OPINION
Presently before the Court is Defendants Cook Group Incorporated (“CGI”) and Cook Medical LLC’s (“Cook Medical”) (collectively, “Defendants” or “Cook”) motion to dismiss for improper venue or, alternatively, to transfer venue in fight of the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, — U.S. -,
It is undisputed that after TC Heartland, which held that a corporate defendant “resides” only in its state of incorporation for purposes of determining where venue is proper in a patent case, see 28 U.S.C. § 1400(b), Defendants, who are not Delaware corporations, can no longer be
After reviewing thorough briefing and hearing oral argument, the Court finds that Defendants do not have a “regular and established place of business” in Delaware. Therefore, the Court concludes that venue is improper in Delaware for this action. Accordingly, the Court will grant Defendants’ motion and transfer this case to the United States District Court for the Southern District of Indiana, Indianapolis Division.
I. BACKGROUND
This is a patent infringement action brought by Plaintiffs Boston Scientific Corporation (“BSC”) and Boston Scientific SciMed, Inc. (“BSSI”) (collectively, “Plaintiffs” or “Boston Scientific”), alleging that Defendants infringe U.S. Patent Nos. 8,685,048; 8,709,027; 8,974,371; and 9,271,731, which generally describe and claim a hemostatic clip apparatus and methods for using such clip, for example, to stop gastrointestinal bleeding. (D.I. 19 at ¶¶ 1,10)
BSC is a Delaware corporation with its principal place of business in Marlborough, Massachusetts. (D.I. 19 at ¶ 2) It develops, manufactures, and supplies medical devices, including endoscopic products for the treatment of diseases of the digestive system, such as its Resolution™ Clip. (Id. at ¶¶ 2, 10) BSSI is a Minnesota corporation with its principal place of business in Maple Grove, Minnesota. (Id. at ¶3) A wholly-owned subsidiary of BSC, BSSI develops and manufactures endoscopic products, including hemostatic clips distributed by BSC. (Id.) BSSI is the owner by assignment of the patents-in-suit. (Id.)
CGI is an Indiana corporation with its principal place of business in Bloomington, Indiana. (Id. at ¶ 4) It is alleged to be a major competitor of Plaintiffs in the endoscopic hemostatic clip market. (Id. at ¶ 15) Cook Medical is an Indiana limited liability company that also has its principal place of business in Bloomington. (Id. at ¶ 5) It, too, is alleged to be a major competitor of Plaintiffs in the endoscopic hemostatic clip market, and it has sold the Instinct™ Endoscopic Hemoclip since at least 2013. (Id. at ¶ 15; D.I. 52 at 4)
Plaintiffs initiated this action on October 27, 2015, alleging that Defendants infringed three of the patents-in-suit. (D.I. 1) On March 9, 2016, Plaintiffs filed an amended and supplemental complaint for infringement as to all four patents. (D.I. 19) On July 15, 2016, Defendants filed an amended answer and counterclaims seeking declaratory judgment of non-infringement and invalidity of each of the asserted patents. (D.I. 52 at 15-17) Then, on December 19, 2016, Defendants filed a motion to stay pending inter partes reviews (“IPR”). (D.I. 74) That motion was initially denied without prejudice to renew at a time after the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) decided whether to institute review on the IPR petitions at issue. After the PTAB’s institution of IPR proceedings on many of the asserted claims, Defendants renewed their motion to stay on May 22,2017. (D.I. 254) On August 16, 2017, the Court granted the motion to stay but excluded from the stay, inter alia, any efforts necessary for resolution of the instant motion. (D.I. 304 at 22)
In the meantime, on April 28, 2017, Defendants filed a motion for leave to file an amended pleading, seeking to add a defense and counterclaim of inequitable con
■ Defendants .filed their improper venue motion on June 22, 2017, seeking dismissal or, in' the alternative, transfer of this action to the Southern District of Indiana, pursuant to Federal Rule of Civil Procedure 12(b)(3) and 28 U.S.C. § 1406. (D.I. 282) They contend that venue is not proper under either prong of § 1400(b). (Id.) Briefing on the motion was initially complete as of July 27, 2017 (see D.I. 283, 296, 298), .although supplemental submissions have been filed (D.I. 307, 310, 312). The Court heard oral argument on August 24, 2017. (See Transcript (“Tr.”))
II. LEGAL STANDARDS
Generally, “venue provisions .are designed, not to keep suits out of the federal, courts, but merely to allpeate. suits to the most appropriate or convenient federal forum.” Brunette Mach. Works, Ltd. v. Kockum Indus., Inc., 406 U.S, 706, 710,
If the Court grants a Rule 12(b)(3) motion based on improper venue, the 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).
Generally, “it is not necessary for the plaintiff to include allegations in his complaint showing that venue is proper.” Great W. Mining & Mineral Co. v. ADR Options, Inc.,
Courts are not uniform in their views as to which party bears the burden of proof with respect to venue. Some hold that a plaintiff must prove that venue is proper in its chosen district, while others hold instead that a defendant must prove that such district is an improper venue. See 14D Wright & Miller,. Federal Practice & Procedure § 3826 (4th ed. 2017). (“There are many cases—predominantly, but not exclusively, from the Third and Fifth Circuits—holding that the burden is on the objecting defendant to establish that venue is improper, because venue rules are for the convenience and benefit of the defendant.”). At present, it appears the majority view is that “when the defendant has made a proper objection, the burden is on the plaintiff to establish that the chosen district is a proper venue,” Id. Notably,, however, the Court of Appeals for the- Third Circuit—the Circuit in which this District is located—has expressly held that the moving party has the burden of proving that venue is improper. See Myers v. Am. Dental Ass’n,
While the parties here are in agreement as to what the Third Circuit has held with respect to the burden on venue motions, they disagree as to whether Third Circuit law governs the pending motion. Plaintiffs contend that Third Circuit law applies, while Defendants insist that, rather, the Court must apply the law of the Court of Appeals for the Federal Circuit. Notably, however, Defendants concede that there is no Federal Circuit precedent as to either (i) whether Federal Circuit law controls a motion to dismiss for improper venue, or (ii) which party bears the burden of proof on such a motion.
Defendants do- cite to Hoover Group, Inc. v. Custom Metalcraft, Inc.,
Procedural matters generally are not considered to be unique to patent law. See Versata Software, Inc. v. Callidus Software, Inc.,
In the Court’s view, the issue of which party bears the burden of proof on a venue challenge is a procedural, non-patent issue controlled by the law of the regional circuit. Such a challenge must comply with, and is brought pursuant to, the Federal Rules of Civil Procedure. By operation of the Federal Rules of Civil Procedure, the venue challenge must be brought in a responsive pleading or as a separate motion under Rule 12(b)(3)—and the burden-of-proof allocation is properly viewed as simply another procedural aspect of a venue dispute. A motion for improper venue under Rule 12(b)(3) is akin to other motions authorized by the Federal Rules of Civil Procedure, such as Rule 12(b)(6) motions to dismiss for failure to state a claim and motions for judgment as a matter of law. The procedural aspects of these types of motions are controlled by regional-circuit law. See K-Tech Telecomms., Inc. v. Time Warner Cable, Inc.,
That venue motions are procedural—and therefore governed by the law of the regional circuit—is true even though the substantive questions at issue may be controlled exclusively by Federal Circuit law. See, e.g., In re TLI Commc’ns LLC Patent Litig.,
Accordingly, the Court will apply Third Circuit law to the procedural aspects of Defendants’ improper venue motion, which places the burden on Defendants to prove improper venue. See, e.g., Koninklijke Philips N.V. v. ASUSTeK Comput. Inc.,
III. DISCUSSION
The patent venue statute, 28 U.S.C. § 1400(b), provides:
Any civil action for patent infringement may be brought in the judicial district [1] where the defendant resides, or [2] [(a)] where the defendant has committed acts of infringement and [ (b) ] has a regular and established place of business.
It is undisputed that under the Supreme Court’s decision in TC Heartland, venue in this case is not proper in Delaware under the “resides” portion of the statute, as Defendants are incorporated in Indiana. Defendants, therefore, each “reside” in Indiana, not Delaware.
The parties’ disputes are, instead, threefold. First, they disagree as to whether Defendants have waived their opportunity to challenge whether Delaware is a proper venue. Second, assuming Defendants are permitted to press the improper venue issue, the parties disagree over whether Defendants have a “regular and established place of business” in Delaware, which is part of § 1400(b)’s second basis on which venue may be proper. Finally, the parties also dispute whether, should the Court be uncertain as to whether Defendants have a “regular and established place of business” here, the Court should or, should not order “venue-related discovery.” The Court will address each of these issues in turn.
A. Waiver
1. Analysis
Plaintiffs’ main argument in opposition to the instant motion is that Defendants
As noted above, in a patent infringement action,, venue is proper “in the judicial district vdiere ythe defendant resides, qr where the defendant has committed acts of infringement and has a regular, and established place of business.” 28 U.S.C. § 1400(b). In 1957, the Supreme Court held that § 1400(b) was “not to be supplemented by the provisions of 28 U.S.C. § 1391(c),” the general venue statute. Fourco Glass Co. v. Transmirra Prods. Corp.,
Then, in 1988, Congress amended § 1391(c). In doing so, it added the, language “[f]or purposes of venue under this chapter” before the rest of § 1391 (c)’s text. Thus, after the 1988 amendments, § 1391(c) read, in pertinent part:
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, § 1013(a), 102 Stat. 4669.
Subsequent to the 1988 amendments, the Federal Circuit was called upon to decide whether § 1400(b) remained the exclusive basis for determining, a proper venue for a patent case involving a corporate defendant. In 1990, the Federal Circuit answered this, question in VE Holding Corp. v. Johnson Gas Appliance Co.,
Thereafter, in 2011, Congress once again amended § 1391. See Federal Courts Jurisdiction and Venue Clarification Act of 2011, § 202, 125 Stat; 763. After the 2011 amendment, § 1391(a) provides that “[e]x-cept as otherwise provided by law ... this section shall govern the venue of all civil actions brought in district courts of the United States.” Section 1391(c)(2), in turn, now provides:
For all venue purposes—an entity with the capacity to sue and be sued in its common name under applicable law, whether or not incorporated, 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 and, if a plaintiff, only in the judicial, district in which it maintains its principal place of business.
For 27 years—between 1990 and 2017— VE Holding governed venue in patent litigation. Then, on. May 22, 2017, the Supreme 'Court issued its opinion in TC
With this background in mind, the Court turns to the waiver issue.
Generally, a court presiding over a case in which venue is improper “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). However, a party may waive its right to challenge venue if it “does not interpose timely and sufficient objection to the venue,” Id. § 1406(b). Under Federal Rule of Civil Procedure 12(h), a party waives a venue defense by “failing to either: (i) make it by motion under this rule; or (ii) include it in a responsive pleading.” Fed. R. Civ. P. 12(h)(1)(B); see also Albright,
“An exception to normal law of the case and waiver rules is recognized when an intervening decision from a superior court changes the controlling law.” Beazer E., Inc. v. Mead Corp.,
Here, there is no question that Defendants failed to raise the venue defense in a Rule 12 motion or responsive pleading. This triggers application of the waiver doctrine. The question before the Court is whether the Supreme Court’s decision in TC Heartland qualifies as an intervening change in the controlling law, so as to create an exception to the rule of waiver.
A number of district courts have addressed this very question in the wake of TC Heartland, and the majority have held that TC Heartland is not an intervening change of the law but is, instead, merely a reaffirmation of Fourco. See, e.g., Takeda Pharma. USA, Inc. v. Mylan Pharma. Inc.,
On the other hand, a number of courts have reached the opposite conclusion, finding that TC Heartland does represent an intervening change in the law sufficient to qualify as an exception to the waiver doctrine. See, e.g., Simpson Performance Prods., Inc. v. NecksGen, Inc.,
On three occasions since TC Heartland was handed down, the Federal Circuit has declined to grant mandamus relief from district court judgments denying motions that sought to transfer venue based on the law as expressed in TC Heartland. See In re Nintendo of Am. Inc.,
Against this backdrop, the Court concludes that TC Heartland did effect an intervening change in the law, creating an exception to the general rule of waiver. The Court reaches this conclusion for two principal reasons.
First, while the result in TC Heartland was effectively to reaffirm the standard previously announced in Fourco, TC. Heartland actually addressed a different question than that faced by the Fourco Court in 1957. Specifically, the “only question” the TC HeaHland Court answered was “whether Congress changed § 1400(b)’s meaning when it amended § 1391,” amendments that were adopted in 1988 and 2011, well after Fourco.
Thus, in holding that the amendments to § 1391 did not change § 1400(b)’s meaning, the Supreme Court overruled VE Holding, “but it did not do so on the ground that VE Holding had improperly ‘overruled’ Fourco.” OptoLum,
Second, as a practical matter, VE Holding—whether it was, at some level, a “right” or “wrong” decision—did control patent venue law for the 27 years leading up to TC HeaHland. See, e.g., Maxchief,
That TC Heartland represents an intervening change in the law, and therefore constitutes an exception to waiver, does not mean per s&- that nothing else a defendant has done, and nothing else about the status of a case, could nonetheless present, a bar to that defendant prevailing on an improper venue motion. It may well be that in any particular case the Court, after excusing waiver based on TC Heartland, should next proceed by assessing whether, in any event, a defendant should not be permitted to press its effort to change venue. Prototypical examples of where the Court might reach such a conclusion include where a defendant raises venue for the first time on the eve of trial, or many months (or years) after TC Heartland was handed down, or where dismissal or transfer would unduly prejudice a plaintiff. See generally Ironburg Inventions Ltd. v. Valve Corp.,
2. Application
Here, the circumstances' demonstrate that Defendants should be permitted to press their venue challenge. Trial in this case is scheduled for March 12, 2018, more than six months from now (D.I. 17), and will likely be delayed in light of the stay the Court has imposed due to IPR proceedings that are not expected to be resolved until May 2018 (see D.I. 304 at 16). Defendants did not intentionally delay filing the instant motion; instead, it was filed (along with an opening brief) just one month after the Supreme Court decided TC Heartland.
Thus, the Court will turn to the merits of Defendants’ venue challenge.
B. Regular and Established Place of Business
1. Analysis
Having determined that venue is improper under the first prong of § 1400(b),
Because of the development of the case law surrounding the residency test of § 1400(b) under VE Holding, which held that venue was proper anywhere a defendant was subject to personal jurisdiction, few courts—until very recently—have had occasion to rely on the second prong of § 1400(b) and to address how to determine whether a defendant has a regular and established place of business. See, e.g., Hemstreet v. Caere Corp.,
The words of the statute, which must be the Court’s starting point, provide clear guidance as to what is required: a (i) place of business that is (ii) regular and (iii) established. As the Supreme Court has held, “[t]he language of this special statute is clear and specific.” Schnell v. Peter Eckrich & Sons, Inc.,
Cordis employed in Minnesota two full-time sales representatives, who worked from home offices where they maintained a stock of Cordis inventory. See id: at 735. Hospitals wanting to purchase Cordis pacemakers could contact these Minnesota sales representatives to obtain Cordis products. See id. The salespeople also acted as technical consultants and were present in the operating room during a significant number of implantation surgeries in Minnesota. See id. Cordis hired a secretarial service in Minnesota to answer a local phone number as “Cordis Corporation” and to receive mail in the business’ name. See id. Cordis, however, was not registered to do business in Minnesota, did not have a bank account there, and did not own or lease any office, house, or other property in the state. See id.
In its mandamus petition, Cordis invoked its lack of a fixed physical location as dispositive of the question whether it had a regular and established place of business in Minnesota. See id. at 736. The Federal Circuit explicitly rejected this contention, holding that “in determining whether a corporate defendant has a regular and estáblished 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.” Id. at 737 (emphasis added).
In reaching its decision that a “fixed physical presence in the sense of a formal office or store” is not required to satisfy § 1400(b), the Federal Circuit contrasted Cordis’ circumstances with those involved in two appellate cases that predated the creation of the Federal Circuit. In Phillips v. Baker,
In.comparing these facts to Cordis’ business operations, the Federal Circuit noted that “[u]nlike Cordis’ representatives who continually maintain a stock, of its products within the district, the sales representative in Channel-Master kept no stock or samples of the products.” Cordis,
But in holding that no fixed physical presence in the sense of a formal office or store is required, Cordis should not be understood as eliminating the statutory requirement that a defendant have some regular and established “place of business” in the venue. On its face, the statutory language requires that the defendant at least have a “place” in which it does business in the district—e.g., a place authorized by the defendant where some part of the defendant’s business is done. This' requirement of a place was recognized by Judge Wright of this District even before Cordis. In Clopay Corp. v. Newell Cos.,
Consistent with what Judge Wright had already determined before Cordis, the Court understands Cordis to mean that while no fixed space in the sense of a formal office or store is necessary, some physical presence is nevertheless required. Cordis’ analysis focused on the defendant’s physical presence in the district, considering not just whether Cordis had a brick-and-mortar location in Minnesota but also whether Cordis had employees, products, and product literature there. See Cordis,
First, simply doing business in a district or being registered to do business in a'district is insufficient, without more, to make that district a regular and established place of business for any particular entity. See, e.g., Gaddis v. Calgon Corp.,
Second, simply demonstrating that a business entity has sufficient “minimum contacts” with a district for purposes of personal jurisdiction does not necessarily mean that the entity has a regular and established place of business in the district. See LoganTree,
Further, maintaining a website that allows consumers to purchase a defendant’s goods or products within- the district does not, by itself, demonstrate that the defendant has a regular and established place of business in the district. See, e.g., Nike, Inc. v. Skechers U.S.A., Inc.,
Finally, a regular and established place of business does not arise solely from a defendant simply shipping goods into a district—whether to an individual or for distribution by third parties. See Simpson,
This last conclusion is further supported by longstanding precedent that “maintaining an exclusive distributorship” or “establishing and maintaining some control over a chain of exclusive, independent distributors” within a. forum does not create a regular and established place of business. See Dual Mfg. & Eng’g, Inc. v. Burris Indus., Inc.,
Pulling all of this together, the Court will proceed to analyze whether a defendant has a regular and established place of business in Delaware in the following manner. Based on both the statutory language of § 1400(b) and Cordis,
2. Application
Based on the record, the Court determines that Defendants have met their burden to demonstrate that venue is improper in this District. CGI appears to have no presence in Delaware whatsoever, let alone a permanent and continuous one. Defendants’ sworn declarations indicate that CGI has no physical facilities or corporate offices in Delaware. (D.I. 284 Ex. 1 at ¶4) Moreover, CGI has no employees based in Delaware, (Id.)
Cook Medical has a few contacts with Delaware, none of which, even when considered in the aggregate, amounts to a regular and established place of business. Cook Medical’s contacts with Delaware consist of: (1) sales of medical devices throughout the United States, including in the District of Delaware (D.I. 284 Ex. 1 at ¶2); (2) sales representatives who “occasionally call on physicians and hospitals (or their respective buyers) in Delaware” but do not live in Delaware (id. at ¶ 5); and (3) one sales representative who lived in Delaware between January 2015 and September 2016, but had no responsibility for sales in Delaware and is no longer employed by Cook Medical (D.I. 284 Ex. 2 at ¶ 3).
Cook Medical, like CGI, has no physical facilities or corporate offices in Delaware, and—since September 2016—has had no employees based in Delaware. (D.I. 284 Ex. 1 at ¶4) At most, Cook Medical is “doing business” in Delaware, but—as discussed above—this is not equivalent to having a regular and established place of business here. See Knapp-Monarch,
In the Court’s view, all of this leads to the conclusion that Defendants have met their burden to show that they do not have
C. Venue-Related Discovery
Plaintiffs do not strenuously contend that the record developed at this point demonstrates that either Cook Medical or CGI has a regular and established place of business in Delaware. This does not mean, however, that Plaintiffs concede the Court should therefore grant Defendants’ motion. Rather, Plaintiffs urge the Court to allow them to take venue-related discovery, “on at least the declarations submitted by Cook.” (D.I. 296 at 15) They further contend they “should be allowed to discover the relationship structure between the two defendants—that is, whether they are parent/subsidiary, business affiliates, etc.” (Id. at 15-16) Plaintiffs suggest that “[depending on the nature of the' relationship, the infringement acts of Cook Medical [ ] could be attributed to [CGI] ” (Id. at 16)'
“[W]here issues arise as to jurisdiction or venue, discovery is available to ascertain the facts bearing on such issues.” Oppenheimer Fund, Inc. v. Sanders,
Applying this law to the facts in the record here, the Court will deny Plaintiffs’ request for discovery. Plaintiffs do not identify any reason to doubt the veracity of Defendants’ declarations, which clearly establish that neither Cook Medical nor. CGI has a .regular and established place of business in Delaware. Accordingly, the proposed discovery appears to be no more than a fishing expedition.
The Court further finds that allowing venue-related discovery in this case would waste both the parties’ and the Court’s resources. See OptoLum,
In sum, the Court concludes that Defendants have met their burden to show that venue is improper in this District.
When a case is filed in an improper venue, a court has the discretion to “dismiss, or if it be in the interest of justice, transfer [the] case to any district or division in which it could have been brought.” 28 U.S.C. § 1406(a), Here, it is uncontested that the United States District Court for the Southern District of Indiana would be a proper venue for this case. (See, e.g., D.I. 283 at 11) The Court finds that a transfer would serve the interests of justice because it would allow for a timely disposition of this case on the merits. See In re First Solar, Inc.,
IV. CONCLUSION
For the reasons stated above, the Court will grant Defendants’ motion to transfer (D.I. 282) and will transfer this case to the United States District Court for the Southern District of Indiana, Indianapolis Division. The Court will deny Plaintiffs’ request for venue-related discovery. (D.I. 296 at 14-16) An appropriate Order follows.
ORDER
At Wilmington, this 11th day of September, 2017:
For the reasons set forth in the Memorandum Opinion issued this date,
IT IS HEREBY ORDERED that:
1. Defendants’ motion to transfer for improper venue (D.I. 282) is GRANTED.
2. Plaintiffs’ request for venue-related discovery (D.I. 296 at 14-16) is DENIED.
3. Defendants’ motion for leave to filed an amended pleading (D.I. 274) is DE-. NIED as moot.
4,The Clerk of the Court is directed.to TRANSFER this action to the Southern District of Indiana, Indianapolis Division.
Notes
. On June 28, 2017, the Court granted-in-part Defendants’ motion for leave to file an amended pleading, allowing for the inclusion of the inequitable conduct defense and counterclaim, The motion to amend remains pending as to the improper venue defense, In light of the Court's decisión on Defendants’ motion to dismiss or transfer, the remaining portion of their motion to amend will be denied as moot,
. At die motions hearing, both Chief, Judge Stark and Magistrate Judge Burke presided, ’The hearing concerned not just the motion pending in the instant case, but also similar post-TC Heartland venue motions pending in other cases. (See D.I. 300) These motions had previously been referred to Judge Burke. (See, e.g„ D.I. 6) Although the referral has now been withdrawn, Judge Stark has been tremendously assisted by Judge Burke in considering die pending motion.
.As already noted, Defendants' improper venue motion seeks dismissal or, in the alternative, transfer. Both’ forms of relief, are authorized by § 1406(a). Throughout this Opinion, the Court refers to Defendants’ motion as a "motion to dismiss,” but this is merely a shorthand.
. Hoover's citations to non-patent, district court opinions in the Eighth Circuit suggests that the Federal Circuit was applying regional-circuit law. See
. This is not inconsistent with the Federal Circuit’s application of its own law to issues
. Because the motions hearing was consolidated with numerous other cases, the Court's citation to the transcript of the hearing should not be taken to mean that counsel for the particular Plaintiff or Defendant in the captioned case here expressly made this statement. Where the Court has cited to "Plaintiff” or "Defendant” having said something at the hearing, it is with respect to a point on which the particular party in the captioned case here has advocated the same position or has otherwise endorsed the position being noted,
. As a procedural, non-patent-unique issue, the Court is governed by Third Circuit law on the question of determining whether a Supreme Court decision is an intervening change in the law excusing waiver.-The Court cites other Courts of Appeals decisions as persuasive additional authority.
. In Sea Ray Boats, Judge Newman would have granted some relief on the basis that "[tjhere is little doubt that the [Supreme] Court’s decision in TC Heartland ... was a change in the law of venue.”
. In all three of these decisions, in holding that the exceptional remedy of mandamus was unavailable, the Federal Circuit relied in part on the fact that the cases were very close to trial.
. In addition to the countless district court decisions applying VE Holding, "the Federal Circuit affirm[ed] VE Holding multiple times, including after Congress again amended
. Nor does the Court require that Plaintiffs have foreseen this change in the law, as they clearly did not. Plaintiff’s complaint cites solely to § 1391 as the statutory basis for venue being proper here, and not to § 1400(b). (See D.L 19 at ¶ 9; see also Simpson,
. In addition, Defendants sought leave to amend their answer on June 9, less than three weeks after TC Heartland was decided, (See D.I. 279)
. The second prong of § 1400(b) also requires that a defendant have committed "acts of infringement’’ in the District. Here, it is undisputed that Cook Medical has sold and offered for sale its allegedly infringing products in Delaware. (See, e.g., D.I. 283 at 6) CGI, however, “does not make, use, sell, offer to sell, or import medical devices, including the Accused Product.” (D.I. 284 Ex. 1 at ¶ 3) Thus, with respect to CGI only, this apparent lack of in-District infringement, in Defendants' view, "provides a separate and independent reason for holding venue improper,” (D.I. 283 at 5) As the Court has concluded that both Defendants have met their burden to show that venue is improper in Delaware because both Defendants lack a "regular and established place of business” here, it is unnecessary in this case to consider the “acts of infringement” requirement any further.
. As the Court will note, Cordis is a decision issued on a mandamus petition, on which the Court of Appeals applies a more deferential standard of review than on a direct appeal. See, e.g., Cordis,
. The parties have cited two Supreme Court decisions relating to § 1400(b), but both are so factually distinct from the facts involved here that these opinions, unfortunately, provide the Court little assistance in resolving the instant dispute. See Schnell,
. Additionally, unlike in Cordis, there is no evidence that either Defendants’ representatives are regularly (or even occasionally) present when Defendants’ medical products are being used to perform medical procedures in the District, nor is there evidence of any inventory of Defendants’ products being maintained in this District.
, Plaintiffs’ request for discovery as it relates to a potential agency theory—whereby Cook Medical's Delaware contacts could be attributed to CGI—is unavailing, as the Court has found that Cook Medical lacks a regular and established place of business in Delaware. At most, tiren, attributing Cook Medical’s actions to CGI could lead the Court to conclude that the ’’acts of infringement” requirement of the second prong of § 1400(b) is satisfied with respect to CGI, but that would still leave the "regular and established place of business” requirement unfulfilled.