Boston Scientific Corp. v. Cook Group Inc.
269 F. Supp. 3d 229
D. Del.2017Background
- Plaintiffs Boston Scientific Corporation and Boston Scientific SciMed, Inc. sued Cook Group Inc. and Cook Medical LLC for patent infringement (four patents) in D. Del.; Boston Scientific is Delaware-incorporated.
- Defendants are Indiana entities; after the Supreme Court decided TC Heartland (2017), defendants no longer “reside” in Delaware under 28 U.S.C. § 1400(b).
- Defendants moved to dismiss for improper venue or, alternatively, to transfer to the S.D. Ind., arguing § 1400(b)’s second prong (acts of infringement + a regular and established place of business) is not met in Delaware.
- Plaintiffs argued defendants waived venue objections by litigating the case for nearly two years without raising venue; they sought venue-related discovery to challenge defendants’ sworn declarations.
- The Court held (1) TC Heartland constituted an intervening change excusing waiver here, (2) on the merits defendants lack a “regular and established place of business” in Delaware, (3) venue-related discovery was denied as speculative, and (4) the case was transferred to the Southern District of Indiana.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Waiver of venue defense | Defendants waived venue by not timely raising it and by actively litigating for ~2 years | TC Heartland was an intervening change; defendants promptly sought relief after it issued | Court: TC Heartland was an intervening change excusing waiver; defendants’ motion timely and allowed |
| “Regular and established place of business” under § 1400(b) | Plaintiffs requested discovery; argued record insufficient to resolve venue | Defendants: no offices, little/no continuous presence, only occasional sales calls and sales into Delaware | Court: defendants lack a permanent and continuous physical presence in Delaware; no § 1400(b) venue here |
| Venue-related discovery | Discovery needed to challenge defendants’ declarations and explore affiliate/agency relationships | Defendants: declarations establish lack of qualifying presence; discovery is fishing expedition | Court: denied discovery — plaintiffs failed to show non-frivolous basis with reasonable particularity |
| Remedy — transfer vs dismissal | Plaintiffs preferred maintaining D. Del.; opposed transfer | Defendants requested dismissal or transfer to S.D. Ind., which is proper venue | Court: in interest of justice, transferred case to S.D. Ind., Indianapolis Division |
Key Cases Cited
- TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (U.S. 2017) (holding that for patent venue statute a corporation “resides” only in its state of incorporation)
- Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (1957) (patent venue controlled by § 1400(b); “resides” means state of incorporation)
- In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985) (defining “regular and established place of business” as a permanent and continuous presence; fixed office not strictly required)
- VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) (pre-TC Heartland decision treating § 1391(c) as governing “resides” in § 1400(b))
- Myers v. American Dental Ass'n, 695 F.2d 716 (3d Cir. 1982) (on a Rule 12 motion to dismiss for improper venue, the movant bears the burden of proving venue is improper)
- Oppenheimer Fund, Inc. v. Sanders, 437 U.S. 340 (1978) (jurisdictional/venue discovery is available to ascertain facts bearing on venue/jurisdiction)
- Schnell v. Peter Eckrich & Sons, 365 U.S. 260 (1961) (statutory language of § 1400(b) is specific; courts should not enlarge Congress’s venue mandate)