate preservation, to find a venue objec-
tion lost if, for example, it was not made until long after
the statutory change took effect.
The Supreme Court recently confirmed that the Fed-
eral Rules of Civil Procedure “are not all encompassing”
and that there are “standard procedural devices trial
courts around the country use every day in service of Rule
1’s paramount command: the just, speedy, and inexpen-
sive resolution of disputes.” Dietz v. Bouldin, Inc., 136 S.
Ct. 1885, 1891 (2016). The Court explained “that a dis-
trict court possesses inherent powers that are ‘governed
not by rule or statute but by the control necessarily vested
in courts to manage their own affairs so as to achieve the
orderly and expeditious disposition of cases.’ Link v.
Wabash R. Co., 370 U.S. 626, 630–631 (1962); see also
United States v. Hudson, 7 Cranch 32, 34 (1812).” Id.
The Court then identified the fundamental limits on such
authority:
IN RE: MICRON TECH., INC. 15
First, the exercise of an inherent power must be a
“reasonable response to the problems and needs”
confronting the court’s fair administration of jus-
tice. Degen v. United States, 517 U.S. 820, 823–
824 (1996). Second, the exercise of an inherent
power cannot be contrary to any express grant of
or limitation on the district court’s power con-
tained in a rule or statute. See id., at 823; Fed.
Rule Civ. Proc. 83(b) (districts courts can “regu-
late [their] practice in any manner consistent with
federal law”); see, e.g., Bank of Nova Scotia v.
United States, 487 U.S. 250, 254 (1988) (holding
that a district court cannot invoke its inherent
power to circumvent the harmless-error inquiry
prescribed by Federal Rule of Criminal Procedure
52(a)).
Id. at 1892 (alteration in original; parallel citations omit-
ted). The Court summarized the “two principles—an
inherent power must be a reasonable response to a specif-
ic problem and the power cannot contradict any express
rule or statute.” Id.
We see no reason that the Dietz framework is inappli-
cable to venue objections. Indeed, apart from the Federal
Rules, Congress has provided express statutory confirma-
tion of judicial authority to consider the timeliness and
adequacy of a venue objection: 28 U.S.C. § 1406(b) pro-
vides that “[n]othing in this chapter shall impair the
jurisdiction of a district court of any matter involving a
party who does not interpose timely and sufficient objec-
tion to the venue.”
The Supreme Court explained in Neirbo Co. v. Bethle-
hem Shipbuilding Corp.:
[T]he locality of a law suit—the place where judi-
cial authority may be exercised—though defined
by legislation relates to the convenience of liti-
16 IN RE: MICRON TECH., INC.
gants and as such is subject to their disposition. . .
.
Being a privilege, [venue] may be lost. It may
be lost by failure to assert it seasonably, by formal
submission in a cause, or by submission through
conduct.
308 U.S. 165, 168 (1939); see Panhandle E. Pipe Line Co.
v. Fed. Power Comm’n, 324 U.S. 635, 639 (1945) (“The
right to have a case heard in the court of proper venue
may be lost unless seasonably asserted.”); Commercial
Cas. Ins. Co. v. Consol. Stone Co., 278 U.S. 177, 178–81
(1929) (discussing requirement that venue be “seasona-
bly” raised and finding waiver where the “[d]efendant
allowed the time for effective objections to expire and did
nothing” (emphasis added)); see also Manley v. Engram,
755 F.2d 1463, 1468 (11th Cir. 1985) (waiver of motion to
transfer under § 1406(a) may occur “in any of several
ways: by express waiver, by conduct amounting to waiver
as a matter of law, or by failure to interpose a timely and
sufficient objection”); Libby, McNeill, & Libby v. City Nat’l
Bank, 592 F.2d 504, 510 (9th Cir. 1978) (venue objection
pursuant to § 1406(a) waived because untimely); Davis v.
Smith, 253 F.2d 286, 288 (3d Cir. 1958) (party waives
venue objection when it “performs some act which indi-
cates to the court that [it] elects not to raise [its] privilege
of venue”).
For those reasons, we think it clear that, apart from
Rule 12(g)(2) and (h)(1)(A), district courts have authority
to find forfeiture of a venue objection. This authority is
properly exercised within the framework of Dietz, which
requires respecting, and not “circumvent[ing],” relevant
rights granted by statute or Rule. 136 S. Ct. at 1892.
This authority must be exercised with caution to
avoid the forbidden circumvention. And exercise of the
authority certainly may rest on sound determinations of
untimeliness or consent (“submission,” in the language of
IN RE: MICRON TECH., INC. 17
Neirbo). But we generally leave to future cases the task
of elaborating on when such determinations may soundly
be reached and what other considerations, if any, might
be relevant within the Dietz framework. We also do not
address here whether this court’s law or the relevant
regional circuit’s law governs forfeiture standards not tied
to the patent-specific venue statute.
We limit our observations to the following. As to
timeliness, whereas the waiver rule of Rule 12(g)(2) and
(h)(1)(A) requires a focus on the time the TC Heartland
venue objection was “available” for the district court to
adopt (i.e., on or after May 22, 2017), the non-Rule au-
thority’s general concern with timeliness is not necessari-
ly so limited. We have not provided a precedential
answer to the question whether the timeliness determina-
tion may take account of factors other than the sheer time
from when the defense becomes available to when it is
asserted, including factors such as how near is the trial,
which may implicate efficiency or other interests of the
judicial system and of other participants in the case. But
we have denied mandamus, finding no clear abuse of
discretion, in several cases involving venue objections
based on TC Heartland that were presented close to trial. 4
We also note a scenario that presents at least an obvious
4 See, e.g., In re Nintendo of Am. Inc., 695 F. App’x
543, 543–44 (Fed. Cir. 2017) (motion less than three
months before trial); In re Techtronic Indus. N. Am., Inc.,
No. 17-125, 2017 WL 4685333, at *1 (Fed. Cir. July 25,
2017) (less than two months before trial); In re Hughes
Network Sys., LLC, No. 17-130, 2017 WL 3167522, at *1
(Fed. Cir. July 24, 2017) (less than two months before
trial); In re Sea Ray Boats, Inc., No. 17-124, 2017 WL
2577399, at *1 (Fed. Cir. June 9, 2017) (two weeks before
trial).
18 IN RE: MICRON TECH., INC.
starting point for a claim of forfeiture, whether based on
timeliness or consent or distinct grounds: a defendant’s
tactical wait-and-see bypassing of an opportunity to
declare a desire for a different forum, where the course of
proceedings might well have been altered by such a
declaration. We do not here say how such a claim of
forfeiture ultimately should be analyzed.
Beyond those observations, we do not explore the con-
tours of timeliness outside Rule 12(g)(2) and (h)(1)(A) or
how to assess what constitutes consent to venue or what if
any other considerations could justify a finding of forfei-
ture even when the defendant has not waived its objection
under Rule 12(g)(2) and (h)(1)(A). In noting issues that
might be presented, we are not suggesting that the lee-
way to find such forfeiture is broad. We do not here seek
to define the channels in which discretion must be exer-
cised, even for the specific, time-limited circumstance of
the transition from V.E. Holding to TC Heartland. Any
legal conclusions about the boundaries of discretion must
await particular district court explanations under the
Dietz framework of how discretion is being exercised in
particular settings.
In this case, the district court considered whether to
excuse what it found to be a Rule 12(h)(1)(A) waiver but
did not consider whether Micron lost its right to assert
the absence of venue on grounds separate from Rule
12(h)(1)(A). We remand for the court to consider any such
properly raised non-Rule 12(h)(1)(A) arguments that
Micron has forfeited its venue defense and, if there are no
such sound arguments, to consider the merits of venue
under § 1400(b).
III
Accordingly, IT IS ORDERED THAT the petition is
granted to the following extent: the district court’s order
denying Micron’s Rule 12(b)(3) motion is vacated, and the
IN RE: MICRON TECH., INC. 19
case is remanded for further proceedings consistent with
this Order.