Valspar Corporation, The v. PPG Industries, Inc.
0:16-cv-01429
D. MinnesotaAug 4, 2017Background
- Valspar sued PPG for patent infringement (BPA-free can coatings) in the District of Minnesota on May 23, 2016.
- PPG previously conceded venue in Minnesota and moved to transfer under 28 U.S.C. § 1404(a); the court denied that motion.
- After the Supreme Court decided TC Heartland (May 22, 2017), PPG moved to amend its answer to deny venue and moved to dismiss (or transfer) for improper venue under Rule 12(b)(3).
- PPG argued TC Heartland changed patent-venue law retroactively, so venue in Minnesota was improper. Valspar argued PPG waived the defense by earlier concession.
- The court held TC Heartland constituted an intervening change in the law excusing waiver, allowed PPG to amend, denied venue-related discovery, and transferred the case to the Western District of Pennsylvania under 28 U.S.C. § 1406(a).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether PPG waived improper-venue defense by earlier concession | Valspar: PPG waived by failing to raise venue defense earlier | PPG: Defense unavailable before TC Heartland; change in law excuses waiver | Court: TC Heartland was an intervening change; no waiver; amendment allowed |
| Whether TC Heartland should apply retroactively | Valspar: (implicitly) not enough to excuse waiver; could have sought certiorari earlier | PPG: TC Heartland governs and must be applied retroactively | Court: Applied TC Heartland retroactively (citing Harper) |
| Whether venue is proper in Minnesota under § 1400(b) post-TC Heartland | Valspar: Requested venue discovery to try to show acts of infringement/regular place of business | PPG: Not incorporated in MN; no acts of infringement or regular and established place of business in MN | Court: Valspar failed to show facts; venue improper in Minnesota |
| Whether dismissal or transfer is appropriate | Valspar: Did not argue dismissal; sought discovery instead | PPG: Prefer dismissal; alternatively transfer to W.D. Pa. where venue proper | Court: Transfer to Western District of Pennsylvania in interest of justice under § 1406(a) |
Key Cases Cited
- Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222 (Sup. Ct. 1957) (patent-venue “resides” means state of incorporation)
- VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990) (interpreting § 1391 to expand corporate residence for patent venue)
- TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (Sup. Ct. 2017) (returned patent-venue law to Fourco; residence = state of incorporation)
- In re TC Heartland LLC, 821 F.3d 1338 (Fed. Cir. 2016) (Federal Circuit reaffirming VE Holding before Supreme Court review)
- Foman v. Davis, 371 U.S. 178 (Sup. Ct. 1962) (standard favoring leave to amend under Rule 15)
- Harper v. Virginia Dep’t of Taxation, 509 U.S. 86 (Sup. Ct. 1993) (retroactive application of significant changes in law)