Case: 17-135 Document: 15 Page: 1 Filed: 11/15/2017
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` NOTE: This order is nonprecedential.
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`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`In re: CUTSFORTH, INC.,
`Petitioner
`______________________
`
`2017-135
`______________________
`
`On Petition for Writ of Mandamus to the United
`States District Court for the District of Minnesota in No.
`0:12-cv-01200, Judge Susan Richard Nelson.
`______________________
`
`ON PETITION
`______________________
`
`Before TARANTO, CHEN, and HUGHES, Circuit Judges.
`TARANTO, Circuit Judge.
`O R D E R
`Cutsforth, Inc., petitions for a writ of mandamus
`
`directing the United States District Court for the District
`of Minnesota to vacate its order transferring this case to
`the United States District Court for the Western District
`of Pennsylvania. Defendants MotivePower, Inc., LEMM
`Liquidating Company, LLC, and Westinghouse Air Brake
`Technologies Corporation oppose.
`
`This petition stems from a suit filed by Cutsforth in
`May 2012 in the District of Minnesota accusing defend-
`ants of patent infringement. Defendants did not initially
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` IN RE: CUTSFORTH, INC.
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`dispute the propriety of venue; to the contrary, their
`several answers to Cutsforth’s complaint admitted the
`complaint’s allegation of venue. Proceedings were stayed
`pending inter partes review of the asserted patents until
`the district court lifted the stay in September 2016.
`After the Supreme Court issued its decision in TC
`Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.
`Ct. 1514 (2017), defendants moved for leave to amend
`their answers to assert a defense of improper venue and
`to transfer the case under 28 U.S.C. § 1406(a). They
`argued that the requirements of 28 U.S.C. § 1400(b) were
`not satisfied as now understood in light of TC Heartland.
`And they argued that TC Heartland was an intervening
`change of law such that their failure to make a venue
`objection earlier was not a waiver of the objection under
`Federal Rule of Civil Procedure 12(g)(2) and (h)(1)(A).
`The district court agreed with defendants that, before
`TC Heartland, they did not have available to them the
`argument that, because they are not incorporated in
`Minnesota, they did not “reside[]” there under § 1400(b).
`Mem. Op. & Order, Cutsforth, Inc. v. LEMM Liquidating
`Co., LLC, et al., No. 12-cv-1200 (D. Minn. Aug. 4, 2017),
`Dkt. No. 419, at 6–9. For that reason, the court held that
`they did not waive their venue objection under Federal
`Rule of Civil Procedure 12(g)(2) and (h)(1)(A). Id. at 5, 9–
`10.
`The court went on to note “the waste of judicial re-
`sources after five years of litigation, and the burden that
`must now be imposed on a district unfamiliar with this
`case,” and to state “that [a] transfer will lead to additional
`cost and delay and unquestionably prejudices Cutsforth.”
`Id. at 12–13. Even so, the court concluded, “the law of
`venue exists for the convenience of defendants, not plain-
`tiffs, and under 28 U.S.C. § 1406(a), prejudice to the
`plaintiff is not a relevant consideration.” Id. at 12. The
`court therefore granted the motion and transferred the
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`IN RE: CUTSFORTH, INC.
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`case to the Western District of Pennsylvania. See
`Cutsforth, Inc. v. LEMM Liquidating Co., LLC, et al., No.
`17-cv-1025-CB (W.D. Pa.).
`Cutsforth then filed this petition for a writ of manda-
`mus. Cutsforth argues that the transfer order should be
`vacated because the district court erred in its analysis of
`whether the venue defense was waived in this case.
`A party seeking a writ bears the burden of demon-
`strating that it has no “adequate alternative” means to
`obtain the desired relief, Mallard v. U.S. Dist. Court for
`the S. Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the
`right to issuance of the writ is “clear and indisputable,”
`Will v. Calvert Fire Ins., 437 U.S. 655, 666 (1978) (citation
`and internal quotation marks omitted). The court must
`also be satisfied that the issuance of the writ is appropri-
`ate under the circumstances. Cheney v. U.S. Dist. Court
`for the Dist. of Columbia, 542 U.S. 367, 381 (2004).
`We recently held that the Supreme Court’s decision in
`TC Heartland effected a relevant change of law and, more
`particularly, that failure to present the venue objection
`earlier did not come within the waiver rule of Federal
`Rule of Civil Procedure 12(g)(2) and (h)(1)(A). In re Mi-
`cron, No. 17-138 (Fed. Cir. Nov. 15, 2017). We further
`explained, however, that Rule 12(h)(1) is not the only non-
`merits basis on which a defendant might lose a venue
`defense. Id. at 13. In light of In re Micron, the district
`court in the present case here clearly erred in not consid-
`ering non-Rule 12 bases for waiver raised by Cutsforth.
`Mandamus relief is therefore appropriate to direct the
`court to reconsider its decision in light of In re Micron.
`
`Accordingly,
`
`IT IS ORDERED THAT:
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`The petition is granted. The district court’s order
`granting defendants’ motion to transfer for improper
`venue is vacated, and the court is instructed to recall any
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`case files from the U.S. District Court for the Western
`District of Pennsylvania. The case is remanded for fur-
`ther proceedings consistent with this opinion.
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` FOR THE COURT
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` /s/ Peter R. Marksteiner
`Peter R. Marksteiner
`Clerk of Court
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`s32
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