CR Bard v. AngioDynamics

Filing 199

MEMORANDUM DECISION AND ORDER granting #163 Defendant's Renewed Motion to Transfer to the United States District Court for the District of Delaware. The Clerk of Court is directed to transfer the case to the United States District Court for the District of Delaware. Signed by Judge Robert J. Shelby on 11/16/20. (dla) [Transferred from Utah on 11/18/2020.]

Case 1:20-cv-01544-UNA Document 199 Filed 11/16/20 Page 1 of 20 PageID #: 3745

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF UTAH

C.R. BARD, INC., a New Jersey corporation,
and BARD PERIPHERAL VASCULAR,
INC., an Arizona corporation,
Plaintiffs,
v.

MEMORANDUM DECISION AND
ORDER GRANTING DEFENDANT’S
RENEWED MOTION TO TRANSFER
TO THE UNITED STATES DISTRICT
COURT FOR THE DISTRICT OF
DELAWARE
2:12-cv-00035-RJS-DAO

ANGIODYNAMICS, INC., a Delaware
corporation,

Chief District Judge Robert J. Shelby
Magistrate Judge Daphne A. Oberg

Defendant.

Plaintiffs C.R. Bard, Inc. and Bard Peripheral Vascular, Inc. (collectively, Bard)1 develop
and manufacture medical devices. Bard filed suit claiming that Defendant AngioDynamics, Inc.
infringed on three of Bard’s patents. AngioDynamics denies the allegations. Before the court is
AngioDynamics’s Renewed Motion to Dismiss or Transfer for Improper Venue.2 For the
reasons explained below, the Motion is GRANTED, and the case is TRANSFERRED to the
District of Delaware.

On July 12, 2017, C.R. Bard assigned the patents at issue in this case to Bard Peripheral Vascular, including all
causes of action for past, present, and future infringement claims. See Dkt. 111 (Motion to Substitute a Party) at 2.
C.R. Bard then moved the court to substitute Bard Peripheral Vascular as the named Plaintiff in this case. Id. The
court denied the Motion and instead ordered joinder of C.R. Bard and Bard Peripheral Vascular. See Dkt. 132
(Order Denying Substitution).
1

2

Dkt. 163.

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BACKGROUND
Bard commenced this action on January 11, 2012, alleging AngioDynamics infringed
three of Bard’s patents related to its power injectable port technology.3 Bard concurrently filed
in this court two other actions involving the same patents against Medical Components, Inc. and
Smiths Medical ASD.4 While this case was in initial proceedings, AngioDynamics filed with the
United States Patent & Trademark Office (USPTO) a petition for inter partes reexamination.5
After the USPTO granted the petition for review, AngioDynamics successfully moved to stay
this case.6 On December 17, 2012, the case was administratively closed.7 Upon completion of
the USPTO’s inter partes reexamination proceedings, the court on October 4, 2019 lifted the stay
and reopened the case.8
While the case was stayed, the Supreme Court decided TC Heartland LLC v. Kraft Foods
Grp. Brands LLC, holding that for venue purposes a corporate defendant in a patent infringement
action resides only in its state of incorporation.9 That holding significantly changed existing
law.10 Shortly after this case was reopened, AngioDynamics moved to dismiss or transfer under
the new rule announced in TC Heartland.11 AngioDynamics argued in its motion that venue is
improper in the District of Utah because AngioDynamics is incorporated, and therefore resides,

3

Dkt. 2 (Complaint) at 2–5 (U.S. Patent No. 7,947,022; U.S. Patent No. 7,785,302; and U.S. Patent No. 7,959,615).

4

See cases 2:12-cv-32 and 2:12-cv-36, respectively.

5

See Dkt. 151 (Motion to Dismiss) at 2.

6

See Dkt. 82 (Motion to Stay); Dkt. 88 (Order granting stay).

7

See Dkt. 89.

8

See Dkt. 147.

9

137 S. Ct. 1514, 1517 (2017).

10

See In re Micron Technology, Inc., 875 F.3d 1091, 1094 (Fed. Cir. 2017).

11

See Dkt 151.

2

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in Delaware, and it does not have a regular and established place of business in Utah.12
Challenging that assertion, Bard filed a motion for venue discovery,13 which the court granted.14
Following venue discovery, AngioDynamics filed a Renewed Motion to Dismiss or
Transfer for Improper Venue, which is now before the court.15 Bard opposes the Motion,
arguing venue is proper in the District of Utah because: (1) AngioDynamics waived its ability to
challenge venue in 2012 when it affirmatively stated in its Answer that venue here was proper
and then filed counterclaims against Bard; (2) AngioDynamics forfeited its ability to challenge
waiver based on its post-TC Heartland conduct; and (3) if venue is determined based on postfiling activity, the presence of Utah-based AngioDynamics sales representatives beginning in
2016 establishes that AngioDynamics has a regular and established place of business in Utah.16
As explained below, these arguments are unavailing. Finding venue in the District of Utah
lacking, the court transfers the case to the District of Delaware.
DISCUSSION
“Upon motion by the Defendant challenging venue in a patent case, the Plaintiff bears the
burden of establishing proper venue.”17 Venue is established under 28 U.S.C. § 1400(b), which
provides: “[a]ny 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.” The Supreme Court recently held in TC Heartland

12

Id. at 1.

13

Dkt. 152 at 6.

14

Dkt. 158 (Order granting venue discovery).

15

Dkt. 163.

16

See Dkt. 172 (Opposition Memo.) at 1; Dkt. 193 (Surreply) at 1.

17

In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018).

3

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that in the context of a patent infringement action, a corporate defendant resides only in its state
of incorporation.18
AngioDynamics asserts venue is no longer proper in the District of Utah under TC
Heartland because it is incorporated, and thus resides, in Delaware. For that reason,
AngioDynamics maintains venue here is proper only if it has committed acts of infringement in
Utah and has “a regular and established place of business” in the District.19 AngioDynamics
denies it has such a place of business.20
Bard argues venue is proper in the District of Utah under the three separate legal theories
described above: (1) waiver, (2) forfeiture, and (3) timing. The court addresses each theory in
turn.
I.

AngioDynamics Did Not Waive Its Right to Challenge Venue
Bard first argues AngioDynamics waived its right to challenge venue because it admitted

in its Answer to the 2012 Complaint that venue here was appropriate, and because it sought
affirmative relief here when it chose to assert counterclaims against Bard. The court disagrees.
A. Legal Standard
Patent venue law has changed substantially over the past fifty years, with numerous
courts evaluating the relationship between the patent venue statute, § 1400(b), and the general

18

137 S.Ct. at 1517.

19

28 U.S.C. § 1400(b) (2018).

Whether AngioDynamics committed acts of infringement “is a factual question not appropriate for resolution on a
motion to dismiss for improper venue.” Zaxcom, Inc. v. Lectrosonics, Inc., 2019 WL 418860 at *4 (E.D.N.Y. Feb. 1,
2019) (unpublished) (citing Medicines Co. v. Hospira, Inc., 881 F.3d 1347, 1350 (Fed. Cir. 2018) (“Infringement is a
question of fact.”)); In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985) (The “issue of infringement” is “a
question to be determined at trial” and “is not reached on the merits in considering venue requirements.”).
AngioDynamics does not for purposes of its motion contest Bard’s allegations that it committed infringing acts in
this District.
20

4

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venue statute, 28 U.S.C. § 1391(c).21 In 1957, the Supreme Court held the then-existing version
of § 1391(c) did not apply to § 1400(b), meaning that patent venue was separate and distinct
from general venue requirements.22 Following the 1988 Congressional amendments to §
1391(c), the Federal Circuit concluded in V.E. Holding Corp. v. Johnson Gas Appliance Co.23
that the new § 1391 amendments “furnished a definition of ‘resides’ that applied to § 1400(b).”24
Under the new amendments, a corporate defendant was “deemed to reside in any judicial district
in which it [wa]s subject to personal jurisdiction at the time the action [wa]s commenced.”25
Crucially, the court in V.E. Holding broadly expanded patent venue jurisdiction by linking it with
the general venue statute.
Because the Federal Circuit retains nationwide original jurisdiction in patent cases,26 the
V.E. Holding decision set binding precedent for all federal district courts across the country and
remained good law for nearly thirty years.27 On May 22, 2017, “the Supreme Court changed the

Section 1391(c)(2), as most recently amended in 2011, states, “[A]n 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 . . . .”
21

22

See Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 229 (1957).

23

917 F.2d 1574, 1575 (Fed. Cir. 1990).

24

In re Micron Technology, Inc., 875 F.3d 1091, 1098 (Fed. Cir. 2017).

25

Id. at 1098–99 (internal quotation marks and citations omitted).

See 28 U.S.C. § 1295(a)(1) (2018) (“The United State Court of Appeals for the Federal Circuit shall have
exclusive jurisdiction of an appeal from a final decision of a district court of the United States . . . in any civil action
arising under . . . any Act of Congress relating to patents.”)
26

Federal Circuit law governs on all matters of substantive patent law, while regional circuit law governs procedural
issues. Although venue is a procedural issue, the Federal Circuit explains, “[A] procedural issue that is not itself a
substantive patent law issue is nonetheless governed by Federal Circuit law if the issue pertains to patent law, if it
bears an essential relationship to matters committed to our exclusive control by statute, or if it clearly implicates the
jurisprudential responsibilities of this court in a field within its exclusive jurisdiction.” Laboratory Corp. of America
Holdings v. Chiron Corp., 384 F.3d 1326, 1330 (Fed. Cir. 2004) (citation omitted). Therefore, “the interpretation of
§ 1400(b), a patent-specific statute, including its relation to § 1391, is a matter of Federal Circuit law, not regional
circuit law (subject, of course, to Supreme Court law).” In re Oath Holdings Inc., 908 F.3d 1301, 1305 (Fed. Cir.
2018).
27

5

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controlling law when it decided TC Heartland.”28 The Court concluded “the [1988 and 201129]
amendments to § 1391 did not modify the meaning of § 1400(b)” as interpreted by the Court’s
earlier case law.30 In contrast to § 1391’s default definition, the term “resides” as applied to
patent venue in § 1400(b) “refers only to the State of incorporation” of corporate defendants.31
This change, which severed § 1400(b) from § 1391(c), made available an objection to venue
based on lack of residence for defendants nationwide who were currently involved in pending
patent disputes.32
Despite this change of law, many district courts initially concluded that individual
defendants had waived their right to challenge venue under Federal Rule of Civil Procedure
12(h)(1) and Rule 12(g)(2) where they previously omitted a venue defense from their answers or
initial motions to dismiss.33 The Federal Circuit definitively rejected that approach when it
decided In re Micron, explaining, “The venue objection was not available until the Supreme
Court decided TC Heartland because, before then, it would have been improper, given
controlling precedent, for the district court to dismiss or to transfer for lack of venue.”34 In a
follow-up case, In re Oath Holdings, the Court again clarified that “issues of waiver or forfeiture
of patent-venue rights under § 1400(b)” are governed by Federal Circuit law and that “Micron

28

In re Micron, 875 F.3d at 1099.

Congress again amended § 1391 in 2011. The Federal Circuit reasoned the 2011 amendments provided no basis
to reconsider its prior decision and reaffirmed V.E. Holding. See In re TC Heartland LLC, 821 F.3d 1338, 1343
(Fed. Cir. 2016), rev’d and remanded sub nom. TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514
(2017) (“We reject Heartland’s argument that in 2011 Congress codified the common law regarding venue in patent
suits as described in Fourco.”).
29

30

TC Heartland, 137 S. Ct. at 1517.

31

Id. at 1521.

32

See In re Micron, 875 F.3d at 1099.

33

Id. at 1093–94.

34

Id. at 1096.

6

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answers the entire question of waiver under Rule 12(g)(2) and (h)(1) . . . there [is] no such
waiver.”35
B. Analysis
Bard nevertheless claims AngioDynamics waived its right to challenge venue for two
reasons: (1) AngioDynamics expressly admitted venue existed in the District of Utah in its
Answer to the 2012 Complaint, and (2) AngioDynamics submitted to the jurisdiction of the court
by filing five counterclaims against Bard.36 The Court finds both arguments unpersuasive.
1. AngioDynamics’s 2012 Admission Does Not Amount to Waiver
“Under longstanding precedent, it was understood when defendants answered the
complaints filed . . . that venue was proper in a patent infringement case against a corporation in
any district in which the corporation was subject to personal jurisdiction.”37 It is undisputed that
when the case against AngioDynamics was filed in 2012, venue here was proper based on thencontrolling precedent. Consequently, AngioDynamics admitted in its Answer, “[V]enue may
exist in this district under 28 U.S.C. §§ 1391 and 1400.”38
As previously explained, a venue objection based on AngioDynamics’s circumstances
pre-TC Heartland was not available when the case was filed, and it is well established that a
defendant is not required to engage in futile gestures solely to avoid a claim of waiver.39 As is
the case here, “a sufficiently sharp change of law sometimes is a ground for permitting a party to

35

908 F.3d at 1305.

36

See Dkt. 172 (Opposition Memo.) at 7–8.

37

Xodus Medical Inc. v. Prime Medical LLC, 2018 WL 4385243, at *2 (W.D. Pa. Sept 14, 2018) (unpublished).

38

Dkt. 70 at 2, ¶ 4.

See In re Micron, 875 F.3d at 1098 (collecting cases showing all circuits agree with this position). The Tenth
Circuit explicitly stated there is no requirement that a defendant “make a futile attempt . . . given the state of the
law,” and the court will apply a new decision to a pending case when “the decision establishes a new principle of
law . . . by overruling clear past precedent upon which the litigants may have relied.” Peterson v.
Shearson/American Exp., Inc., 849 F.2d 464, 466 (10th Cir. 1988).
39

7

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advance a position that it did not advance earlier in the proceeding when the law at the time was
strongly enough against that position.”40
Bard insists the specific language of AngioDynamics’s admission distinguishes this
patent case from others pending at the time TC Heartland was decided.41 Unlike
AngioDynamics, the defendants in those cases did not explicitly admit venue was proper.42 But
that is a distinction without a difference. Venue here was proper under existing law when this
case was filed, and it would have been inconsistent with at least the spirit of the Rules for
AngioDynamics to maintain otherwise when the defense was clearly unavailable.
The Federal Circuit addressed the same question in In re Oath Holdings. The defendant
there admitted to venue in its answer, and the court explained that a litigant “cannot be faulted
for waiting to present a venue objection until after TC Heartland was decided, where the case
was in an early stage, [and] the defense could not properly have been adopted by the district
court at the time[].”43 This was true even when the defendant there was aware that TC Heartland
was pending and could result in a favorable change of law. AngioDynamics did not waive its
right to challenge venue post-TC Heartland merely because it admitted in its 2012 Answer that
venue was proper at that time.
2. AngioDynamics’s 2012 Counterclaims Do Not Amount to Waiver
“[F]iling a counterclaim, compulsory or permissive, cannot waive” Rule 12 defenses,
particularly when the moving party has not been “extensively participating in the litigation”

40

In re Micron, 875 F.3d at 1097.

41

Dkt. 193 (Surreply) at 3.

See, e.g., In re Micron, 875 F.3d 1091; Genesis Attachments LLC v. Detroit Edge Tool Co., 2019 WL 1924302
(W.D. Wis. Apr. 30, 2019); Xodus Med. 2018 WL 4385243.
42

43

908 F.3d at 1306.

8

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before seeking timely dismissal of the case.44 Further, “the Federal Circuit has suggested that the
[waiver] inquiry should at least start with an examination of the ‘time from when the defense
becomes available to when it is asserted.’”45
Considering that a venue defense was unavailable when the case was filed, it was entirely
appropriate that AngioDynamics answered the Complaint and asserted counterclaims seeking
affirmative relief, especially if those counterclaims were compulsory.46 Unlike jurisdictional
defenses subject to waiver, seeking affirmative relief by asserting counterclaims will not
ordinarily implicate waiver of venue defenses—at least not here, where AngioDynamics had no
way of knowing patent venue law would change significantly years later while its case was
administratively closed. To find otherwise would place many parties in the untenable position of
having to blindly weigh at the outset of litigation the potential value of claims that may be lost if
not asserted against the risk that asserting those claims could result in waiver of new defenses
that may later become available only as a result of unforeseen changes in the law. Such an
approach would impede, rather than promote, the orderly and efficient resolution of disputes.
Nevertheless, specific circumstances in individual cases may compel different results. As
the appellate courts have counseled, this is particularly so where a new defense becomes
available late in litigation. But notwithstanding the filing date, this case remains today in its
infancy as a result of a nearly seven year stay during which the parties were engaged in

Rates Technology Inc. v. Nortel Networks Corp., 399 F.3d 1302, 1308–09 (Fed. Cir. 2005); see also Campbell v.
Bartlett, 975 F.2d 1569, 1574 (10th Cir. 1992) (“We follow the rule that by filing a compulsory counterclaim a party
does not waive Rule 12(b) objections.”).
44

Intellectual Ventures II LLC v. FedEx Corporation, 2017 WL 5630023 at *3 (E.D. Texas, Nov. 22, 2017) (quoting
In re Micron, 875 F.3d 1091, 1102 (Fed. Cir. 2017)). The Intellectual Ventures court refers to this as a “forfeiture”
inquiry, but Bard frames the issue as one sounding in waiver. The two terms can be used interchangeably when
considering whether a party’s counterclaims defeat a subsequent improper venue motion.
45

46

Dkt. 70.

9

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proceedings relating to review of the relevant patents. Importantly, none of AngioDynamics’s
counterclaims have been actively litigated.
In light of these facts, the court declines to find waiver of its new venue defense based on
AngioDynamics’s filing of counterclaims.47
II.

AngioDynamics Did Not Forfeit the Right to Challenge Venue Based on Its PostTC Heartland Conduct
Bard next argues AngioDynamics forfeited its right to challenge venue because it waited

more than two years after TC Heartland was decided to notify Bard it intended to challenge
venue. Again, the court disagrees.
A. Legal Standard
“Rule 12(h)(1) waiver is not the sole basis on which a district court might, in various
circumstances, rule that a defendant can no longer present a venue defense that might have
succeeded on the merits.”48 Even when Rule 12-based objections to venue do not apply, the
Federal Circuit has made clear that “district courts have the authority to find forfeiture of a venue
objection” based on a party’s conduct.49 Although the court declined to provide “[a]ny legal
conclusions about the boundaries of discretion” or how such discretion is to be utilized by the
district courts,50 it did identify the following non-exhaustive list of factors as at least a starting
point for evaluating a claim of forfeiture: (1) the time from when the venue defense became

Other courts have reached a similar conclusion. See, e.g., H.W.J. Designs for Agribusiness, Inc. v. Rethceif
Enterprises, LLC, 2018 WL 827768, at *4 (E.D. Cal. Feb. 12, 2018) (finding assertion of counterclaim did not
waive venue challenge in patent case); Rillito River Solar LLC v. Wencon Dev. Inc., 2017 WL 5598228, at *4 (D.
Ariz. Nov. 21, 2017) (same); see also 5C Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure
§ 1397 (3d ed. 2004) (“The trend in more recent cases is to hold that no Rule 12(b) defense is waived by the
assertion of a counterclaim, whether permissive or compulsory.”).
47

48

In re Micron, 875 F.3d at 1100.

49

Id. at 1101.

50

Id. at 1102.

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available to when it was asserted, (2) nearness of trial, and (3) whether a party has used a
“tactical wait-and-see” approach to bypass an opportunity to declare a desire for a different
forum.51 None of these factors support a finding that AngioDynamics has forfeited its right to
raise a venue defense.
B. Analysis
1. Timeliness
The Supreme Court decided TC Heartland on May 22, 2017. This case was reopened on
October 4, 2019,52 and AngioDynamics moved on November 25, 2019 to dismiss or transfer the
case based on improper venue.53 Bard contends that, rather than wait until the inter partes
review was complete, AngioDynamics was required to jointly move with Bard to lift the stay in
this case immediately after the TC Heartland decision to permit AngioDynamics to challenge
venue.54 Because AngioDynamics waited more than two years before notifying Bard that venue
was improper, Bard argues AngioDynamics forfeited its right to challenge venue.55
This is one of many patent cases that were stayed when TC Heartland was decided.
Other district courts considering the issue generally conclude that the timeliness of TC Heartland
venue motions is most properly evaluated from the date a stay is lifted. This court adopts the
rationale generally articulated in those cases and will employ the same approach here. 56 Among

51

Id. at 1101–02.

52

Dkt. 147.

53

Dkt. 151.

54

Dkt. 193 at 4.

55

Id.

See Genesis Attachments LLC v. Detroit Edge Tool Co., 2019 WL 1924302 at *3 (W.D. Wis. Apr. 30, 2019)
(“[D]efendant cannot be faulted for not pressing the issue until the stay was lifted . . . The defense only became
available in January 2019 when the case was reopened.”); Infinity Computer Products, Inc. v. OKI Data Americas,
Inc., 2018 WL 1035793 at *5 (E.D. Penn. Feb. 23, 2018) (unpublished) (“It was not until August 8, 2017, the stay
was lifted. Thus, the August 8, 2017 date will be considered as the operative date to evaluate Moving Defendants’
conduct and the waiver arguments.”); Xodus Medical Inc. v. Prime Medical LLC, 2018 WL 4385243 at *4 (W.D.
56

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other things, this approach avoids compelling potentially unnecessary or futile motions in stayed
cases before issues are ripe for consideration.
Reopening this case in 2017 solely to hear a motion for improper venue would have
required the expenditure of resources both for the parties and the court on matters that may later
have become moot depending on the outcome of the ongoing USPTO proceedings. The review
process could easily have resolved the matter, the parties might have settled the case in the
intervening two years after TC Heartland, or any number of other things might have happened,
rendering the venue issue moot before this case was eventually reopened in 2019. In any event,
even had the court decided the venue issue and ordered the case transferred in 2017 or 2018, the
parties presumably would have merely filed a new request to stay in the transferee district court
because the case still could not proceed until the inter partes review was complete.57
This case was reopened on October 4, 2019. AngioDynamics moved less than two
months later to dismiss or transfer for improper venue. The motion was timely and resulted in no
prejudice to Bard. AngioDynamics did not forfeit its right to challenge venue.
2. Nearness of Trial
This case remains in its infancy due to the nearly seven-year stay in effect from
December 2012 to October 2019.58 There has been little meaningful litigation since the case was

Penn. Sept. 14, 2018) (unpublished) (“Because TC Heartland was decided during the pendency of a stay . . . the
‘accrual’ date for considering whether defendants’ conduct waived their right to dispute venue in those cases is the
date that the stay was lifted.”).
See Silcotek Corporation v. Entech Instruments, Inc., 2018 WL 1818192 at *3 (W.D. Penn., Apr. 17, 2018)
(unpublished) (The court confronted a similar situation and explained, “That exercise would be pointless in a stayed
matter that could be resolved in the other proceedings . . . and would contradict the spirit of Federal Rule of Civil
Procedure 1 because it would waste judicial resources.”).
57

The length of the stay is reflected in the complex procedural history of this case. During the inter partes
reexamination of the patents at issue, the USPTO initially invalidated the challenged patents. Bard appealed the
decision to the Federal Circuit, which found in 2018 that the USPTO’s claim construction was “unreasonably broad”
and vacated and remanded the case. On remand, the USPTO upheld the three challenged patents. See Dkt. 152
(Bard’s Opposition to AngioDynamics’s Initial Motion to Dismiss or Transfer for Improper Venue) at 3.
58

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reopened and trial is likely years away. Neither side will suffer prejudice if the case is
transferred to another jurisdiction.
3. Bypassed Opportunities
There is no evidence AngioDynamics engaged in any “wait-and-see” tactics or bypassed
an opportunity to challenge venue. The USPTO completed its inter partes review on August 26,
2019.59 AngioDynamics discussed the venue defect with Bard during two separate meetings in
August 2019.60 In its Motion to Reopen the case filed September 3, 2019, AngioDynamics
stated its intent to file a TC Heartland motion once the case was reopened.61 AngioDynamics
raised its venue defense at the earliest opportunity and did not engage in apparent
gamesmanship.
In sum, none of the traditional factors identified by the Federal Circuit support a finding
that AngioDynamics forfeited its right to challenge venue, and the court is aware of no other
considerations that compel such a finding.
III.

Venue Should Be Analyzed Based on the Facts at the Time of Filing
In its initial Complaint, Bard claimed venue here was proper because AngioDynamics

infringed on Bard’s patents by selling the infringing products in Utah.62 Under binding
precedent in effect at the time of filing, this would have been enough to establish venue under §
1400(b).63

59

See Dkt. 141 (Motion to Reopen Case) at 3.

Id. AngioDynamics raised the venue defect with Bard during “meet-and-confers” held on August 13, 2019 and
August 30, 2019.
60

61

Id.

62

See Dkt. 2 at 3 ¶ 11; 4 ¶ 15; 4 ¶ 18.

63

See discussion supra Section I.A.

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Following TC Heartland, Bard must meet the more stringent requirements of the second
prong of § 1400(b) and show that AngioDynamics has a “regular and established” place of
business in this district. When this case was initially filed in January 2012, AngioDynamics did
not operate any facilities in Utah, nor did it employ any Utah-based sales representatives.64 As
Bard implicitly concedes, it can carry its burden only relying on AngioDynamics’s more recent,
post-filing business activity in the state. Beginning in 2016, AngioDynamics employed, at
different times, two Utah-based territory managers responsible for selling the company’s
products in the Las Vegas multi-state territory, which includes Utah.65 Bard argues the court
should consider this activity when evaluating whether venue is proper.
The relevance of post-filing forum business activity to patent venue is an unresolved
issue. The court is aware of no Federal Circuit decisions providing guidance concerning the
point in time when venue is to be analyzed under § 1400(b). In the absence of binding
precedent, two approaches have emerged among the several district courts addressing the issue.
One group of cases66 holds “that venue should be determined based on the facts existing at the

64

See Dkt. 163 at 6.

Dkt. 163 at 9, 11. Steven Francis was hired on July 31, 2017 as a territory manager and continues to work for
AngioDynamics in that capacity. Francis’s sales territory covers eight Mountain West states, including Utah. Daniel
McIff was hired as a territory manager on October 31, 2016, and he worked for AngioDynamics until April 14,
2017. His territory also included Utah.
65

See, e.g., Personal Audio, LLC v. Google, Inc., 280 F. Supp.3d 922, 930–31 (E.D. Tex. Dec. 1, 2017) (“‘Bringing’
a civil action refers to the act of filing a complaint. The term ‘resides’ is in the present tense. The phrase ‘the
defendant has committed acts’ applies to past acts. But the phrase ‘where the defendant has a regular and established
place of business’ is in the present tense . . . [a]pplying strict statutory construction, venue under § 1400(b) should be
analyzed based on the facts and circumstances that exist on the date the suit is filed.”); NetSoc, LLC v. Chegg Inc.,
2019 WL 4857340 at *2 (S.D.N.Y. Oct. 2, 2019) (Noting that “bringing” a civil action refers to the act of filing a
complaint, and analyzing venue at that time comports with the Federal Circuit's reminder that venue determinations
“must be closely tied to the language of the statue.” (citing In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017));
Int’l Techs. & Sys. Corp. v. Samsung Elecs. Co. Ltd., 2018 WL 4963129 at *6 n.2 (C.D. Cal. June 22, 2018) (“[I]n
applying a strict statutory construction, venue under § 1400(b) should be analyzed based on the facts and
circumstances that exist at the time an action is filed.”).
66

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time the action is filed, as doing so better comports with the plain language of the statute.”67 The
other group of cases68 has created a limited exception for patent cases where “venue is
determined based on the facts existing at the time the cause of action accrues, if suit is filed
within a reasonable time thereafter.”69
Courts following the so-called accrual rule typically examine activity preceding the filing
of the complaint—often “driven by a desire to prevent defendants from avoiding suit in a given
venue by retreating from the district after committing acts of infringement.”70 For example, in
Welch Sci. Co. v. Human Eng’g Inst., Inc., the defendant committed acts of patent infringement
in the district then sold its business thirty-seven days before suit was filed.71 The Seventh
Circuit, while acknowledging the narrowness of the patent venue statute, held that venue was
still proper because the plaintiff filed suit within “a reasonable time” after the cause of action
accrued.72
But those are not the circumstances in this case. AngioDynamics lacked an established
place of business in Utah before this case was filed in 2012. Bard seeks to apply the accrual
standard to events that did not begin until 2016, four years later. Bard relies heavily on Motorola
Sols., Inc. v. Hytera Commc'ns Corp. Ltd. as an example of a court reviewing events that

Uni-Systems, LLC v. United State Tennis Ass’n Nat’l Tennis Ctr., Inc., 2020 WL 1694490 at *6 (E.D.N.Y. Apr. 7,
2020).
67

See, e.g., Welch Sci. Co. v. Human Eng’g Inst., Inc., 416 F.2d 32, 35 (7th Cir. 1969) (“[U]nder the patent venue
statute, venue is properly lodged in the district if the defendant had a regular and established place of business at the
time the cause of action accrued and suit is filed within a reasonable time thereafter.”); San Shoe Trading Corp. v.
Converse Inc., 649 F. Supp. 341, 345 (S.D.N.Y. 1986) (relying upon Welch to conclude that “venue is determined at
the time the claim accrues”); Motorola Sols., Inc. v. Hytera Commc'ns Corp. Ltd., 402 F. Supp. 3d 450, 455–56
(N.D. Ill. 2019) (agreeing with Welch).
68

69

Uni-Systems, 2020 WL 1694490 at *6.

70

Id.

71

See Welch 416 F.2d at 33.

72

Id. at 35–36.

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occurred both before and after the filing date.73 In Motorola, defendants signed a lease for a
business facility on March 5, 2017, after which plaintiffs filed suit on March 14, 2017.74
Defendants began occupying the facility on April 1, 2017 but did not begin business operations
at the facility until August 2017.75 The court found venue proper based on defendants’
concession that the facility was a regular and established place of business as of August 2017,
holding that “the alleged infringement continue[d] to accrue.”76
Bard urges the court to adopt the same approach and consider the actions of
AngioDynamics’s two Utah-based sales representatives beginning in 2016 because Bard’s patent
claims represent causes of action that are still accruing. This the court declines to do. Although
the Motorola court examined post-filing activity, the events were still tied to the filing date of the
lawsuit and actions occurring just before filing. Further, unlike the events described in
Motorola, where the activity happened within a five-month period after the case was filed, the
events Bard asks the court to consider happened at least four years after the filing date.
Bard identifies no precedent exclusively considering post-filing activity when evaluating
venue, and the case law Bard relies upon is readily distinguishable. Mindful of the Supreme
Court’s directive that venue is not a vague principle and therefore cannot be liberally
construed,77 this court will follow those courts holding that venue must be established based on

73

402 F. Supp. 3d 450.

74

Id. at 455.

75

Id.

76

Id. at 456.

See Schnell v. Peter Eckrich & Sons, Inc., 365 U.S. 260, 264 (1961) (“The requirement of venue is specific and
unambiguous; it is not one of those vague principles which, in the interest of some overriding policy, is to be given a
‘liberal’ construction.”) (internal quotation marks and citation omitted).
77

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the facts existing at the time the case is filed. AngioDynamics had no regular and established
place of business in Utah on January 11, 2012.78 Venue in this district is improper.79
IV.

The Case Should Be Transferred to the District of Delaware
AngioDynamics seeks dismissal of the case based on accusations of Bard’s harassment

and forum shopping. Bard denies such conduct and instead requests the case be transferred to
the District of Delaware. For the following reasons, the court agrees with Bard that transfer is
appropriate.
A. Legal Standard
Under 28 U.S.C. § 1406(a), “[t]he district court of a district in which is filed a case laying
venue in the wrong division or district 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.” In most cases, “it is in
the interest of justice to transfer to a proper forum rather than to dismiss,”80 and any doubts
should be resolved “in favor of preserving the action.”81
The Tenth Circuit has not yet had occasion to articulate how trial courts should decide
whether the interests of justice favor transfer to a proper forum instead of dismissal. The court

78

Dkt. 2 (Complaint).

Although the parties devote significant portions of their briefs to discussing the specific activity of
AngioDynamics’s Utah-based sales representatives, these facts are immaterial.
79

Montoya v. Fin. Fed. Credit, Inc., 872 F. Supp. 2d 1251, 1281 (D.N.M. 2012) (internal quotation marks and
citations omitted); see also Wright & Miller, 14D Fed. Prac. & Proc. Juris. § 3827 (4th ed.) (“Since the presumption
should be in favor of transfer, dismissal should be appropriate in unusual circumstances.”).
80

Simpson Performance Prods. v. NecksGen, Inc., 2017 WL 3616764, at *8 (W.D.N.C. Aug. 23, 2017) (internal
quotation marks and citations omitted).
81

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will therefore follow the parties’ lead in their briefing and apply Mann v. Automobile Protection
Corporation82 to determine whether transfer or dismissal is appropriate.83
The Mann court identified three factors to consider: “(1) whether the statute of limitations
will bar Plaintiff from re-filing his complaint, (2) whether Plaintiff filed his complaint in this
Court in bad faith or to harass Defendants, and (3) whether Plaintiff was forum shopping.”84
AngioDynamics contends dismissal is warranted because Bard is engaging in forum shopping
and is using this litigation to harass a smaller competitor. Bard denies the allegations and seeks
transfer to the District of Delaware. The court evaluates each of the Mann factors in turn.
B. Mann Factors
1. Whether a Statute of Limitations Bars Plaintiffs’ Claims
Although Bard may re-file this case in Delaware without offending the statute of
limitations, it could suffer the loss of substantial past damages if the case is dismissed. The
relevant statute, 35 U.S.C. § 286, limits patent infringement damages to the six years preceding
filing of the complaint.85 If the court dismisses this action, the six-year damages period resets,

82

777 F. Supp. 2d 1234, 1244 (D.N.M. 2011).

The Tenth Circuit has not defined the phrase “in the interest of justice” under Section 1406(a), but it has identified
factors district courts should evaluate when considering transfer under 28 U.S.C. § 1631—a substantially similar
statute (including identical “in the interest of justice” language) governing transfer or dismissal where personal
jurisdiction is lacking. See Trujillo v. Williams, 465 F.3d 1210, 1223 n.16 (10th Cir. 2006) (“[F]actors warranting
transfer rather than dismissal, at least under § 1631, include [1] finding that the new action would be time barred; [2]
that the claims are likely to have merit; and [3] that the original action was filed in good faith rather than filed after
plaintiff either realized or should have realized that the forum in which he or she filed was improper.”) (internal
citations and quotation marks omitted). Several district courts in this circuit have applied the Trujillo factors when
considering whether transfer is appropriate under § 1406(a). See, e.g., Biofire Defense, LLC v. Fluidigm Corp., 2019
WL 7037959 (D. Utah Dec. 20, 2019); Hanson v. Bosley and Bratch, Inc., 2018 WL 4491424, at *4 (D. Colo. Sept.
18, 2018). This approach is compelling, as the Trujillo factors seem equally applicable to Section 1406(a) and
Section 1631. Here, although Bard believes the Trujillo factors are more apt, AngioDynamics briefed its arguments
under the Mann factors, and Bard responded in kind. Accordingly, the court applies the Mann factors, especially
given the significant overlap between the Mann and Trujillo factors.
83

84

Mann, 777 F. Supp. 2d at 1244.

35 U.S.C. § 286 (“[N]o recovery shall be had for any infringement committed more than six years prior to the
filing of the complaint or counterclaim for infringement in the action.”).
85

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depriving Bard of the ability to seek recovery for roughly four years of damages.86 This would
be unduly harsh, especially because the change in venue law under TC Heartland occurred after
Bard brought suit in 2012, when venue was indisputably proper in this District. This factor
weighs heavily in favor of transfer.
2. Whether Plaintiffs Filed Their Complaint in Bad Faith or to Harass Defendants
In an effort to prove harassment, AngioDynamics contends Bard filed in 2015 a nearly
identical suit against it in the District of Delaware. AngioDynamics argues Bard lost that lawsuit
and maintains that if the court were to “peek at the merits” of the underlying suit here, it would
find that “the enforceability of all of Bard’s port identification patents, including those asserted”
in this case, are implicated by the Delaware decision.87 Bard disagrees, maintaining “the
Delaware decision is not informative because it involved different patents with different claims
than those at issue here.”88
This suit cannot be considered harassment since it was the first of the two cases filed.
And even if the court were to glance at the merits, it would not be able to easily determine at this
stage if the cases are identical. Such doubts about the impact of the later filed case on the case
now before the court weigh “in favor of preserving the action.”89 There is also no evidence that
Bard filed this action in bad faith because venue was undisputedly proper when it filed the
Complaint in 2012. This factor also supports transfer.

86

Dkt. 172 at 24.

87

Dkt. 163 at 23–24.

88

Dkt. 172 at 25.

89

Simpson Performance, 2017 WL 3616764, at *8.

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3. Whether Plaintiffs Were Forum Shopping
Improper forum shopping occurs where a party chooses a forum it considers to be more
favorable “without any legal or factual basis for doing so.”90 By contrast, if federal jurisdiction
“arguably” exists, a party has not engaged in improper forum shopping.91 Here, Bard filed suit
long before the Supreme Court decided TC Heartland, and neither party disputes that venue was
proper in the District of Utah in 2012. The court cannot find that Bard lacked any legal or
factual basis for choosing this forum. This factor also weighs in favor of transfer rather than
dismissal.
All three Mann factors support transfer rather than dismissal. If the case is to be
transferred, both sides agree the District of Delaware is an unquestionably proper forum. That is
where AngioDynamics is incorporated, and TC Heartland confirmed venue is proper in the
district where the alleged infringer “resides,” meaning its place of incorporation.92
CONCLUSION
For the reasons explained above, AngioDynamics’s Renewed Motion to Dismiss or
Transfer for Improper Venue is GRANTED.93 The Clerk of Court is directed to transfer the case
to the United States District Court for the District of Delaware.
SO ORDERED this 16th day of November 2020.
BY THE COURT:

________________________________________
ROBERT J. SHELBY
United States Chief District Judge
Predator Intern., Inc. v. Gamo Outdoor USA, Inc., 793 F.3d 1177, 1192 (10th Cir. 2015) (internal quotation marks
and citation omitted) (considering forum shopping in the context of Rule 11 sanctions).
90

91

See id. at 1188.

92

See 137 S.Ct. at 1517.

93

Dkt. 163.

20