OPINION & ORDER - 1

IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ

AMERICA, INC., an Oregon corporation,

OPINION & ORDER

Plaintiff,

v.

SEIRUS INNOVATIVE ACCESSORIES,

INC., a Utah corporation,

Defendant.

David W. Axelrod 

Scott D. Eads

Nicholas F. Aldrich, Jr.

Schwabe, Williamson & Wyatt, P.C.

1211 SW 5th Ave., Ste. 1600

Portland, OR 97204

Attorneys for Plaintiff

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Renée E. Rothauge

Markowitz Herbold P.C.

1211 SW Fifth Ave., Suite 3000

Portland, OR 97204

Christopher S. Marchese

Seth M. Sproul

Garrett K. Sakimae

Tucker N. Terhufen

Fish & Richardson P.C.

12390 El Camino Real

San Diego, CA 92130

Matthew D. Murphey

Troutman Sanders LLP 

5 Park Plaza, Suite 1400

Irvine, CA 92614

Attorneys for Defendant

HERNÁNDEZ, District Judge:

Before the Court is Defendant’s motion to dismiss or transfer venue to the Southern 

District of California. Defendant argues that venue is improper in this District under the Supreme 

Court’s recent decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 113 S. Ct. 

1514 (2017). Because TC Heartland constitutes an intervening change in law, the motion is 

granted and the Court orders that this case be transferred to the Southern District of California.

BACKGROUND

I. Procedural Background

Plaintiff filed its Complaint in the District of Oregon on January 1, 2015. See Compl. 

ECF 1. Plaintiff is an Oregon corporation with its principal place of business in Oregon. 

Defendant is a Utah corporation with its principal place of business in San Diego, California. On 

February 27, 2015, Defendant filed its first motion to dismiss or transfer venue. See First Mot. to 

Dismiss, ECF 15. Specifically, Defendant moved under Rule 12(b)(3) to dismiss for lack of 

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personal jurisdiction. Defendant asserted that venue was improper because Oregon did not have 

personal jurisdiction over it, therefore Defendant did not “reside” in Oregon under 28 U.S.C. 

§ 1391(c). Def.’s Mem. Supp. First Mot. to Dismiss 10–16, ECF 16. Additionally, Defendant 

argued that the convenience factors provided in 28 U.S.C. § 1404(a) favored transfer to the 

Southern District of California. The Court denied the motion, holding that it had “personal 

jurisdiction over Seirus because it intentionally targeted the forum by selling allegedly infringing 

products directly to Oregon retailers.” Op. & Order 2, June 29, 2015, ECF 33. The Court also 

found that the parties split the multi-factor analysis under § 1404(a) and it deferred to Plaintiff’s 

choice of venue. Id.

To date, the parties have litigated this case up to trial. The Court engaged in claim 

construction and held a Markman hearing. The Court also granted the parties’ joint motion for 

judgment declaring Plaintiff’s Design Patent valid. Before the close of discovery, the Court 

granted Plaintiff’s motion for partial summary judgment that Defendant infringed its Design 

Patent. Additionally, the Court ruled on separate fully briefed cross-motions for partial summary 

judgment regarding Plaintiff’s Utility Patents and other issues remaining in this case. See Op. & 

Order, Apr. 12, 2017, ECF 159. Defendant filed its second motion to dismiss or transfer venue 

on June 14, 2017. A ten-day jury trial is set to begin on September 19, 2017, and the Court has 

received voluminous pre-trial filings.

II. Legal Background

Defendant’s motion arises from the Supreme Court and Federal Circuit’s differing 

interpretations of the relationship between two venue statutes. Venue in general is governed by 

28 U.S.C. § 1391(c). Venue in patent cases is governed by 28 U.S.C. § 1400(b), which provides: 

“Any civil action for patent infringement may be brought in the judicial district where the 

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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 analyzed the relationship 

between the two provisions in Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 

(1957). When Fourco was decided, § 1391(c) had been amended to read: “A corporation may be 

sued in any judicial district in which it is incorporated or licensed to do business or is doing 

business, and such judicial district shall be regarded as the residence of such corporation for 

venue purposes.” Id. at 223. The Supreme Court considered whether the general venue provision 

should be read into § 1400(b), expanding the definition of where a domestic corporation 

“resides” for venue purposes. Section 1400(b) provided that a corporation “resides” only in the 

state in which it is incorporated; § 1391(c), by contrast, used the definition of corporate residence 

to mean that a defendant could be sued where it was doing business, or in other words, where the 

court had personal jurisdiction over it.

In Fourco, the Supreme Court looked to its prior decision in Stonite Prods. Co. v. Melvin 

Lloyd Co., 315 U.S. 561 (1942), which presented a legally indistinguishable question about 

whether the general venue statute applied to patent infringement litigation. In Stonite, the Court 

found that the precursor to § 1400(b) was the “exclusive provision controlling venue in patent 

infringement proceedings.” Id. at 561. The Stonite Court explained that Congress did not intend

§ 1400(b)’s predecessor “to dovetail with the general provisions relating to venue of civil suits, 

but rather that it alone should control venue in patent infringement cases.” Id. at 555–56. Relying 

on Stonite, the Court in Fourco held that “§ 1400(b) is the sole and exclusive provision 

controlling venue in patent infringement actions, and it is not to be supplemented by the 

provisions of 28 U.S.C. § 1391(c).” 353 U.S. at 229. The Supreme Court found that the Reviser’s 

Note did not clearly express any substantive change to § 1400(b), therefore none would be 

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presumed and § 1391(c)’s amendment to purportedly apply to “all cases” did not include patent 

cases. Id. at 227–28.

Section 1400(b) has not been amended since Fourco was decided; but in 1988, Congress 

amended § 1391(c). The 1988 amendment changed § 1391(c) to read as follows: “For 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.” Judicial Improvements and Access to Justice Act, Pub. L. No. 100–702, tit. X,

§ 1013(a), 102 Stat. 4642, 4669 (1988). In VE Holding Corp. v. Johnson Gas Appliance Co., the 

Federal Circuit considered whether the 1988 amendment to § 1391(c) applied to § 1400(b). 917 

F.2d 1574 (1990). The Federal Circuit found that by including the phrase “under this chapter,” 

Congress intended § 1391(c)’s amendment to apply to all of chapter 87 of title 28, which 

included § 1400(b). Id. at 1575 (“We hold that Congress by its 1988 amendment of 28 U.S.C. 

§ 1391(c) meant what it said; the meaning of the term ‘resides’ in § 1400(b) has changed.”).

The Federal Circuit squared its decision with Fourco and Stonite by reasoning that the 

version of § 1391(c) as it was in Fourco no longer existed and that Congress could have 

excepted § 1400(b) from the 1988 amendment but chose not to. The Federal Circuit explained 

that the plain meaning of the statute and the Supreme Court’s willingness to read another 

provision into § 1400(b) in a different case indicated that Congress meant § 1391(c) and 

§ 1400(b) to be read together. Id. at 1579–80. For the next twenty-seven years, venue in patent 

cases incorporated § 1391(c) into § 1400(b).

On May 22, 2017, the Supreme Court decided TC Heartland, reaffirming Fourco’s 

central holding that: “[T]he amendments to § 1391 did not modify the meaning of § 1400(b) as 

interpreted by Fourco. . . . [A] domestic corporation ‘resides’ only in the State of incorporation 

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for purposes of the patent venue statute.” 137 S. Ct. at 1517. In 2011, Congress amended 

§ 1391(c) to read: “That ‘[f]or all venue purposes,’ a corporation ‘shall be deemed to reside, if a 

defendant, in any judicial district in which such defendant is subject to the court’s personal 

jurisdiction with respect to the civil action in question.” Id. (quoting 28 U.S.C. §§ 1391(a), (c)). 

The Court found that “the current version of § 1391 does not contain any indication that 

Congress intended to alter the meaning of § 1400(b) as interpreted by Fourco.” Id. at 1520. The 

Court concluded as follows:

Finally, there is no indication that Congress in 2011 ratified the 

Federal Circuit’s decision in VE Holding. If anything, the 2011 

amendments undermine that decision’s rationale. As petitioner 

points out, VE Holding relied heavily—indeed, almost 

exclusively—on Congress’ decision in 1988 to replace “for venue 

purposes” with “[f]or purposes of venue under this chapter ” 

(emphasis added) in § 1391(c). Congress deleted “under this 

chapter” in 2011 and worded the current version of § 1391(c)

almost identically to the original version of the statute. Compare 

§ 1391(c) (2012 ed.) (“[f]or all venue purposes”) with § 1391(c) 

(1952 ed.) (“for venue purposes”). In short, nothing in the text 

suggests congressional approval of VE Holding.

Id. at 1521. In sum, TC Heartland reaffirmed that for venue purposes in patent cases, a domestic 

corporation “resides” only in its state of incorporation.

STANDARDS

Pursuant to Rule 12(b)(3), a party may move to dismiss an action for improper venue. If 

venue is improper, the district court shall dismiss the case “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). The plaintiff bears the burden of showing that venue is proper. Piedmont Label Co. v. 

Sun Garden Packing Co., 598 F.2d 491, 496 (9th Cir. 1979). Venue is a waivable defense. Leroy 

v. Great W. United Corp., 443 U.S. 173, 180 (1979). A defendant raising a venue defense must 

do so either as part of its responsive pleading or in a motion brought under Rule 12. Fed. R. Civ. 

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P. 12(b), (h)(1). Rule 12(g)(2) provides that a party that makes a motion under Rule 12 “must not 

make another motion under this rule raising a defense or objection that was available to the party 

but omitted from its earlier motion.” The statute governing venue also 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.” 28 U.S.C. § 1406(b).

DISCUSSION

Defendant asserts that under TC Heartland, venue in the District of Oregon is improper 

because Defendant does not “reside” in Oregon under § 1400(b). The parties do not appear to 

dispute that venue is improper under § 1400(b) as interpreted by TC Heartland. Plaintiff, 

however, responds that Defendant waived this objection to venue because it did not make this 

argument in its first Rule 12 motion to dismiss or transfer venue. Plaintiff also argues that 

Defendant waived any objection to venue it had through its litigation conduct. Defendant’s 

position is that it sufficiently raised a venue defense in its first motion and that its litigation 

conduct does not constitute waiver. In any event, even if the venue objection was waived, 

Defendant argues that TC Heartland is intervening law which excuses any waiver. Plaintiff’s 

position is that TC Heartland merely reaffirmed that Fourco was always good law and it 

therefore does not excuse Defendant’s waiver.

I. Waiver of Venue Objection

As noted above, Plaintiff argues that Defendant waived its objection to venue: (1) by 

failing to raise the objection in its earlier Rule 12 motion; and (2) through its litigation conduct.

A. Failure to Raise the Venue Objection

Plaintiff claims that Defendant’s motion to transfer violates Rule 12(g)(2) because 

Defendant failed to preserve an objection to venue based on Fourco in its first motion to dismiss. 

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Rule 12(g)(2) states: “Except as provided in Rule 12(h)(2) or (3), a party that makes a motion

under this rule must not make another motion under this rule raising a defense or objection that 

was available to the party but omitted from its earlier motion.” Fed. R. Civ. P. 12(g)(2) 

(emphasis added). Defendant did assert improper venue as a defense in its first motion to dismiss 

or transfer on the ground that the Court lacked personal jurisdiction over it. The parties dispute 

whether that improper venue defense was sufficient to preserve an objection to venue based on 

§ 1400(b) as interpreted by Fourco.

In its first motion to dismiss, Defendant argued that it did not “reside” in Oregon for 

venue purposes under § 1400(b) because the Court did not have personal jurisdiction over it. 

Def.’s Mem. Supp. First Mot. to Dismiss 10.

The first venue basis under Section 1400(b) is satisfied only if 

Seirus is deemed to “reside” (i.e., is subject to personal 

jurisdiction) in the District of Oregon. See VE Holding Corp. v. 

Johnson Gas Appliance Co., 917 F.2d 1574, 1583 (Fed. Cir. 1990). 

Here, for at least the reasons stated above, this Court has no 

personal jurisdiction over Seirus, and Seirus cannot be said to 

reside in this District.

Id. at 11. Defendant cited to VE Holding as the basis for venue under § 1400(b) and it cited to 

§ 1391(c) to determine where a corporation “resides” for venue purposes. Id. (“Section 1391(c) 

provides that, for venue purposes, a corporation shall be deemed to ‘reside’ in a judicial district if 

it is subject to personal jurisdiction there.”). 

Other district courts have considered similar cases and concluded that the defendants 

waived an objection to venue based on § 1400(b) as interpreted by Fourco despite having raised 

venue defenses in their answers or first Rule 12 motions. For example, in Elbit Systems a district 

court found that where the defendant based its venue objection “solely on the argument that this 

district did not have personal jurisdiction over [the defendant]”, it failed to affirmatively seek 

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dismissal or transfer based on the lack of “residence” under § 1400(b) as interpreted by Fourco.

Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No. 2:15-CV-00037-RWS-RSP, 2017 

WL 2651618, at *21 (E.D. Tex. June 20, 2017).

By filing motions to dismiss for improper venue and omitting its 

objection to venue under § 1400(b)—as that provision was 

interpreted by Fourco—[the defendant] waived its objection under 

Rule 12(g)(2) and 12(h)(1)(A). [The defendant] raised the defense

of improper venue, but Rule 12(g)(2)’s consolidation requirement, 

and hence Rule 12(h)(1)(A) waiver, is not limited to a “defense.” 

The Rule requires a party to include “a defense or objection that 

was available to the party.” Fed. R. Civ. P. 12(g)(2) (emphasis 

added); see also Albany Ins. Co., 5 F.3d at 909-10 (applying 

waiver to an available venue objection omitted from a prior motion 

to dismiss for improper venue). If a party can preserve any 

objection to venue by simply raising a venue defense—regardless 

of the objection underlying that defense—then the word 

“objection” in Rule 12(g)(2) would be superfluous. “[C]ourts 

‘must give effect, if possible, to every clause and word of a 

statute.’ ” See Loughrin v. United States, 134 S. Ct. 2384, 2390 

(2014) (citation omitted). [The defendant’s] venue objection is 

therefore waived.

Id. The Court agrees with the Elbit Systems court that raising the issue of venue as a defense in 

general is not sufficient to preserve every objection to venue. Rule 12(g)(2) states that a party 

waives a “defense or objection” by failing to raise it. As recognized in Elbit Systems, the word 

“objection” in the rule would be meaningless if a party could preserve all objections to venue by 

raising any venue defense. 

Similarly, other district courts have found that generally raising venue in an answer and

arguing to transfer venue based on convenience factors under 28 U.S.C. § 1404(a) were 

insufficient to preserve an objection to venue based on § 1400(b). See Amax, Inc. v. ACCO

Brands Corp, No. 16-10695-NMG, 2017 WL 2818986, at *2, (D. Mass. June 29, 2017) (holding 

that generally stating that venue was improper in an answer and arguing for transfer of venue 

based on convenience factors under § 1404(a) failed to preserve an objection that venue was 

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proper under § 1400(b)); Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 2:15cv21, 2017 WL 

2556679, at *4 (E.D. Va. June 7, 2017) (finding that one defendant had failed to sufficiently 

object to venue by raising a venue defense in its answer and by failing to cite Fourco to 

challenge venue).

In sum, the Court finds that Defendant waived its venue objection made in its second 

motion to dismiss because Defendant failed to raise an objection to venue based on § 1400(b) as 

interpreted by Fourco in its first Rule 12 motion.

B. Waiver Through Litigation Conduct

The parties also dispute whether Defendant’s litigation conduct waived any objection it 

had to venue. Even if a defendant initially files an objection to venue, subsequent conduct may 

nevertheless waive the defense. See Peterson v. Highland Music, Inc., 140 F.3d 1313, 1318 (9th 

Cir. 1998) (stating that the defense of improper venue “may be waived as a result of the course 

of conduct pursued by a party during litigation”); United States v. Ziegler Bolt & Parts Co., 111 

F.3d 878, 882 (Fed. Cir. 1997) (“A defendant may waive such affirmative defenses by actively 

litigating the suit, even where the defenses are properly included in the defendant’s answer.”). A 

party may waive improper venue based on conduct, for example, by previously filing a motion 

for summary judgment. Misch on Behalf of Estate of Misch v. Zee Enters., Inc., 879 F.2d 628, 

631–32 (9th Cir. 1989). 

Other district courts have found that litigation conduct constituted waiver in cases 

involving less activity than this case. For example, a district court in California found that the a 

year of litigation including the following conduct constituted waiver: “serving invalidity 

contentions, filing two motions to stay, filing a motion for judgment on the pleadings, and 

participating in claim construction[.]” Infogation Corp. v. HTC Corp., No. 16-CV-01902-H-JLB, 

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2017 WL 2869717, at *3 (S.D. Cal. July 5, 2017). The Infogation court found even more 

persuasive the defendant’s filing for judgment on the pleadings seeking to invalidate the patent at 

issue in that case. Id. Likewise, in Realtime Data LLC, a district court in Texas found that the 

defendant had waived its venue objection when it “filed numerous discovery motions, challenged 

[the plaintiff’s] patent claims based on alleged indefiniteness in their Markman briefing, and 

otherwise submitted to venue in this district.” Realtime Data LLC v. Netapp, Inc., No. 6:16-CV00961-RWS, 2017 WL 3588047, at *1 (E.D. Tex. Aug. 21, 2017); see also Navico, Inc. v. 

Garmin Int’l, Inc., No. 2:16-CV-190, 2017 WL 2957882, at *2 (E.D. Tex. July 11, 2017) 

(finding that defendant had waived its venue objection by admitting that venue was proper in its 

answer and by continuing to litigate the case through claim construction and “substantial motion 

practice without objecting to venue”); Koninklijke Philips N.V. v. ASUSTek Comput. Inc., No. 

CV 15-1125-GMS, 2017 WL 3055517, at *3 (D. Del. July 19, 2017) (finding that in addition to 

withdrawing its venue objection after the Federal Circuit’s ruling in TC Heartland, the following 

conduct established waiver: “(1) participat[ing] in a scheduling conference; (2) conduct[ing] 

discovery; (3) enter[ing] a stipulation and protection order with the plaintiff; and (4) mov[ing] 

the court to allow their out of state counsel to appear pro hac vice”).

In this case, Defendant has engaged in substantially more litigation conduct than the 

defendants in the cases identified above. Over the course of more than two years of litigation,

Defendant has: completed discovery; filed multiple motions to stay; filed and fully briefed 

multiple motions for partial summary judgment challenging the validity of Plaintiff’s patents; 

engaged in claim construction; filed other motions seeking the Court’s judgment on issues 

affecting trial; and submitted pre-trial filings including motions in limine. Furthermore, trial is 

set to begin this month. The Court is persuaded by Defendant’s vigorous litigation of this case—

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including actively pursuing dispositive and other substantive motions—that Defendant has 

waived its defense to improper venue.

II. Intervening Law Exception to Waiver

Defendant argues that any waiver of its venue objection is excusable because TC 

Heartland constitutes an intervening change in law. One “exception to the general rule of 

waiver” is “when there has been an intervening change in the law recognizing an issue that was 

not previously available.” Holland v. Big River Minerals Corp., 181 F.3d 597, 605 (4th Cir. 

1999) (citing Curtis Publ’g Co. v. Butts, 388 U.S. 130, 142–45 (1967)). This exception applies 

when “there was strong precedent prior to the change, such that the failure to raise the issue was 

not unreasonable and the opposing party was not prejudiced by the failure to raise the issue 

sooner.” Id. at 605–06 (internal quotation marks and citations omitted). “[A] party cannot be 

deemed to have waived objections or defenses which were not known to be available at the time 

they could first have been made, especially when it does raise the objections as soon as their 

cognizability is made apparent.” Holzsager v. Valley Hosp., 646 F.2d 792, 796 (2d Cir. 1981).

District courts have split on this issue. The majority of cases have found that TC 

Heartland does not constitute intervening law excusing waiver. Many of those cases cite to 

Cobalt Boats, a decision from the Eastern District of Virginia, which reasoned that “the conflict 

between Fourco and VE Holding was a defense that was available to Defendants just as easily as 

it was to the defendant in TC Heartland, who initially raised the argument before Plaintiff filed 

this case.” Cobalt Boats, 2017 WL 2556679, at *3. The Cobalt court explained that “[t]he 

Supreme Court has never overruled Fourco, and the Federal Circuit cannot overrule binding 

Supreme Court precedent. . . . Based on the Supreme Court’s holding in TC Heartland, Fourco

has continued to be binding law since it was decided in 1957, and thus, it has been available to 

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every defendant since 1957.” Id. Similarly, in Elbit Systems a district court in the Eastern District 

of Texas explained,

The court need not reach Defendants’ argument that a change in 

law constitutes an exception to waiver under Rule 12(h)(1)(A) 

because the Supreme Court’s decision in TC Hearltand does not 

qualify. Fourco was decided in 1957. While the Federal Circuit’s 

decision in VE Holding was inconsistent with Fourco, the Federal 

Circuit cannot overturn Supreme Court precedent.

2017 WL 2651618, at *20. The Elbit Systems court also wrote that “[w]hile such a motion might 

have been viewed as meritless in a lower court, that does not change the harsh reality that [the 

defendant] would have ultimately succeeded in convincing the Supreme Court to reaffirm 

Fourco, just as the petition in TC Heartland did.” Id. (citing Cobalt Boats, 2017 WL 2556679, at 

*3). Indeed, another court in this District has already adopted the reasoning of Cobalt Boats and 

Elbit Systems. See Reebok Int’l Ltd. v. TRB Acquisitions LLC, No. 3:16-cv-1618-SI, 2017 WL 

3016034, at *3 (D. Or. July 14, 2017) (Simon, J.) (citing both cases to conclude that TC 

Heartland was not intervening law excusing waiver). In Reebok, the court also found that the 

“defense of improper venue was not impossible or otherwise unavailable to” the defendants 

because the defendant in TC Heartland asserted the defense and prevailed before the Supreme 

Court. Id.

Several other district courts have reached similar conclusions. See iLife Techs., Inc. v. 

Nintendo of Am., Inc., No. 3:13-cv-04987, 2017 WL 2778006, at *7 (N.D. Tex. June 27, 2017) 

(“TC Heartland does not qualify as an intervening change in law.”); Tinnus Enters., LLC v. 

Telebrands Corp., No. 6:15-CV-00551-RC, 2017 WL 3404795, at *2 (E.D. Tex. Aug. 8, 2017) 

(adopting with the majority view that TC Heartland merely affirmed the viability of Fourco and 

did not establish intervening law); Navico, 2017 WL 2957882, at *2 (same); Koninklijke, 2017 

WL 3055517, at *4 (same); Orthosie Sys. LLC v. Actsoft, Inc., No. 4:16-CV-00873, 2017 WL 

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3145913, at *2 (E.D. Tex. July 25, 2017) (same); Diem LLC v. BigCommerce, Inc., No. 6:17-

CV-00186, 2017 WL 3187473, at *1 (E.D. Tex. July 26, 2017) (same); Realtime Data LLC, v. 

Carbonite, Inc. et al., No. 6:17-CV-121 RWS-JDL, 2017 WL 3588048, at *2 (E.D. Tex. Aug. 

21, 2017) (same); Mantissa Corp. v. Ondot Sys., Inc., No. 4:15-CV-1133, 2017 WL 3175645, at 

*3–4 (S.D. Tex. July 26, 2017) (same); Infogation, 2017 WL 2869717, at *4 (same); mcRO, Inc. 

v. Valve Corp, No. 8:13-cv-01874-GW, slip op. at 5 (C.D. Cal. July 24, 2017) (same); Fox 

Factory, Inc. v. SRAM, LLC, No. 3:16-cv-00506-WHO, slip op. at 6–7 (N.D. Cal. July 18, 2017) 

(same); Chamberlain Grp., Inc. v. Techtronic Indus. Co. et al., No. 16 C 6097, 2017 WL 

3205772, at *2 (N.D. Ill. June 28, 2017) (same); Skyhawke Techs., LLC v. DECA Int’l Corp., No. 

3:10CV708TSL-RHW, 2017 WL 3132066, at *2 (S.D. Miss. July 21, 2017) (same); President & 

Fellows of Harvard Coll. v. Micron Tech., Inc., No. CV 16-11249-WGY, 2017 WL 3749419, at 

*4 (D. Mass. Aug. 30, 2017); Amax, 2017 WL 2818986, at *2 (same).

There are, however, a growing minority of cases that disagree with Cobalt Boats and 

have held that TC Heartland establishes intervening law excusing waiver. For example, in 

Westech, a decision from the Western District of Washington, the court explained,

TC Heartland changed the venue landscape. For the first time in 27 

years, a defendant may argue credibly that venue is improper in a 

judicial district where it is subject to a court's personal jurisdiction 

but where it is not incorporated and has no regular and established 

place of business. Defendants could not have reasonably 

anticipated this sea change, and so did not waive the defense of 

improper venue by omitting it from their initial pleading and 

motions.

Westech Aerosol Corp. v. 3M Co., No. C17-5067-RBL, 2017 WL 2671297, at *2 (W.D. 

Wash. June 21, 2017). Similarly, in OptoLum, a court in the District of Arizona agreed that “TC 

Heartland affected a ‘sea change’ in the law of venue for patent cases.” OptoLum, Inc. v. Cree, 

Inc., No. CV-16-03828-PHX-DLR, 2017 WL 3130642, at *2 (D. Ariz. July 24, 2017) (citing 

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Westech, 2017 WL 2671297, at *2). In response to the argument that the defense of improper 

venue had always been available and that a litigant would have ultimately succeeded in 

convincing the Supreme Court to reaffirm Fourco, the court in OptoLum stated:

But this would have taken some convincing, and until TC 

Heartland, no defendant succeeded in doing so in the 27 years 

following VE Holding. To suggest that the defense of improper 

venue has always been available, and that TC Heartland did not 

effect a change in the law “because it merely affirms the viability 

of Fourco[,]” Cobalt Boats, 2017 WL 2556679, at *3, ignores the 

significant impact of VE Holding and the patent bar’s reliance on 

the case for nearly three decades.

OptoLum, 2017 WL 3130642, at *4. The OptoLum court found that the defendant should not 

suffer the “harsh reality” that it would have succeeded in challenging VE Holding by engaging in 

a “potentially lengthy and expensive litigation strategy, with the mere possibility that VE 

Holding might be overturned[.]” Id. The court found that such circumstances did not “render[] 

the defense of improper venue ‘available’ to [the defendant] when it filed its answer and initial 

motion to dismiss.” Id. The court concluded:

[T]he Court finds that it was not, “for all practical purposes,” 

possible for [the defendant] to assert the defense of improper venue 

in light of the binding nature of VE Holding and its presence on the 

venue landscape for the past few decades. The Court so finds even 

though certain patent defendants in other cases chose to raise the 

defense in light of the ongoing litigation in TC Heartland. As 

explained above, the Court either would have denied a motion to 

dismiss by [the defendant] as unfounded based on VE Holding or 

stayed its ruling pending a decision in TC Heartland. [The 

plaintiff] asserts no unfair prejudice from [the defendant] now 

raising the venue defense after TC Heartland was decided.

Id. at *5 (internal citation omitted). 

Other district courts have relied on Westech and OptoLum to reach the same conclusion. 

For example, a court in the Eastern District of Tennessee wrote:

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For 27 years, the Federal Circuit’s interpretation of venue in patent 

cases has been prevailing and applied by this and countless other 

courts. TC Heartland concluded that VE Holding’s application of 

§ 1391(c) to § 1400(b) was incorrect. The Supreme Court itself 

described the 1988 and later 2011 amendments to the general 

venue statute as changes to the venue “landscape” and “new 

developments.” Thus, this Court finds it difficult to describe TC 

Heartland as anything other than a significant change in the law on 

venue. To do otherwise would ignore the long-standing 

significance of the VE Holding decision and the reliance upon it 

for many years.

Maxchief Inv. Ltd. v. Plastic Dev. Grp., LLC, No. 3:16-cv-63, 2017 WL 3479504, at *4 (E.D. 

Tenn. Aug. 14, 2017). Similarly, a District of Minnesota court found that “to hold that Fourco

remained good law at all times over the last twenty-seven years, and thus that [the defendant] 

should have raised the improper venue defense at the time this case was filed, effectively ignores 

reality.” Valspar Corp. v. PPG Indus., Inc., No. 16-CV-1429 (SRN/SER), 2017 WL 3382063, at 

*4 (D. Minn. Aug. 4, 2017). The Valspar court found that it was “illogical and unfair to argue 

that [the defendant] erred by not making an argument that both this Court and the parties knew 

would have been rejected—just as it had consistently been rejected around the country for a 

quarter of a century.” Id. (citing OptoLum, 2017 WL 3130642, at *3); see also Ironburg 

Inventions Ltd. v. Valve Corp., No. 1:15-CV-4219-TWT, 2017 WL 3307657, at *3 (N.D. Ga. 

Aug. 3, 2017); (finding that TC Heartland is an intervening change in the law); CG Tech. Dev., 

LLC v. FanDuel, Inc., No. 2:16-cv-00801-RCJ-CVF, 2017 WL 3207233, at *2 (D. Nev. July 27, 

2017) (finding that the majority view that TC Heartland was not intervening law was “an unfair 

characterization of the effect of TC heartland on the state of the law”); Smart Wearable Tech. 

Inc. v. Fitbit, Inc., No. 3:16CV00077, slip op. at 8–9 (W.D. Va. Aug. 29, 2017) (same); Simpson 

Performance Prods., Inc. v. NecksGen, Inc., No. 5:16-CV-00153-RLV-DCK, 2017 WL 

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3616764, at *6–7 (W.D.N.C. Aug. 23, 2017) (same); Cutsforth, Inc. v. LEMM Liquidating Co., 

No. 12-cv-1200 (SRN/LIB), 2017 WL 3381816, at *4 (D. Minn. Aug. 4, 2017) (same).

The Court is persuaded by Westech, OptoLum, and Maxchief, and finds that TC 

Heartland constitutes an intervening change in law excusing waiver of Defendant’s venue 

objection. VE Holding and cases following it rendered a venue objection based on § 1400(b) as 

interpreted by Fourco unavailable to Defendant. “It would be inequitable to expect [the 

defendants] to have objected to venue, especially where the Supreme Court had already denied 

certiorari on the exact same question in VE Holding itself.” CG Tech., 2017 WL 3207233, at *1 

(citing Johnson Gas Appliance Co. v. VE Holding Corp., 499 U.S. 922 (1991) (denying 

certiorari)). Defendant could not have reasonably been expected to make an argument contrary to 

twenty-seven years of binding precedent, and to ultimately convince the Supreme Court where it 

had already denied certiorari on the same issue. Holzsager, 646 F.2d at 796 (“The clairvoyance 

demanded by plaintiff here of the [defendant] is inconsistent with the doctrine of waiver.”).

Indeed, the Court treated VE Holding as binding precedent when it denied Defendant’s first 

motion to dismiss or transfer venue on the ground that the Court had personal jurisdiction over 

Defendant. See Op. & Order 2, June 29, 2015.

Cobalt and other decisions like it found that the Federal Circuit in VE Holding lacked the 

authority to overrule Fourco and therefore TC Heartland does not qualify as intervening law 

because it merely reaffirmed Fourco. This Court disagrees with that characterization and is more 

persuaded by OptoLum’s description of VE Holding:

In short, VE Holding did not purport to “overrule” Fourco, but 

instead determined whether Congress intended to do so when it 

amended § 1391(c). As the Supreme Court explained in TC 

Heartland, the Federal Circuit concluded in VE Holding that 

“subsequent statutory amendments had effectively amended 

§ 1400(b) as construed in Fourco, with the result that § 1391(c) 

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now supplies the definition of ‘resides’ in § 1400(b).” 137 S. Ct. at 

1517. The Supreme Court made clear that “the only question [it] 

must answer is whether Congress changed the meaning of 

§ 1400(b) when it amended § 1391”—the same issue VE Holding

addressed 27 years earlier. Id. at 1520. The Supreme Court 

disagreed with VE Holding in this regard, but it did not do so on 

the ground that VE Holding had improperly “overruled” Fourco.

2017 WL 3130642, at *3. The OptoLum court also noted that Congress recognized that VE 

Holding was the law of the land, and “[i]n 2015, the House of Representatives stated that 

Congress ‘must correct’ the ‘infamous decision in VE Holding’ and ‘restore § 1400 to its role of 

protecting patent owners and accused infringers from the burden of being forced to litigate in 

remote locations.” Id. at *4 (citing H.R. Rep. No. 114-235, at 34 (2015)).

Moreover, this case is factually distinguishable from Reebok, the other case from this 

District which found that the venue waiver argument was available to the defendant. In Reebok, 

the court noted that there had been a “fair amount of briefing at the Supreme Court in TC 

Heartland before [the defendants] filed their answer to the First Amended Complaint.” 2017 WL 

3016034, at *4 n.1. Briefing and oral argument occurred between January and March of 2017. Id.

Here, by contrast, Defendant’s first motion to dismiss and answer were filed in February and 

July of 2015 respectively, well before certiorari was granted in TC Heartland in December of 

2016. 137 S. Ct. 614 (2016) (grating certiorari). The venue objection was “for all practical 

purposes impossible” for Defendant to interpose because “its legal basis did not exist at the time 

of the answer or pre-answer motion[.]” Gilmore v. Palestinian Interim Self-Gov’t Auth., 8 F. 

Supp. 3d 9, 13 (D.D.C. 2014), aff’d, 843 F.3d 958 (D.C. Cir. 2016).

In sum, VE Holding represented a “sea change” in patent venue law and established that 

the test for venue was whether the defendant was subject to personal jurisdiction in the district of 

suit. 917 F.2d at 1584. TC Heartland expressly overruled VE Holding and held that “a domestic 

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corporation ‘resides’ only in its State of incorporation for purposes of the patent venue statute.” 

137 S. Ct. at 1517. VE Holding and twenty-seven years of cases following it established strong 

precedent that the Supreme Court reversed in TC Heartland. It would have been unreasonable to 

expect Defendant to argue that venue was proper only in the state of its incorporation prior to TC 

Heartland for the reasons discussed above. Accordingly, the Court concludes that TC Heartland

is an intervening change in the law excusing Defendant’s waiver of its venue objection.

III. Remedy

As noted above, Plaintiff does not contest that under § 1400(b), venue is improper in the 

District of Oregon. When venue is improper, “[t]he district court . . . 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). The Court previously found in its ruling on Defendant’s first 

motion to dismiss or transfer that “this action could have been brought in Seirus’s proposed 

alternative forum, the Southern District of California, because Seirus has its principal place of 

business there and is subject to the court’s general personal jurisdiction.” Op & Order 10, June 

29, 2015. While Defendant no longer “resides” in the Southern District of California for patent 

venue purposes because it is not incorporated there, § 1400(b) provides that venue is also proper 

where the defendant “has committed acts of infringement and has a regular and established place 

of business.” 28 U.S.C. § 1400(b). Because Defendant has a regular and established place of 

business in the Southern District of California and because nearly all of the underlying facts 

related to Defendant’s alleged infringement occurred there, the Court finds that it remains an 

appropriate alternative venue. See Edwards Decl. ¶¶ 4–6, 16, ECF 28; Carey Decl. ¶¶ 2–6, ECF 

16-14.

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The Court recognizes that transfer at this late stage in the case is prejudicial to Plaintiff. 

This case is more developed than others which have transferred venue in light of TC Heartland. 

See Maxchief, 2017 WL 3479504, at *5 (finding that the case was “not so far along that transfer 

would frustrate judicial economy” because the court had “not issued any rulings on claim 

construction and the parties have not yet filed dispositive motions”); Valspar, 2017 WL 

3382063, at *5 (“While the court has not yet progressed to the point of dispositive motions or 

claim construction, it has advanced far enough that it would serve only to delay the progress of 

justice to require [the plaintiff] to start again at square one.”). As discussed above, the parties 

have already filed dispositive motions, engaged in claim construction, and have otherwise fully 

litigated this case up to the eve of trial. Under § 1406(a), the Court is required to either dismiss 

the case or to transfer venue. See Cutsforth, 2017 WL 3381816, at *5 (regretting the “waste of 

judicial resources after five years of litigation” but transferring the case nevertheless).While 

transfer may serve to further delay a final resolution to this case, dismissing it would cause an 

even greater delay and would be far more prejudicial to Plaintiff. “But the law of venue exists for 

the convenience of defendants, not plaintiffs, and under 28 U.S.C. § 1406(a), prejudice to the 

plaintiff is not a relevant consideration.” Id. at *5. Accordingly, the Court concludes that transfer 

to the Southern District of California is required.

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CONCLUSION

Defendant’s motion to dismiss or transfer venue to the Southern District of California 

[163] is GRANTED. This action is transferred to the United States District Court for the 

Southern District of California and the Clerk of the Court is hereby directed to effect the transfer.

Dated this day of ______________________, 2017. 

MARCO A. HERNÁNDEZ

United States District Judge

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