United States District Court, N.D. Ohio, Western Division
Jeffrey J. Helmick United States District Judge.
Industries, Inc. makes Whizard® Trimmers, rotary trimming
knives and accessories used for the commercial trimming of
meat. Bettcher owns the patents relating to the housing and
blades for these items. Bettcher's principal place of
business is in Birmingham, Ohio.
Inc. is a Missouri corporation which also makes replacement
parts for the Bettcher knives. Hantover has its principal
place of business in Overland Park, Kansas. It is
Hantover's manufacturing and sale of these replacement
parts which Bettcher claims infringes its patents and
violates a 2007 settlement agreement between Bettcher and
Hantover regarding some of the same patents at issue here.
Hantover's alleged infringing items were distributed by
Heartland Fabrication & Machine, Inc.
February 2014, Bettcher initiated this ligation against
Hantover and Heartland, alleging five claims of patent
infringement and one claim asserting breach of a 2007
settlement agreement. Hantover asserted counterclaims seeking
declaratory judgment of the invalidity of patents at issue.
In its answer, Hantover did not contest venue. Two months
after the suit was filed, Heartland moved to dismiss the
complaint for lack of personal jurisdiction. Some limited
discovery was conducted on this issue, and following briefing
by all parties, Heartland was ultimately dismissed from the
litigation in January 2015.
Heartland's dismissal, the schedule to the Patent
Disclosures and Claim Construction was amended. As the claim
construction briefing began, Bettcher and Hantover also
attempted mediation with the Hon. Jack Zouhary, with no
resolution. A Markman hearing was conducted on July 20, 2015,
followed by supplemental briefing by both parties. In
addition, the Court conducted several conferences regarding
an ongoing discovery dispute beginning in March 2016 through
August 4, 2017, Hantover filed its motion to amend the
answer, to dismiss or transfer for improper venue. The
parties briefed the issue with the Defendant supplementing
with new controlling authority in mid-November 2017. I issued
an opinion on claim construction in January 2018.
a status conference on January 22, 2018, and set the matter
for oral argument on Hantover's motion as to venue. I
also requested the parties submit a proposed agenda for the
hearing. On January 26, 2018, Bettcher filed a motion for
reconsideration as to a portion of the Court's claim
argument on the pending motions and related issues was held
on March 13, 2018. At the conclusion of the hearing, I set
supplemental post-hearing briefing dates.
matter is before me on Hantover's motion to amend its
answer to assert an improper venue defense as well as seeking
to dismiss or transfer this action. (Doc. No. 57). Also
before me is Plaintiff's opposition (Doc. No. 59),
Defendant's reply (Doc. No. 62), Defendant's notice
of new controlling authority (Doc. No. 68), and
Plaintiff's response to the notice of controlling
authority (Doc. No. 69). In making this determination, I
consider the arguments presented at the March 13, 2018
hearing. This Court has jurisdiction pursuant to 28 U.S.C.
§§ 1332 and 1338(a).
Venue as to Patent Claims
patent disputes, venue is addressed in 28 U.S.C. §
1400(b), wherein “[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
2017, the state of the law on this subject was addressed by
the Supreme Court in TC Heartland LLC v. Kraft Foods
Group Brands LLC, 137 S.Ct. 1514 (2017), as follows:
In Fourco Glass Co. v. Transmirra Products Corp.,
353 U.S. 222, 226, 77 S.Ct. 787, 1 L.Ed.2d 786 (1957), this
Court concluded that for purposes of § 1400(b) a
domestic corporation ...