United States District Court, D. Minnesota
The Valspar Corporation and Valspar Sourcing, Inc., Plaintiffs,
PPG Industries, Inc., Defendant.
A. LEACH, ADAM M. KAUFMANN, ELIZABETH A. CUTRI, KIRKLAND
& ELLIS LLP, PATRICK S. WILLIAMS, BRIGGS & MORGAN,
PA, F. ANDREW UBEL, III, THE VALSPAR CORPORATION, AND ANDREW
A. DEMASTER, VALSPAR SOURCING, INC., FOR PLAINTIFFS.
J. CROWSON, JOSEPH J. RAFFETTO, HOGAN LOVELLS U.S. LLP, LEWIS
A. REMELE, JR., AND JEFFREY D. KLOBUCAR, BASSFORD REMELE, PA,
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
matter comes before the Court on Defendant's Motion to
Dismiss for Improper Venue [Doc. No. 84]. For the reasons
stated herein, Defendant's Motion is granted, and this
case is transferred to the Western District of Pennsylvania.
The Valspar Corporation and Valspar Sourcing, Inc.
(collectively, “Valspar”) are, respectively, the
exclusive licensee and owner of several patents relating to
spray-applied bisphenol A (“BPA”)-free coatings
used on food and beverage cans. See Valspar Corp. v. PPG
Indus., Inc., No. 16-cv-1429 (SRN/SER), 2017 WL 6534414,
at *1 (D. Minn. Nov. 3, 2016). Valspar alleges that Defendant
PPG Industries, Inc. (“PPG”) has developed and
marketed a competing product, INNOVEL HPS
(“Innovel”) that infringes on these patents.
See Id. On the basis of those allegations, the
present suit commenced on May 23, 2016. See id.
September 9, 2016, PPG moved to transfer this case to the
Western District of Pennsylvania, arguing that that district
was a more convenient forum for the parties and witnesses,
and that it would best serve the interests of justice.
(See Def.'s Mot. to Transfer [Doc. No. 33] at
1.) See 28 U.S.C. § 1404(a). Notably, for
purposes of the present motion, PPG did not contend
that venue in Minnesota was improper. Indeed, at all times
prior to filing this motion, it conceded that venue was
technically proper in Minnesota under prevailing law.
(See, e.g., Answer to Am. Compl. [Doc. No. 40]
¶ 15 (“PPG admits that venue for this action is
proper in the District of Minnesota. . . .”).) After
careful consideration, this Court denied PPG's motion to
transfer, finding that PPG had “failed to satisfy its
heavy burden of demonstrating that the Western District of
Pennsylvania is a more convenient forum for this case than
the District of Minnesota.” Valspar, 2017 WL
6534414, at *6 (citing Datalink Corp. v. Perkins Eastman
Architects, P.C., 33 F.Supp.3d 1068, 1079 (D. Minn.
9, 2017, PPG filed the present motion to amend its answer to
deny that venue is proper, pursuant to Federal Rule of Civil
Procedure 15(a)(2), and to dismiss this case (or in the
alternative, to transfer it) pursuant to Federal Rule of
Civil Procedure 12(b)(3). As justification for the
untimeliness of the motion, PPG asserts 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 Def.'s Mem. in Supp. of Mot. to
Dismiss [Doc. No. 85] (“Def.'s Mem. in
Supp.”) at 1-2.) In PPG's 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
Court agreed to consider PPG's motion on an expedited
basis, without a hearing. (See May 31, 2017 Order
[Doc. No. 80] at 1-2.) The parties completed their briefing
on June 30, 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