Case: 17-135   Document: 15     Page: 1    Filed: 11/15/2017




           NOTE: This order is nonprecedential.


   United States Court of Appeals
       for the Federal Circuit
                 ______________________

               In re: CUTSFORTH, INC.,
                        Petitioner
                 ______________________

                        2017-135
                 ______________________

    On Petition for Writ of Mandamus to the United
States District Court for the District of Minnesota in No.
0:12-cv-01200, Judge Susan Richard Nelson.
                 ______________________

                     ON PETITION
                 ______________________

   Before TARANTO, CHEN, and HUGHES, Circuit Judges.
TARANTO, Circuit Judge.
                       ORDER
    Cutsforth, Inc., petitions for a writ of mandamus
directing the United States District Court for the District
of Minnesota to vacate its order transferring this case to
the United States District Court for the Western District
of Pennsylvania. Defendants MotivePower, Inc., LEMM
Liquidating Company, LLC, and Westinghouse Air Brake
Technologies Corporation oppose.
    This petition stems from a suit filed by Cutsforth in
May 2012 in the District of Minnesota accusing defend-
ants of patent infringement. Defendants did not initially
Case: 17-135    Document: 15      Page: 2    Filed: 11/15/2017



2                                      IN RE: CUTSFORTH, INC.




dispute the propriety of venue; to the contrary, their
several answers to Cutsforth’s complaint admitted the
complaint’s allegation of venue. Proceedings were stayed
pending inter partes review of the asserted patents until
the district court lifted the stay in September 2016.
    After the Supreme Court issued its decision in TC
Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.
Ct. 1514 (2017), defendants moved for leave to amend
their answers to assert a defense of improper venue and
to transfer the case under 28 U.S.C. § 1406(a). They
argued that the requirements of 28 U.S.C. § 1400(b) were
not satisfied as now understood in light of TC Heartland.
And they argued that TC Heartland was an intervening
change of law such that their failure to make a venue
objection earlier was not a waiver of the objection under
Federal Rule of Civil Procedure 12(g)(2) and (h)(1)(A).
    The district court agreed with defendants that, before
TC Heartland, they did not have available to them the
argument that, because they are not incorporated in
Minnesota, they did not “reside[]” there under § 1400(b).
Mem. Op. & Order, Cutsforth, Inc. v. LEMM Liquidating
Co., LLC, et al., No. 12-cv-1200 (D. Minn. Aug. 4, 2017),
Dkt. No. 419, at 6–9. For that reason, the court held that
they did not waive their venue objection under Federal
Rule of Civil Procedure 12(g)(2) and (h)(1)(A). Id. at 5, 9–
10.
     The court went on to note “the waste of judicial re-
sources after five years of litigation, and the burden that
must now be imposed on a district unfamiliar with this
case,” and to state “that [a] transfer will lead to additional
cost and delay and unquestionably prejudices Cutsforth.”
Id. at 12–13. Even so, the court concluded, “the law of
venue exists for the convenience of defendants, not plain-
tiffs, and under 28 U.S.C. § 1406(a), prejudice to the
plaintiff is not a relevant consideration.” Id. at 12. The
court therefore granted the motion and transferred the
Case: 17-135    Document: 15     Page: 3    Filed: 11/15/2017



IN RE: CUTSFORTH, INC.                                    3



case to the Western District of Pennsylvania.         See
Cutsforth, Inc. v. LEMM Liquidating Co., LLC, et al., No.
17-cv-1025-CB (W.D. Pa.).
   Cutsforth then filed this petition for a writ of manda-
mus. Cutsforth argues that the transfer order should be
vacated because the district court erred in its analysis of
whether the venue defense was waived in this case.
     A party seeking a writ bears the burden of demon-
strating that it has no “adequate alternative” means to
obtain the desired relief, Mallard v. U.S. Dist. Court for
the S. Dist. of Iowa, 490 U.S. 296, 309 (1989), and that the
right to issuance of the writ is “clear and indisputable,”
Will v. Calvert Fire Ins., 437 U.S. 655, 666 (1978) (citation
and internal quotation marks omitted). The court must
also be satisfied that the issuance of the writ is appropri-
ate under the circumstances. Cheney v. U.S. Dist. Court
for the Dist. of Columbia, 542 U.S. 367, 381 (2004).
    We recently held that the Supreme Court’s decision in
TC Heartland effected a relevant change of law and, more
particularly, that failure to present the venue objection
earlier did not come within the waiver rule of Federal
Rule of Civil Procedure 12(g)(2) and (h)(1)(A). In re Mi-
cron, No. 17-138 (Fed. Cir. Nov. 15, 2017). We further
explained, however, that Rule 12(h)(1) is not the only non-
merits basis on which a defendant might lose a venue
defense. Id. at 13. In light of In re Micron, the district
court in the present case here clearly erred in not consid-
ering non-Rule 12 bases for waiver raised by Cutsforth.
Mandamus relief is therefore appropriate to direct the
court to reconsider its decision in light of In re Micron.
    Accordingly,
    IT IS ORDERED THAT:
   The petition is granted. The district court’s order
granting defendants’ motion to transfer for improper
venue is vacated, and the court is instructed to recall any
Case: 17-135   Document: 15   Page: 4   Filed: 11/15/2017



4                                  IN RE: CUTSFORTH, INC.




case files from the U.S. District Court for the Western
District of Pennsylvania. The case is remanded for fur-
ther proceedings consistent with this opinion.
                               FOR THE COURT

                               /s/ Peter R. Marksteiner
                               Peter R. Marksteiner
                               Clerk of Court
s32
