United States District Court, D. Minnesota
Mathias W. Samuel, Conrad A. Gosen, Joseph A. Herriges,
Michael E. Florey, Rob Courtney, and Ann Motl, Fish &
Richardson, counsel for Plaintiff.
Alyse Jenero, Devon Curtis Beane, Benjamin E. Weed, Jason A.
Engel, and Alan L. Barry, K & L Gates, LLP, Olivia
Moreland Cooper and Robert D. Brownson, Brownson Norby,
PLLC,, counsel for Defendants.
MEMORANDUM OPINION AND ORDER
RICHARD NELSON, UNITED STATES DISTRICT JUDGE
matter is before the Court on Defendants' Supplemental
Motion to Transfer Venue [Doc. No. 431]. For the reasons
stated herein, Defendants' Motion is granted, and this
case is transferred to the Western District of Pennsylvania.
forth in the factual recitation of this Court's August 4,
2017 Order [Doc. No. 419], incorporated herein by reference,
this 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. (“SAC”) ¶ 27
[Doc. No. 45].) 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.
¶ 8 [Doc. No. 1].) Defendants answered this first
complaint on July 6, 2012, admitting Cutsforth's venue
allegations. (See Westinghouse Air Brake Techs.
Corp. (“Wabtec”) Answer ¶ 8 [Doc. No. 17];
Fulmer Co. LLC Answer ¶ 8 [Doc. No. 18].) 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. Answer to Am. Compl ¶ 18 [Doc. No. 47];
MotivePower, Inc. Answer to Am. Compl. ¶ 18 [Doc. No.
48]; Wabtec Answer to Am. Compl. ¶ 18 [Doc. No. 49].)
the entry of a stay from June 2013 through September 2016,
during inter partes review before the U.S. Patent Trial and
Appeal Board, this litigation resumed. (See Aug. 4,
2017 Order at 2.) In May 2017, the U.S. Supreme Court issued
TC Heartland LLC v. Kraft Foods Group Brands LLC,
137 S.Ct. 1514 (2017). Shortly thereafter, Defendants sought
permission to amend their answers to deny that venue was
proper in this district, and to move to dismiss or transfer
this case for improper venue, arguing for the retroactive
application of TC Heartland. (See
Defs.' Mem. Supp. Mot. to Transfer at 1 [Doc. No. 404].)
on TC Heartland, in August 2017, this Court granted
Defendants' Motion to Transfer Venue. (See Aug.
4, 2017 Order at 5, 9-10.) Finding that TC Heartland
provided an intervening change in law that excused Defendants
from raising venue defenses earlier, the Court held that
Defendants did not waive their venue objections under Federal
Rule of Civil Procedure 12(g)(2) and (h)(1)(A). (See
id. at 6-9.) The Court therefore ordered the transfer of
venue to the Western District of Pennsylvania, as the parties
did not dispute the propriety of venue in that district.
(See id. at 12-13.)
subsequently petitioned the Federal Circuit for a writ of
mandamus directing this Court to vacate its transfer order,
which the Federal Circuit granted. In re Cutsforth,
Inc., No. 2017-135, 2017 WL 5907556, at * 2 (Fed. Cir.
Nov. 15, 2017). In the Cutsforth mandamus order, the
Federal Circuit referenced a related ruling issued on the
same day, In re Micron Technology, Inc., 875 F.3d
1091 (Fed. Cir. 2017). In In re Micron, the Federal
Circuit held, consistent with this Court's earlier ruling
in the instant case, that because TC Heartland
effected a change in the relevant venue law, a
defendant's failure to earlier raise a venue objection
did not constitute a waiver of that objection. Id.
at 1096-1100. But the Federal Circuit further stated that
Rule 12 is not the only basis under which a district court
may reject the timeliness of a venue defense. Id. at
1100-01. The court pointed to Federal Rule of Civil Procedure
1 as another basis for evaluating the timeliness of a venue
defense. Id. at 1100 (citing Dietz v. Bouldin,
Inc., 136 S.Ct. 1885, 1891 (2016)). It observed that
under Rule 1, district courts possess inherent powers to
“manage their own affairs so as to achieve the orderly
and expeditious disposition of cases.” Id.
(citing Link v. Wabash R.R. Co., 370 U.S. 626,
light of the changed analysis under In re Micron,
the parties here agreed to file supplemental briefing to
address the issues raised by the Federal Circuit. Defendants
filed the instant motion, renewing their request to transfer
venue. They argue that transfer is still required when
considering non-Rule 12-based factors. (Defs.' Supp'l
Mem. Supp. Mot. Transfer at 8 [Doc. No. 432].) They further
note that this Court has already recognized that Defendants
moved to transfer as soon as reasonably possible in light of
the change in the law, and did not otherwise demonstrate any
sort of undue delay, bad faith, or dilatory motive.
(Id. at 8-9) (citing Aug. 4, 2017 Order at 10.)
Moreover, they assert that this case is not close to trial,
(id. at 13-14), and that Cutsforth's claims of
prejudice are irrelevant to the legal analysis. (Id.
at 14-16.) But even if Cutsforth's alleged prejudice were
relevant, Defendants argue, such prejudice should not
outweigh Defendants' prejudice of being subject to
legally improper venue. (Id. at 16-17.)
response, Cutsforth argues that in this Court's Rule 1
analysis, it should consider Defendants' “tactical
conduct” in allegedly delaying the filing of their
motion to transfer. (See Pl.'s Supp'l
Opp'n Mem. at 7 [Doc. No. 436].) Although TC
Heartland was issued on May 22, Cutsforth asserts that
Defendants made no mention of the case, or of the possibility
of a motion to transfer venue, at the May 26, 2017 summary
judgment hearing. (Id.) Rather, Cutsforth asserts
that Defendants “plainly waited until [they] had gauged
the Court's reaction to summary judgment argument before
filing [their] venue motion.” (Id. at 7.) It
further contends that wasted resources, prejudice, and the
advanced stage of the case preclude transfer. (Id.
TC Heartland, 137 S.Ct. at 1518-19, the U.S. Supreme
Court clarified that the narrower, patent-specific venue
statute, 28 U.S.C. § 1400(b), determines venue in patent
infringement suits. Further, the Court held that the general
venue statute, 28 U.S.C. § 1391, under which venue is
proper in “any judicial district in which any defendant
is subject to the court's personal jurisdiction, ”
does not affect the terms or interpretation of the patent
venue statute. Id. Under § 1400(b), venue for
patent infringement actions properly lies either: (1) in the
district where the defendant “resides;” or (2)
“where the defendant has committed acts of infringement
and has a regular and established place of business.”
28 U.S.C. § 1400(b). The Court here reaffirms its
previous findings under Rule 12 that because none of the
Defendants reside in Minnesota, and there is no evidence that
Defendants committed acts of infringement in Minnesota, or
that Defendants maintain “a regular and established
place of business” here, venue is improper under both
prongs of § 1400(b). (See Aug. 4, 2017 Order at
11-14.) Also, the Court restates its prior finding
that TC Heartland constituted an intervening change
in the law sufficient to excuse waiver under Rule 12(g)(2)
and (h)(1)(A), (see id. at 9-10)-consistent with the
Federal Circuit's subsequent ruling in In re
Micron, 875 F.3d at 1096-1100.
issue on remand is whether other non-merits, non-Rule
12-based considerations justify a finding of forfeiture of
the defense of improper venue. Cutsforth, 2017 WL
5907556, at *2; see also In re Micron, 875 F.3d at
1101-02. As noted, the Federal Circuit directs this Court to
Rule 1 as a source of authority for such ...