United States District Court, D. Minnesota
A. GOSEN, JOSEPH A. HERRIGES, MATHIAS W. SAMUEL, MICHAEL E.
FLOREY, AND ROB COURTNEY, FISH & RICHARDSON P.C., FOR
L. BARRY, BENJAMIN E. WEED, DEVON CURTIS BEANE, JASON A.
ENGEL, K&L GATES LLP, ROBERT D. BROWNSON, AND OLIVIA
MORELAND COOPER, BROWNSON & LINNIHAN, PLLP, FOR
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
the Court is Defendants' Motion to Transfer for Improper
Venue [Doc. No. 403]. For the reasons stated herein,
Defendants' Motion is granted, and this case is
transferred to the Western District of Pennsylvania.
long-running dispute concerns allegations that Defendants
have infringed various patents held by Plaintiff Cutsforth,
Inc. (“Cutsforth”) for the design and manufacture
of “brush holders” used by utility companies to
facilitate the generation of electricity. (See,
e.g., Second Am. Compl. [Doc. No. 45]
(“SAC”) ¶ 27.) Cutsforth filed suit on May
17, 2012, asserting, among other things, that venue in this
district was proper “pursuant to at least 28 U.S.C.
§§ 1391(b) and (c) and 1400(b).”
(See Compl. [Doc. No. 1] ¶ 8.) Defendants
answered this first complaint on July 6, 2012, admitting
Cutsforth's venue allegations. (See Westinghouse
Air Brake Techs. Corp. (“Wabtec”) Answer [Doc.
No. 17] ¶ 8; Fulmer Co. LLC (“Fulmer”)
Answer [Doc. No. 18] ¶ 8.) The complaint was
subsequently amended on July 13, 2012, and again on September
25, 2012-in both instances, Defendants agreed that venue was
proper in Minnesota. (See, e.g., LEMM Liquidating
Co. (“LEMM”) Answer to Am. Compl. [Doc. No. 47]
¶ 18; MotivePower, Inc. (“MotivePower”)
Answer to Am. Compl. [Doc. No. 48] ¶ 18; Wabtec Answer
to Am. Compl. [Doc. No. 49] ¶ 18.)
Defendants' request, a stay was entered in the case on
June 6, 2013 to facilitate inter partes review
before the U.S. Patent Trial and Appeal Board. (See
generally June 6, 2013 Order [Doc. No. 88].) The stay
remained in place until it was lifted on September 28, 2016,
at which time the litigation rapidly picked up pace. The
Court held a technology tutorial and claim construction
hearing on March 10, 2017, and heard the parties'
cross-motions for summary judgment on May 26, 2017. Just as
the Court was preparing to issue its claim construction
order, however, Defendants filed the present motion seeking
permission to amend their answers to deny that venue was
proper in this district, and to dismiss or transfer this case
for improper venue. See Fed. R. Civ. P. 12(b)(3),
15(b)(2). As justification for the untimeliness of the
motion, Defendants assert that while venue had been
proper in Minnesota under prevailing law at the time suit was
filed, it was no longer in the wake of the Supreme
Court's May 22, 2017 decision in TC Heartland LLC v.
Kraft Foods Grp. Brands LLC, 137 S.Ct. 1514 (2017).
(See Defs.' Mem. in Supp. of Mot. to Transfer
[Doc. No. 404] (“Defs.' Mem. in Supp.”) at
1.) In Defendants' view, TC Heartland upended
the law of venue in patent cases, should be applied
retroactively, and represents an intervening change in the
law such that any waiver of the improper venue argument
should be excused. (See generally id.)
the lateness of the request and the advanced state of this
litigation, the Court agreed to consider Defendants'
motion on an expedited basis, without a hearing.
(See June 12, 2017 Order [Doc. No. 397] at 2.) The
parties completed their briefing on July 17, 2017, and the
matter is now ripe for a decision.
Change in the Law of Venue
patent suits, venue is governed by 28 U.S.C. § 1400(b),
which provides that “[a]ny 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 and has a regular and
established place of business.” In 1957, the Supreme
Court determined that for purposes of corporate defendants, a
corporation “resides” only in its state of
incorporation. See Fourco Glass Co. v. Transmirra Prods.
Corp., 353 U.S. 222, 226 (1957). In so holding, the
Court rejected the argument that § 1400(b) incorporates
the broader definition of corporate “residence”
contained in the general venue statute, 28 U.S.C. §
1391(c). See Id. at 228.
has not amended § 1400(b) since Fourco was
decided. It has, however, amended § 1391 twice. In 1988,
Congress amended that statute to provide that “[f]or
purposes of venue under this chapter, a defendant
that is a 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.”
See TC Heartland, 137 S.Ct. at 1519 (emphasis added)
(citation omitted). Interpreting this change, the Federal
Circuit concluded that Congress meant to amend the definition
of “resides” as it appears in § 1400(b),
because that section falls in the same chapter as §
1391(c). See VE Holding Corp. v. Johnson Gas Appliance
Co., 917 F.2d 1574, 1584 (Fed. Cir. 1990). Accordingly,
the Federal Circuit held that in a patent case, a corporation
resided anywhere it was subject to personal
jurisdiction-greatly expanding the venue options for
plaintiffs. In so holding, it found that Congress had
effectively legislatively abrogated Fourco's
prior venue standard. See Id. at 1583-84.
twenty-seven years, from 1990 until 2017, VE Holding
was the governing standard on the matter of venue in patent
litigation, and neither party here disputes that fact.
Indeed, as recently as 2016, the Federal Circuit reaffirmed
its holding in that case and stated explicitly that the
argument that Congress had meant by its 2011 amendments to
return to the rule in Fourco was “utterly
without merit or logic.” See In re TC Heartland
LLC, 821 F.2d 1338, ...