United States District Court, D. Idaho
MEMORANDUM DECISION AND ORDER
Lynn Winmill Chief U.S. District Court Judge.
Court has before it a motion to transfer filed by defendant
Wyers. The motion is fully briefed and at issue. For the
reasons explained below, the Court will grant the motion.
Andersen claims that defendant Wyers is making a trailer
hitch that infringes three patents held by Andersen. In its
pending motion to transfer, Wyers asks the Court to transfer
this case to the District of Colorado.
case was filed here about two years ago on January 29, 2016.
Wyers admitted that venue was proper, and the parties engaged
in discovery to prepare for the Markman hearing on
claim construction. That hearing was held and the Court
issued its Markman decision in May of 2017. About
four months later, the Court issued a Case Management Order
setting various deadlines, including a deadline for the
completion of discovery on February 16, 2018. See Case
Management Order (Dkt. No. 77).
motion to transfer, Wyers recognizes that it conceded venue
in its Answer filed April 15, 2016. But at that time, Wyers
argues, the governing law from the Federal Circuit was that
venue in patent cases was proper where a defendant did
business, and because Wyers clearly did business in Idaho,
contesting venue would be frivolous. See VE Holding Corp.
v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990). It
was not until May of 2017 - more than a year after Wyers
filed its Answer - that the Supreme Court changed that law in
TC Heartland LLC v. Kraft Foods Group Brands LLC,
137 S.Ct. 1514 (2017). In that decision, the Supreme Court
held that venue was proper where the corporate defendant was
incorporated, not where it did business. Id. Wyers
is incorporated in Colorado and so it immediately filed the
present motion asking the Court to transfer the case to
Colorado. Wyers claims it is entitled to an exception for
waiver caused by an intervening change in the law.
defense of improper venue is waivable. Albino v.
Baca, 747 F.3d 1162, 1170 (9th Cir. 2014). Wyers waived
that defense by admitting venue was proper in its answer. The
issue is whether the Supreme Court's decision in TC
Heartland was an intervening change in the law that
entitles Wyers to claim an exception from waiver.
Courts have split into two camps on this issue. One camp
holds that TC Heartland did not constitute an
intervening change in the law because it simply relied on an
earlier Supreme Court - Fourco Glass Co. v. Transmirra
Prods. Corp., 353 U.S. 222, (1957) - holding that venue
in patent cases was within the state of incorporation. These
cases hold that the Federal Circuit in VE Holding
had no authority to overrule Fourco and so
Fourco remained available to any corporate defendant
who wanted to challenge venue when sued outside of the state
where it was incorporated. Because Fourco was always
available as a defense, the decision in TC Heartland
was not the type of intervening change in the law that
constitutes an exception to waiver, according to these cases.
See e.g., Reebok International Ltd. v. TRB Acquisitions
LLC, 2017 WL 3016034 (D. Ore. July 14, 2017); Elbit
Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC,
2017 WL 2651618, at *20 (E.D. Tex. June 20, 2017); Cobalt
Boats, LLC v. Sea Ray Boats, Inc., 2017 WL 2556679, at
*3 (E.D. Va. June 7, 2017); Infogation Corp. v. HTC
Corp., 2017 WL 2869717, at *4 (S.D. Cal. July 5, 2017);
iLife Techs., Inc. v. Nintendo of Am., Inc., 2017 WL
2778006, at *5-7 (N.D. Tex. June 27, 2017); Amax Inc. v.
ACCO Brands Corp., 2017 WL 2818986, at *3 (D. Mass. June
29, 2017); Chamberlain Grp., Inc. v. Techtronic Indus.
Co. et al., 2017 WL 3205772, at *2 (N.D. Ill. June 28,
2017) (same); Skyhawke Techs., LLC v. DECA Int'l
Corp., 2017 WL 3132066, at *2 (S.D.Miss. July 21, 2017)
second camp puts more weight on the Federal Circuit's
decision in VE Holding, observing that it was deemed
the governing law for 27 years. It was reasonable for
corporate defendants to assume Fourco no longer
governed venue issues because the Federal Circuit in VE
Holding expressly said so, reasoning that intervening
statutory changes rendered Fourco inapplicable. In
this context, a decision (T.C. Heartland)
reinstalling Fourco as the law on venue was an
intervening change in the law that excused wavier. See
e.g., Columbia Sportswear North America, Inc. v. Seirus
Innovative Accessories, Inc., 265 F.Supp.2d
1196 (D. Ore. 2017); Westech Aerosol Corp. v. 3M
Co., 2017 WL 2671297, at *2 (W.D. Wash. June 21, 2017);
OptoLum, Inc. v. Cree, Inc., , 2017 WL 3130642, at
*2 (D. Ariz. July 24, 2017); Maxchief Inv. Ltd. v.
Plastic Dev. Grp., LLC, 2017 WL 3479504, at *4 (E.D.
Tenn. Aug. 14, 2017); Valspar Corp. v. PPG
Indus., Inc., 2017 WL 3382063, at *4 (D. Minn. Aug.
4, 2017); Ironburg Inventions Ltd. v. Valve Corp.,
2017 WL 3307657, at *3 (N.D.Ga. Aug. 3, 2017); Smart
Wearable Tech. Inc. v. Fitbit, Inc., 2017 WL 3725630
(W.D. Va. Aug. 29, 2017) (same); Simpson
Performance Prods., Inc. v. NecksGen, Inc., 2017 WL
3616764, at *6-7 (W.D. N.C. Aug. 23, 2017) (same).
both camps of cases contain strong arguments, the balance is
tipped by a decision of Judge Nye from this District in
CAO Lighting Inc. v. Light Efficient Design, 2017 WL
4556717 (D.Id. Oct. 11, 2017). In that decision,
Judge Nye concluded that defense counsel reasonably relied on
VE Holding for almost three decades, and that the
expense of challenging that decision would have been
Of course, Defendants could have incurred the time and
expense of filing such a motion with this Court, appealing to
the Federal Circuit and losing, and then filing a petition
with the Supreme Court in the hope that it would grant
certiorari and reverse VE Holding. However, the time
and expense of such a strategy rendered it, for all practical
Id. at *4. The Court agrees with that analysis. The
Court therefore holds that Wyers is entitled to the exception
for waiver provided by an intervening change in the law, and
therefore retains its right to seek a change of venue. Under
TC Heartland, the Court finds venue proper in the
District of Colorado. While this litigation has been ongoing
here for about two years, the transfer itself will constitute
only an insignificant delay - the case will continue there
just as it would have continued here. The Court ...