NIKE, INC., 

Plaintiff, 

v. 

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF OREGON 

3:16-cv-007-PK 

ORDER 

SKECHERS U.S.A., INC., 

Defendant. 

PAPAK,J. 

Plaintiff Nike, Inc. brings this patent infringement action against Defendant Skechers 

U.S.A., Inc., alleging that several models of Defendant's shoes infringe patents that belong to 

Plaintiff. Defendant now moves to transfer venue. Defendant relies on a recent Supreme Court 

decision holding that under 28 U.S.C. § 1400(b), venue over corporate defendants in patent 

actions is limited either to the defendant's state of incorporation or to any district where the 

defendant has a regular and established place of business and an act of infringement occurred. 

TC Heartland LLC v. Kraft Foods Group Brands, LLC, 

(2017). 

U.S. , 137 S. Ct. 1514 

The parties are now engaging in discovery on issues related to Defendant's Motion to 

1 ORDER 

Case 3:16-cv-00007-PK Document 120 Filed 06/30/17 Page 1 of 7
Transfer Venue. The parties have submitted a Joint Position Statement Regarding VenueRelated Discovery Issues, ECF No. 115, which I construe as Plaintiffs motion to compel 

discovery. As discussed below, I grant in part and deny in part Plaintiffs motion to compel. 

LEGALSTANDARDSFORPATENTVENUE 

Venue in patent infringement actions 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 defendant resides, or where the defendant has committed acts of infringement and has a 

regular and established place of business." Comis have not formulated a definitive test for 

determining when venue over a corporate defendant is satisfied under§ 1400(b). See, e.g., 

HomeBingo Network, Inc. v. Chayevsky, 428 F. Supp. 2d 1232, 1248-49 (S.D. Ala. 2006); 

J\!JAGICorp. v. Kinetic Presentations, Inc., 718 F. Supp. 334, 340 (D.N. J. 1989). The Federal 

Circuit has explained that "in determining whether a corporate defendant has a regular and 

established place of business in a district, the appropriate inquiry is whether the corporate 

defendant does its business in that district through a permanent and continuous presence there 

and not ... whether it has a fixed physical presence in the sense of a formal office or store." In 

re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985). 

DISCUSSION 

This court has discretion in ruling on discovery issues. Katz v. Batavia Marine & 

Sporting Supplies, Inc., 984 F.2d 422, 424 (Fed. Cir. 1993); Klingele v. Eikenberry, 849 F.2d 

409, 412 (9th Cir. 1988). Here, following the framework the parties used in their Joint Position 

Statement, I address plaintiffs discovery requests by subject, rather than addressing each 

interrogatory and motion for production. 

2 - ORDER 

Case 3:16-cv-00007-PK Document 120 Filed 06/30/17 Page 2 of 7
A. Defendant's Sales 

Plaintiff seeks discovery on Defendant's sales in Oregon, including the date of sale, units 

sold, revenue, and customer location. Plaintiff contends that this information will lead to 

relevant evidence on Defendant's "continuous presence" in Oregon. Plaintiff argues that 

discovery should not be limited to sales of the accused products, but rather should include all 

sales in Oregon as relevant to venue. 

Defendant states that it has already produced "detailed transactional sales data regarding 

all sales of [Defendant's J products into Oregon, .... allowing [Plaintiff] to isolate sales of 

accused products shipped to retailers in Oregon." Defendant objects, however, to discovery of 

infonnation on Plaintiff's direct-to-customer internet sales, contending that internet sales 

"invo Ive no [Defendant's] activity connected to Oregon other than the shipment of products into 

the state." 

I conclude that to the extent it has not already done so, Defendant must disclose its total 

product sales in Oregon, with one exception, direct sales through the internet to Oregon residents. 

I agree with Defendant that information on its direct internet sales is unlikely to lead to relevant 

evidence on whether Defendant has a "regular and established place of business" in Oregon. 

B. Retailers of Defendant's Goods 

Plaintiff seeks discovery on the identity of retailers to which Defendant sold its goods, 

and the terms of Defendant's relationship with the retailers. Plaintiff contends that the 

information it seeks is relevant to determining whether Defendant has a "permanent and 

continuous presence" in Oregon. Plaintiff contends that it wants Defendant to search for 

responsive documents since one year before the complaint was filed in January 2016. 

3 - ORDER 

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Defendant responds that the activities of third-party vendors (e.g., Nordstrom) of its 

products do not confer venue. Defendant also states that Plaintiff seeks not only the identities 

and terms of the retailers' relationships with Defendant, but also every "interaction" between 

Defendant and the retailers, including emails. 

I conclude that Defendant must disclose the activities of third-party vendors of 

Defendant's products, and Defendant's relationships with these vendors, because such 

information could lead to relevant evidence. This information would include, e.g., meetings 

between Defendant and its vendors, or similar information. I agree with Defendant, however, 

that it is not required to disclose email correspondence with these vendors. 

C. Defendant's Employees, Agents, Sales or Service Representatives and Their Activities 

Plaintiff seeks the identities of Defendant's employees, agents, sales or service 

representatives who have lived in or conducted business in Oregon, physical or electronic. 

Plaintiff also seeks infmmation on the nature of their relationship with Defendant, and the 

activities, physical or electronic, of Defendant and its employees, agents, and representative in 

Oregon. Plaintiff argues that venue may be based on a defendant's representatives, depending on 

the nature of the defendant's relationship with the representative (e.g., whether the 

representatives work exclusively for the defendant, the extent of the defendant's control over the 

representative, and whether the representative has authority to make agreements and receive 

payments on the defendant's behalf). 

I agree with Plaintiff that information on the activities of Defendant's agents, whether the 

agent is based in Oregon or not, could lead to relevant evidence and is proportional to the needs 

of the case. See Cordis, 769 F.2d at 737 ("the appropriate inquiry is whether the corporate 

4 - ORDER 

Case 3:16-cv-00007-PK Document 120 Filed 06/30/17 Page 4 of 7
defendant does its business in that district through a permanent and continuous presence there 

and not ... whether it has a fixed physical presence in the sense of a formal office or store"). 

Defendant is not required to disclose evidence regarding direct sales through the internet, 

however. 

D. Professional Services Retained by Defendant in Oregon 

Plaintiff seeks discovery on professional services retained by Defendant in Oregon, and 

the nature of those services. Plaintiff states that this request includes administrative, secretarial, 

and marketing services, but not Defendant's retained local counsel for this or other litigation. 

I agree with Plaintiff that information on professional services in Oregon retained by 

Defendant could lead to relevant evidence and is proportional to the needs of the case. 

Defendant is not required to disclose information regarding professional services that are related 

solely to this action or to other litigation. 

E. Property in Oregon Owned, Leased, or Managed by Defendant 

Plaintiff seeks discovery on property in Oregon owned, leased, or managed by Defendant, 

including real property, inventory, equipment, marketing materials, demonstration equipment, 

and product literature. Plaintiff states that while Defendant agreed to produce evidence on any 

"asset of significance" in Oregon, Plaintiff refused to include items such as marketing materials, 

demonstration equipment, or product literature. 

Defendant responds that marketing materials, demonstration equipment, or product 

literature to be "merely indicia of in-elevant sales solicitation activity." I conclude that Defendant 

must disclose any substantial amount of personal property it owns, leases, or manages in Oregon, 

including marketing materials, demonstration equipment, and product literature. 

5 - ORDER 

Case 3:16-cv-00007-PK Document 120 Filed 06/30/17 Page 5 of 7
F. Facilities, Offices, or Other Space in Oregon for which Defendant Pays Expenses 

On this request, Defendant has agreed to produce documents identifying real estate in 

Oregon that is owned, leased, rented, or otherwise paid for directly by Defendant, but Defendant 

refused to include leases of trade show booths or spaces, or conference spaces for 

demonstrations. I conclude that information on Defendant's leases of trade show booths or 

conference spaces could lead to relevant evidence and should be produced. 

G. Phone Numbers and Addresses Listing Defendant with Oregon Address or Phone 

Number 

Plaintiff seeks discovery on whether Defendant, or anyone acting on Defendant's behalf, 

listed Defendant "in reference to a phone number within Oregon or as an address within 

Oregon." Plaintiff states that Defendant has agreed to provide information on when Defendant 

"directed that an Oregon address or Oregon phone number be listed publicly as a means of 

contacting [Defendant]." 

Defendant argues that listings by third-parties are not relevant unless the listing was 

directed by Defendant. I agree that listings created by third pmiies independently of Defendant 

are not discoverable, but Defendant must disclose any other listings that it directed. 

H. Time Frame of Plaintiff's Deposition Topics 

Plaintiff states that it will limit questions in depositions to the year from January 4, 2015 

to the filing of the complaint, with the exception of Defendant's witness Brian Cross, whose 

declaration refers conditions from January 7, 2014 to the present. I conclude that depositions 

should be limited to January 4, 2015 to January 4, 2016, with the exception of Brian Cross, who 

may be questioned about the time frmne and material addressed in his declaration. 

6 - ORDER 

Case 3:16-cv-00007-PK Document 120 Filed 06/30/17 Page 6 of 7
I. Subjects of Plaintiff's Deposition Topics 

Plaintiff states that Defendant has objected to topics for deposition as broader than the 

venue-related requests for production and intenogatories. I conclude that deposition topics 

should be subject to the same limits placed on other discovery, including those limits set by this 

Order. 

IT IS SO ORDERED. 

DATED this 30th day of June \~ 

PAUL PAPAK 

U.S. MAGISTRATE JUDGE 

7 - ORDER 

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