CHRISTOPHER J. BURKE, Magistrate Judge.
Presently before the Court in this patent infringement action is Defendant Ubisoft Inc.'s ("Ubisoft" or "Defendant") "Motion to Dismiss, or in the Alternative, Transfer to the Northern District of California Based on Improper Venue[,]" filed pursuant to Federal Rule of Civil Procedure 12(b)(3) and 28 U.S.C. § 1406 ("the Motion"). (D.I. 143) Plaintiff Princeton Digital Image Corp. ("Plaintiff' or "PDIC") opposes the Motion. For the reasons that follow, the Court DENIES Ubisoft's Motion.
Plaintiff filed this action ("the Ubisoft Action" or "the instant case/action"), on February 27, 2013 against French corporation Ubisoft Entertainment SA, alleging direct infringement of U.S. Patent No. 5,513,129 ("the '129 patent" or the "patent-in-suit" or the "asserted patent"). (D.I. 1) The instant action was the second case Plaintiff had filed in this District alleging infringement of the asserted patent. On November 13, 2012, in Civil Action No. 12-1461-LPS-CJB, Plaintiff filed suit accusing Defendants Harmonix Music Systems Inc. ("Harmonix") and Electronic Arts Inc. of infringing the asserted patent; in that case, Plaintiff would later amend its claims to also accuse Defendant Konami Digital Entertainment Inc. of infringement. (Civil Action No. 12-1461-LPS-CJB (the "Harmonix Action"), D.I. 1, 8) Chief District Judge Leonard P. Stark referred both cases to the Court thereafter to resolve all pretrial matters, up to and including case-dispositive motions. (See, e.g., D.I. 10) The two cases were later consolidated for scheduling purposes. (D.I. 15)
After Plaintiff had amended its Complaint in the instant case twice, the Court stayed both cases in January 2014, pending completion of inter partes review ("IPR") proceedings at the United States Patent and Trademark Office ("PTO"). (D.I. 52) That stay was lifted on January 21, 2016, and the Court then issued a further Scheduling Order in the cases. (D.I. 69)
Thereafter, Plaintiff filed an unopposed motion to amend the operative Second Amended Complaint; the motion was granted, and on March 4, 2016, Plaintiff filed its Third Amended Complaint ("TAC"). (D.I. 72) In the TAC, Plaintiff added Ubisoft as a new Defendant. (Id; see also D.I. 144 at 1)
In response to the TAC, on April 1, 2016, both Defendants filed a partial motion to dismiss, pursuant to Federal Rule of Civil Procedure 12(b)(6) (the "motion to dismiss"); the motion to dismiss sought dismissal of Plaintiffs allegations of indirect and willful infringement (and thus, it did not challenge Plaintiffs claims of direct infringement against Ubisoft). (D.I. 76: D.I. 77) Ubisoft did not assert at this time that venue as to it was improper.
The Court held a Markman hearing on August 31, 2016. Thereafter, on September 9, 2016, Plaintiff and all Defendants in both cases filed a joint stipulation, which sought to stay remaining fact discovery until after the District Court made a final ruling on claim construction (i.e., issued a ruling as to the Court's forthcoming Report and Recommendations on claim construction). (D.1. 119) That stipulation was granted.
On November 4, 2016, the Court recommended that Defendants' motion to dismiss be granted ("the motion to dismiss R&R"). (D.1. 121) Plaintiff filed objections to the motion to dismiss R&R on November 21, 2016, (D.1. 122), and Defendants responded on December 8, 2016, (D.I. 124).
Meanwhile, on December 2, 2016, the Court issued the first of two Reports and Recommendations regarding claim construction and definiteness (together, "the claim construction R&Rs"). (D.1. 123) Ubisoft (along with the other Defendants in both cases) filed objections to that Report and Recommendation on December 23, 2016, (D.I. 126), to which Plaintiff responded on January 6, 2017, (D.I. 127).
On May 22, 2017, the Supreme Court of the United States issued its decision in TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S.Ct. 1514 (2017).
Next, on June 16, 2017, the Court issued its second Report and Recommendation on claim construction. (D.I. 129) Ubisoft (along with the other Defendants in both cases) filed objections to that Report and Recommendation on June 30, 2017, (D.I. 131), to which Plaintiff responded on July 14, 2017, (D.I. 134). Plaintiff also filed objections to that Report and Recommendation on June 30, 2017, (D.I. 132), to which Ubisoft and the other Defendants in both cases responded on July 14, 2017, (D.I. 133).
Thereafter, on August 15, 2017, Plaintiff and all Defendants in both cases filed another joint stipulation. (D.I. 135) In that stipulation, the parties noted their desire to have the District Court make a final ruling not only on the pending objections to the Court's claim construction R&Rs, but also as to the pending objections to the Court's motion to dismiss R&R, before any further case activity occurred. (Id.) That stipulation, which sought such a stay until the District Court issued its opinions on all of the above-referenced objections, was thereafter granted.
In light of the two prior stipulations, from September 2016 until the District Court ruled on pending objections to the motion to dismiss R&R and claim construction R&Rs (a period of approximately 15 months), no further discovery occurred. During that 15-month time period, as is partly noted above, Plaintiff and Defendants in both cases did continue to litigate the pending objections to the motion to dismiss R&R and the claim construction R&Rs. Ubisoft filed briefs, notices and other documents relating to the objections to the pending R&Rs in this time frame. (D.I. 124-26; D.I. 128; D.I. 131; D.I. 133; D.I. 135; D.I. 137)
On December 12, 2017, the District Court issued a Memorandum Order overruling Plaintiffs objections to the Court's decision in the motion to dismiss R&R. (D.I. 138) As a result, there are no remaining claims in this action against Ubisoft Entertainment SA. (See D.I. 144 at 1 & n.1; D.I. 152 at 9; D.I. 155 at 3) Plaintiffs remaining claims in this case are those alleging that Ubisoft has directly infringed claims 14, 19 and 20 of the patent-in-suit by developing, testing and otherwise using certain accused video games in the United States. (D.I. 72 at ¶ 32; see also D.I. 144 at 3) On December 13, 2017, the District Court issued a Memorandum Order overruling all of Defendants' objections to the Court's decisions in the claim construction R&Rs and overruling-in-part and sustaining-in-part Plaintiffs objections. (D.I. 139)
Thereafter, the Court ordered the parties to submit a revised proposed Scheduling Order. The parties did so, and a new schedule in the two cases was entered on December 20, 2017. (D.I. 141) Pursuant to that schedule, the first of the cases to be tried will be tried on April 8, 2019. (Id. at 2)
On January 17, 2018, in lieu of filing an answer to Plaintiffs TAC, Ubisoft filed the instant Motion. (D.I. 143) Briefing on the Motion was complete on February 7, 2018. (D.I. 155)
In patent infringement actions, venue is proper for domestic corporations "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." 28 U.S.C. § 1400(b) ("Section 1400(b)").
Then, in 1988, Congress amended Section 1391(c) to provide that "[f]or purposes of venue under this chapter" a defendant corporation shall be deemed "to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced." VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574, 1578 (Fed. Cir. 1990), abrogated by TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017). Two years later, in light of those amendments, the United States Court of Appeals for the Federal Circuit held that Section 13 91 (c) dictated the meaning of "resides" in Section 1400(b). VE Holding, 917 F.2d at 1579-84. VE Holding thereafter governed venue in patent litigation for the next 27 years. See Boston Sci. Corp. v. Cook Grp. Inc., 269 F.Supp.3d 229, 238 (D. Del. 2017).
On May 22, 2017, however, the Supreme Court issued its opinion in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017). In TC Heartland, the Supreme Court reaffirmed the decision in Fourco Glass and reversed the Federal Circuit's decision in VE Holding, thereby concluding that a domestic corporation "resides" only in its state of incorporation in patent infringement actions. TC Heartland, 137 S. Ct. at 1517-21.
A party may file a motion to dismiss for improper venue pursuant to Federal Rule of Civil Procedure 12(b)(3). "The 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." 28 U.S.C. § 1406(a). Upon a motion by a defendant challenging venue, the plaintiff bears the burden to show that venue is proper. In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018).
Generally, the defense of improper venue is waived if not timely raised in either a defendant's motion to dismiss filed pursuant to Rule 12(b)(3), or in the defendant's answer. Fed. R. Civ. P. 12(g)(2) & 12(h)(1). However, in the wake of TC Heartland, a split emerged among district courts as to whether a defendant who had failed to raise a venue defense in a Rule 12 motion or responsive pleading before May 22, 2017 (the date of the Supreme Court's decision in TC Heartland), but then later brought a motion challenging venue based on TC Heartland, had waived its right to make such a challenge.
Nevertheless, the Federal Circuit recognized that, in accordance with Federal Rule of Civil Procedure 1 and the Supreme Court's decision in Dietz v. Bouldin, 136 S.Ct. 1885 (2016), a district court may utilize its inherent powers and standard procedural devices to find forfeiture of a venue challenge in order to facilitate "`the just, speedy, and inexpensive resolution of disputes.'" Id. at 1100 (quoting Dietz, 13 6 S. Ct. at 1891 ). In finding such a timeliness challenge to be appropriate in the venue context, the Micron Court noted that "Congress has provided express statutory confirmation of judicial authority to consider the timeliness and adequacy of a venue objection: 28 U.S.C. § 1406(b) provides 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 objection to the venue.'" Id. at 1101 (quoting 28 U.S.C. § 1406(b)); see also, e.g., 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."); Neirbo Co. v. Bethlehem Shipbuilding Corp., 308 U.S. 165, 168 (1939) ("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."); Davis v. Smith, 253 F.2d 286, 288 (3d Cir. 1958) (concluding that a party waives a venue objection when it "performs some act which indicates to the court that [it] elects not to raise [its] privilege of venue").
Under the framework set forth in Dietz, the district court's utilization of this inherent power "must be a reasonable response to the problems and needs confronting the court's fair administration of justice[,]" and "cannot be contrary to any express grant of or limitation on the district court's power contained in a rule or statute." Dietz, 136 S. Ct. at 1892 (internal citations and quotation marks omitted); see also Micron, 875 F.3d at 1100. A district court should exercise this authority "with caution[,]" resting its decision on "sound determinations of untimeliness or consent." Micron, 875 F.3d at 1101. While the Micron Court did not set out an exhaustive list of factors a district court should consider in determining whether a venue defense has been forfeited, it suggested that relevant inquiries include: (1) the length of the time gap from when the defense "becomes available" until it was asserted; (2) "how near is the trial, which may implicate efficiency or other interests of the judicial system and of other participants in the case[,]" and (3) whether the defendant employed a "tactical wait-and-see [approach] bypassing . . . an opportunity to declare a desire for a different forum, where the course of proceedings might well have been altered by such a declaration [of the defense]." Id. at 1102; see also, e.g., Boston Sci. Corp., 269 F. Supp. 3d at 242-43 (noting that "[p]rototypical examples" for which a court may conclude that a defendant has forfeited a venue defense include "where a defendant raises venue for the first time on the eve of trial, or many months (or years) after TC Heartland was handed down, or where dismissal or transfer would unduly prejudice a plaintiff'); cf. Bel-Ray Co., Inc. v. Chemrite (Pty) Ltd., 181 F.3d 435, 443-44 (3d Cir. 1999) (finding that defendants waived a personal jurisdiction challenge where they sought from the Court affirmative relief in the form of motions for summary judgment "before securing a determination on their personal jurisdiction defenses").
In its Motion, Ubisoft asserts that because it is not incorporated in Delaware, has no physical presence in Delaware, and is not alleged to have committed acts of infringement in Delaware, venue in this district is legally improper as to it under TC Heartland. (D.I. 144 at 1; see also D.I. 145 at ¶¶ 2-6) Ubisoft therefore requests dismissal of the case for improper venue, or alternatively, transfer to the United States District Court for the Northern District of California, where venue would be proper. (D.I. 144 at 1) In response, Plaintiff primarily argues that Ubisoft forfeited its right to assert the lack-of-venue defense by continuing to litigate this case and actively seeking rulings from this Court for approximately eight months after the TC Heartland decision was issued, before finally asserting a defense of improper venue in January 2018. (D.I. 152 at 3, 5-10)
Ultimately, the Court agrees with Plaintiff that by waiting until January 2018 to assert its venue objection, Ubisoft forfeited such objection. In articulating the reasons for this decision below, the Court will first assess the proper date after which Ubisoft's conduct became relevant to the forfeiture inquiry. Then, the Court will explain why Ubisoft's conduct after that date amounted to forfeiture. Finally, the Court will consider other relevant factors that also played a role in its decision.
As noted above, the Micron Court recognized that a relevant factor in examining the timeliness of a defendant's venue objection is how long it took the defendant to assert the objection from the time that objection first became available to the defendant. Micron, 875 F.3d at 1102. While it is clear that Ubisoft first asserted its venue objection by filing the Motion on January 17, 2018, the parties dispute the proper "start date" that is relevant to this inquiry. This dispute turns on the answer to the following question: On what date, prior to January 17, 2018, did the venue objection properly become available to Ubisoft, such that Ubisoft should have timely asserted it thereafter?
According to Ubisoft, its motion "was brought at the earliest possible time." (D.I. 144 at 5) Ubisoft then seems to point to two reasons as to why it was justified in not filing the instant motion until eight months after the TC Heartland decision: (1) the case was stayed at the time that TC Heartland issued; and (2) the venue defense was not available to it until December 13, 2017, when Chief Judge Stark affirmed that Plaintiffs claims against the foreign defendant, Ubisoft Entertainment SA, were dismissed. Neither reason is persuasive to the Court.
First, Ubisoft contends that its motion is timely because "the case was stayed for 15 months—beginning in September 2016 (before TC Heartland), continuing on May 22, 2017 (when TC Heartland was decided), and lifting on December 13, 2017 (6.5 months after TC Heartland)." (D.I. 155 at 3-4; see also D.I. 144 at 5-6) And in its reply brief, Ubisoft accuses Plaintiff of "downplay[ing]" the import of the stay by suggesting that the stay was limited to fact discovery, whereas, Ubisoft asserts, the relevant stipulation instead "ma[de] clear that [the stay] applied to all `further activity,' `including the dates previously set by the Court' for pretrial and trial, and specifically set all dates in the calendar to hinge off the entry of the Court's rulings." (D.I. 155 at 4 (quoting D.I. 135)) But in making this argument, Ubisoft is glossing over some critical facts: (1) TC Heartland issued in May 2017; and (2) the stipulation that it is actually referring to in its reply brief was the one entered almost three months after TC Heartland, on August 15, 2017. Importantly, the first stay-related stipulation—the one entered in September 2016 and the one that was in place as of the TC Heartland decision—was not couched as a general, blanket stay on all matters relevant to the case. Rather, the September 2016 stipulation stated:
(D.I. 119 at 2 (emphasis added); see also D.I. 152 at 2 (Plaintiff explaining that the "Court's stay [entered in September 2016] . . . was limited to fact discovery")) It was not until the later August 2017 stipulation that the parties explained that they:
(D.I. 135 at 2)
Thus, at the time that the Supreme Court decided TC Heartland in May 2017, the stay on its face was limited to fact discovery. And so once TC Heartland issued, nothing about the wording of that stay, or its legal force, would have precluded Ubisoft from timely filing a motion to dismiss based on improper venue.
The Court is aware of district court opinions on forfeiture of venue that have been issued in patent cases where: (1) a general, blanket stay was in place at the time that TC Heartland issued; and (2) the stay later lifted, and a party then filed a motion seeking dismissal or transfer on improper venue grounds. In at least some of these cases, the courts treated the date that the stay was lifted as the operative date by which the plaintiffs forfeiture arguments (and the defendant's conduct) should be evaluated. See, e.g., Silcotek Corp. v. Entech Instruments, Inc., CIVIL ACTION NO. 15-1531, 2018 WL 1818192, at *1, *3-5 (W.D. Pa. Apr. 17, 2018) (treating the date that the court lifted such a stay as the relevant "start date" in evaluating defendant's timeliness, where the case had been entirely stayed pending completion of PTO proceedings); Infinity Comput. Prods, Inc. v. OKI Data Ams., Inc., CIVIL ACTION NO. 12-6797, 2018 WL 1035793, at *5 (E.D. Pa. Feb. 23, 2018) (explaining that where the cases were entirely stayed for approximately four years pending the reexamination of the patents, the court would treat the date that the stay was lifted as "the operative date to evaluate Moving Defendants' conduct and the waiver arguments").
For example, in Silcotek Corp. v. Entech Instruments, Inc., CIVIL ACTION NO. 15-1531, 2018 WL 1818192 (W.D. Pa. Apr. 17, 2018), the district court had entered a stay of all proceedings at the request of all parties, while parallel proceedings were ongoing before the PTO. 2018 WL 1818192, at *1. The stay lasted from February 2016 through January 2018 (i.e., until eight months after the TC Heartland decision); in January 2018, the district court granted the parties' joint motion to reopen the case. Id. at *1-2. Shortly thereafter, the defendant moved to dismiss or transfer based on lack of venue, and the plaintiff responded by arguing that the defendant had forfeited its venue defense. Id. at *2-3. The Silcotek Court ultimately determined that in undertaking a forfeiture analysis, it would not look to the date that TC Heartland issued as the relevant starting point-because doing so would essentially mean that the defendant would have been required to have filed a motion to lift the stay immediately after TC Heartland came down, in order to pursue its lack-of-venue argument. Id. at *3. The Silcotek Court noted that had that kind of motion been filed, and had the case then been transferred to the proper venue, the parties presumably would simply have filed a renewed request for a stay in that new venue, pending resolution of the PTO proceedings. Id. In the Silcotek Court's view, that "exercise would be pointless in a[n already] stayed matter that could be resolved in the other [PTO] proceedings or by the parties themselves[,] and would contradict the spirit of Federal Rule of Civil Procedure 1 because it could waste judicial resources." Id.
The scenario in Silcotek is different from that here, however. For one thing, as noted above, from the date of the TC Heartland decision until August 2017, a blanket stay was not in effect in this case. Instead, only discovery was stayed. The trial date remained in effect, and by the terms of the stay, any other necessary motions could have been filed at any time. And even after the second, broader stay was entered in August 2017, this matter was still not entirely halted in the District Court. At that point, Ubisoft (along with the other parties) was still asking the District Court to make rulings on substantive case issues, all while Ubisoft kept its venue objection in its back pocket. What if, in issuing its decision on claim construction/definiteness, the District Court had altered the Court's claim constructions in a manner favorable to Ubisoft and to the other Defendants (and unfavorable to Plaintiff)? Would Ubisoft, having remained silent in the meantime about its lack-of-venue defense, then have sought a change of venue? Or would it have been content to keep the case here in this District? It is hard to know the answers to these hypothetical questions. But the point is that by not raising the venue defense sooner, Ubisoft permitted itself the opportunity to hedge its bets as to which venue it would proceed in, all while keeping this Court and Plaintiff in the dark about its position on that issue. And this silence came at a time when this Court was working to resolve important issues in the case. It is that kind of "tactical wait-and-see" approach that can give rise to forfeiture of a venue defense. Micron, 875 F.3d at 1102.
Second, Ubisoft argues that the venue objection was not "available" to it until the District Court's December 13, 2017 ruling on the motion to dismiss-the ruling that de facto eliminated the foreign defendant "from this proceeding entirely which, accordingly, further eliminated any question as to whether venue over domestic defendant Ubisoft, Inc. is improper in this district." (D.I. 144 at 6; see also D.I. 155 at 3-4 (Ubisoft arguing that Chief Judge Stark's December 2017 ruling is what made the improper venue defense "`available'" to Ubisoft, and that it "immediately raised it" thereafter)) Ubisoft explains that waiting until after this date to file the instant motion "was entirely consistent with the concern raised by [the District Court] in other cases that, where venue is proper as to a foreign corporation but improper as to a related domestic corporation, transfer of both defendants may not be `the most reasonable and appropriate outcome.'" (D.I. 155 at 3-4 (quoting Koninklijke KPNNV. v. Kyocera Corp., Civil Action No. 17-87-LPS-CJB, 2017 WL 6447873, at *4 (D. Del. Dec. 18, 2017)).
This line of argument is not entirely clear nor persuasive to the Court. The holding of TC Heartland applied to domestic corporations. TC Heartland, 137 S. Ct. at 1516, 1520 & n.2. At the time that TC Heartland issued, then, regardless of whether the claims `against the foreign defendant would ultimately be rejuvenated by the District Court, it should have been clear to Ubisoft that venue in this District was not proper as to it. And so there is no reason why the venue defense was not "available" to Ubisoft until Chief Judge Stark affirmed the Court's motion to dismiss R&R in December 2017. Indeed, shortly after TC Heartland issued, there were a number of cases in which a domestic corporation incorporated outside of Delaware, which had been sued along with foreign defendants, quickly moved this Court to dismiss or transfer for improper venue. That was exactly what happened, for example, in a case cited by Ubisoft: Koninklijke KPN NV. v. Kyocera Corp., Civil Action No. 17-87-LPS-CJB, 2017 WL 6447873 (D. Del. Dec. 18, 2017). 2017 WL 6447873, at *1, *4 (defendants moved to dismiss on June 9, 2017, less than one month after TC Heartland issued, requesting that "both [the domestic and foreign] Defendants be dismissed or transferred together to the Southern District of California pursuant to 28 U.S.C. § 1406(a)"); see also, e.g., 3G Licensing, S.A. v. HTC Corp., Civil Action No. 17-83-LPS-CJB, 2017 WL 6442101, at *1, *3 (D. Del. Dec. 18, 2017) (same). Ubisoft does not represent that it would have declined to move to dismiss or transfer based on improper venue were the claims against the foreign entity to have remained in the case. Ultimately, Ubisoft fails to adequately explain why it had to wait for Chief Judge Stark's decision on the motion to dismiss R&R in order to assert a defense of improper venue as to it. And so the Court does not view December 13, 2017 as the relevant date by which the venue objection was "available" to Ubisoft. Instead, as described above, the venue objection was available to Ubisoft on May 22, 2017, when TC Heartland issued.
The Court now considers Ubisoft's conduct after TC Heartland issued. In that period, Ubisoft continued to actively participate in the litigation. In June and July 2017, it filed objections and responses to objections (along with the Defendants in the related Harmonix Action) to one of the claim construction R&Rs. (D.I. 131, 133) In October 2017, it filed a Statement that addressed Plaintiffs recently-filed Notice of Supplemental Authority; this filing related to Plaintiffs pending objections to the motion to dismiss R&R. (D.I. 137)
In the months after TC Heartland, then, Ubisoft was actively seeking rulings from this Court on significant issues in this case. What it was not doing was challenging venue, or giving this Court any hint that it intended to do so in the future.
In reaching its decision that Ubisoft has forfeited a defense of improper venue, the Court has also been significantly imparted by consideration of additional factors that "implicate efficiency or other interests of the judicial system and of other participants in the case." Micron, 875 F.3d at 1101-02. The Ubisoft Action has been pending in this Court for over five years. The Court and the District Court have expended significant time and energy in becoming familiar with various issues in the case-a case involving some fairly complex video game-related technology. Relatedly, the Court and the District Court have issued numerous decisions on a vast array of case-related disputes. (See, e.g., D.I. 12; D.I. 36; D.I. 43; D.I. 52; D.I. 59; D.I. 121; D.I. 123; D.I. 129; D.I. 138; D.I. 139) The mechanics of transfer or re-filing would take time, and if another judge were to pick this case up in a few months, that judge would need to expend resources in order to get up to speed. Thus, dismissal or transfer would inevitably lead to further delay in resolving this matter, and such delay certainly would not promote the just, speedy and inexpensive resolution of this dispute. See Keranos, LLC, (D.I. 383 at 4) (explaining that the defendants' delay in raising their motion regarding improper venue "is amplified by the length of time [plaintiffs] cases have been pending-nearly five years. In light of [d]efendants' waiver and the nearly five-year pendency of [plaintiff's] lawsuits in this district, the `orderly and expeditious disposition' of the cases would be upset by transfer to another district") (citations omitted); Agri-Labs Holding LLC v. Taplogic, LLC, ___ F. Supp. 3d ___, 2018 WL 437560, at *4 (N.D. Ind. Jan. 16, 2018) (finding that defendant's motion to dismiss for improper venue was not timely, where it was raised one month after TC Heartland but the case had been pending for three years, the motion was filed concurrently with motions for summary judgment, and where "significant judicial resources have already been expended"); cf In re Cutsforth, Inc., 2017-135, 2017 WL 5907556, at *1-2 (Fed. Cir. Nov. 15, 2017) (vacating district court's order granting defendant's motion to transfer for improper venue and remanding for the court to consider non-Rule 12 bases for waiver of the venue defense that had been raised by plaintiff, such as "`the waste of judicial resources after five years of litigation, and the burden that [would] now be imposed on a district unfamiliar with this case'") (citation omitted).
Also relevant here is the fact that the related Harmonix Action is pending in this Court. That case involves the same patent, the same three asserted claims, and identical invalidity contentions. (D.I. 152 at 9-10) A grant of Ubisoft's motion would require two courts to invest significant time and effort in order to resolve the two cases. Litigating two similar cases involving the same patent in two different venues would serve to make the overall judicial system less efficient.
Faced with all of these considerations—(1) Ubisoft's conduct in waiting eight months to assert its venue objection while actively seeking and obtaining key rulings from this Court; (2) the lengthy time period that this case has been pending; (3) the significant judicial resources this Court has already devoted to this case; and (4) the existence of a related matter in this Court involving many of the same issues-the Court concludes that Ubisoft has forfeited its venue objection. This conclusion is not reached lightly, is not contrary to any other statute or rule, and is intended to reflect a "`reasonable response to the problems and needs confronting the court[.]'" Micron, 875 F.3d at 1100 (quoting Dietz, 136 S. Ct. at 1892); see also 28 U.S.C. § 1406(6) ("Nothing in this chapter shall impair the jurisdiction of a district court of any matter involving a party who does not interpose timely and sufficient objection to the venue."). For the foregoing reasons, the Court recommends that the Motion be DENIED.
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(1)(B), Fed. R. Civ. P. 72(6)(1), and D. Del. LR 72.1. The parties may serve and file specific written objections within fourteen (14) days after being served with a copy of this Report and Recommendation. Fed. R. Civ. P. 72(6)(2). The failure of a party to object to legal conclusions may result in the loss of the right to de nova review in the district court. See Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987); Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1 (3d Cir. 2006).
The parties are directed to the Court's Standing Order for Objections Filed Under Fed. R. Civ. P. 72, dated October 9, 2013, a copy of which is available on the District Court's website, located at http://www.ded.uscourts.gov.
