United States District Court, D. Nebraska
MEMORANDUM AND ORDER
R. ZWART UNITED STATES MAGISTRATE JUDGE
case in before the court on Briggs' Motion to Transfer,
(Filing No. 715).
extensive procedural history of this case spans more than
eight years and nearly 800 entries on the court's
electronic docket. It is briefly summarized as follows:
Exmark Manufacturing Company Inc. (“Exmark”) and
Briggs & Stratton Corporation (“Briggs”) are
in the commercial lawn mower industry. And in 2010, Exmark
filed suit against its competitor Briggs,  alleging Briggs
infringed on claim 1 of U.S. Patent No. 5, 987, 863
(“the ‘863 patent”). (Filing No.
1). The ‘863 patent is directed at improved lawn
mower “baffles, ” which control the flow of air
and of grass clippings during a lawn mower's operation.
United States Patent and Trademark Office (“PTO”)
twice reexamined the patentability of claim 1 during the
pendency of this lawsuit, necessitating a two-year stay of
the proceedings before this court. (Filing No. 197).
lifting the stay, extensive discovery and dispositive motion
practice ensued, culminating in United States District Judge
Joseph F. Bataillon's ruling on the eleven (11)
interrelated motions for summary judgment. (Filing No.
476). The surviving issues were tried to a jury in late
2015, ending in a $24 million verdict for Plaintiff Exmark.
This court later doubled the damages award, determining that
Briggs' infringement was willful and that Exmark was
entitled to enhanced damages. (Filing No. 689).
Judge Bataillon then presided over a bench trial regarding
Briggs' motion for judgment of laches, and found that
Briggs was not entitled to equitable relief. The court also
denied Briggs' post-trial motion for a new trial. Briggs
appealed. (Filing No. 694).
January 2018, the Court of Appeals for the Federal Circuit
vacated the jury's damage award and this court's
award of enhanced damages. (Filing No. 706). On
remand, the circuit instructed this court to evaluate the
willfulness and damages issues and to conduct a new trial on
those issues, if necessary. (Id.).
months after remand, Briggs filed the instant motion to
transfer this case to the United States District Court for
the Eastern District of Wisconsin. (Filing No. 715).
For the following reasons, the motion will be denied.
motion to transfer is based on a change in law. During the
pendency of Briggs' appeal to the Federal Circuit, the
United States Supreme Court issued its decision in TC
Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct.
1514 (2017), which clarified proper patent infringement venue
under 28 U.S.C. § 1400(b). Under that precedent, Briggs
argues, venue is improper in this district and this case must
be transferred to the United States District Court for the
Eastern District of Wisconsin. (Filing No. 716).
Exmark, in turn, argues that venue remains proper in this
district. (Filing No. 735). It further argues that
even venue is improper under TC Heartland, Briggs
has waived its venue objection at this stage in the
following reasons, the court agrees that Briggs has waived
its right to challenge venue. Therefore, the court will not
reach the parties' arguments as to whether venue is
proper in the District of Nebraska under 28 U.S.C. §
time TC Heartland was issued, the Supreme Court did
not indicate how it would affect pending cases -
like the instant case. And as a result, district courts were
at a months-long loggerheads over whether TC
Heartland effected a change of law such that the
ordinary Fed.R.Civ.P. 12(h) waiver rules were inapplicable.
Put differently, district courts were unclear whether the
parties to then-pending patent cases ...