Columbia Sportswear v. Seirus - Motion To Dismiss Per TC Heartland

Case 3:15-cv-00064-HZ Document 163 Filed 06/14/17 Page 1 of 11
LISA D. HARDIE, OSB # 080783

Troutman Sanders LLP
805 SW Broadway, Suite 1560
Portland, OR 97205
Telephone: (503) 290-2334
Facsimile: (503) 290-2405
Email: lisa.hardie@troutmansanders.com
MATTHEW D. MURPHEY, CSB #194111 (admitted pro hac vice)

5 Park Plaza, Suite 1400
Irvine, CA 92614
Telephone: (949) 622-2756
Facsimile: (949) 769-2090
Email: matt.murphey@troutmansanders.com
PAUL E. MCGOWAN, GSB #360460 (admitted pro hac vice)

600 Peachtree St. NE, Suite 5200
Atlanta, GA 30308
Telephone: (404) 885-3000
Facsimile: (404) 962-6842
Email: paul.mcgowan@troutmansanders.com
Attorneys for Defendant Seirus Innovative Accessories, Inc.
UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF OREGON
PORTLAND DIVISION
COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ

AMERICA, INC., an Oregon corporation,
PLAINTIFF, DEFENDANT SEIRUS INNOVATIVE

ACCESSORIES, INC.S RENEWED
v. MOTION TO DISMISS OR,
ALTERNATIVELY, TRANSFER VENUE
SEIRUS INNOVATIVE ACCESSORIES, TO THE SOUTHERN DISTRICT OF
INC., a Utah corporation, CALIFORNIA
DEFENDANT. [EXPEDITED HEARING REQUESTED]
ORAL ARGUMENT REQUESTED

Page 1 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP
ACCESSORIES, INC.S RENEWED MOTION TO DISMISS 100 SW Main Street, Suite 1000
OR, ALTERNATIVELY, TRANSFER VENUE TO THE Portland, Oregon 97204
SOUTHERN DISTRICT OF CALIFORNIA Telephone: 503.290.2400
LR 7-1 CERTIFICATION
Counsel for Defendant Seirus Innovative Accessories, Inc. (Seirus) made a good faith
effort with counsel for Plaintiff Columbia Sportswear North America, Inc. (Columbia). The
parties met and conferred twice by telephone on the relief sought by Seirus. As to Seirus
renewed motion to dismiss, Columbia is opposed to the characterization of it as a renewed
motion and the relief sought by that motion and the parties were unable to agree. On Seirus
request to expedite the hearing and/or ruling on Seirus renewed motion, Columbia is not
opposed to the Court expediting the hearing or ruling on Seirus renewed motion so long as
Columbia may file its opposition to Seirus renewed motion on June 30, 2017. Seirus agrees to
Columbias response date being enlarged to June 30, 2017 for the filing of its opposition brief,
regardless of whether the Court grants the motion for an expedited hearing. Seirus requests three
court days from the date Columbias Opposition is filed to file its Reply memorandum.
MOTION
Pursuant to Fed. R. Civ. P. 12(b)(3), Seirus moves the Court to renew its motion to
dismiss for improper venue and dismiss Columbias complaint, or, if the court finds justice so
requires, transfer this case to the Southern District of California.
I. INTRODUCTION
Defendant Seirus Innovative Accessories, Inc. (Seirus) hereby renews its motion to
dismiss this case for improper venue or transfer it to the Southern District of California (ECF No.
15), and requests an expedited hearing and/or ruling in view of the Supreme Courts recent
decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, No. 16-341, 2017 WL 2216934,
at *3 (U.S. May 22, 2017). When Seirus first moved to dismiss this case pursuant Fed. R. Civ.
P. 12(b)(3) (ECF Nos. 15, 16), this Court applied then-binding Federal Circuit precedent and

held that the District of Oregon was an appropriate venue because Seirus was subject to the
personal jurisdiction of this Court. (ECF No. 33). The Supreme Court has clarified that personal
jurisdiction analyses for determining proper venue in patent actions under 28 U.S.C. 1400(b)1
is (and has been, despite 27 years of contrary Federal Circuit precedent) incorrect.
In view of TC Heartland, it is mandatory that this Court grant Defendants renewed
motion and dismiss Columbias complaint, or if the Court finds justice so requires, transfer the
case to the Southern District of California. See, e.g., Harper v. Virginia Department of Taxation,
509 U.S. 86, 97 (1993) ([w]hen [the] Court applies a rule of federal law to the parties before it,
that rule is the controlling interpretation of federal law and must be given full retroactive effect
in all cases still open on direct review and as to all events, regardless of whether such events
predate or postdate [the] announcement of the rule. (Emphasis added)).
II. BACKGROUND AND LEGAL STANDARD
The patent venue statute, 28 U.S.C. 1400(b), provides that [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. (emphasis added). In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222,
226 (1957), the Supreme Court concluded that for purposes of 1400(b) a domestic corporation
resides only in its state of incorporation. However, in 1988 Congress amended the general
venue statute, section 1391(c), to provide that [f]or 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
1
All references in this Memorandum to section 1391, section 1400(b), section 1404 and
section 1406 and/or their subparts refer to Title 28 of the United States Code.
Access to Justice Act, 1013(a), 102 Stat. 4669 (emphasis added). The Federal Circuit in VE
Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (Fed. Cir. 1990), held that this
1988 amendment superseded the patent venue statute, so patentees were free to file patent
infringement actions anywhere an alleged infringer meets the personal jurisdiction requirements
of that state. The VE Holding decision remained the applicable and well-settled law for 27 years,
resulting in an influx of cases in popular patent districts such as the Eastern District of Texas.2
The tortured history of Plaintiff Columbia Sportswear North America, Inc.s (Plaintiff)
action against Seirus began with improperly filing its lawsuit in the Western District of
Washington only to dismiss it rather than face Seirus persuasive motion to dismiss and motion
to transfer venue filed in that court.3 After dismissing the Western District of Washington case,
Columbia filed this action the same day in this Court. ECF No. 1.
Seirus thereafter filed with this Court a Motion to Dismiss pursuant to Fed. R. Civ. P.
12(b)(3) for improper venue, or in the Alternative, to Transfer the Case to the Southern District
of California . ECF No. 15. In reaching its decision to deny Seirus motion, the Court relied on
a personal jurisdiction analysis to determine proper venue, which at the time was the controlling
law from the Federal Circuit on the issue. See Order and Opinion (denying Seirus motion, ECF
No. 33, at ECF p. 7, et seq.); see also VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d
1574 (Fed. Cir. 1990), overruled, TC Heartland, supra, 2017 WL 2216934.
All facts regarding Seirus presence (more accurately said lack of presence) in Oregon
2
See Julie Creswell, So Small a Town, So Many Patent Suits, N.Y. Times, Sept. 24, 2006,
http://www.nytimes.com/2006/09/24/busmess/24ward.html.
3
The Washington district court found that Seirus had made a strong showing warranting
transfer of venue pursuant to 1404(a). See Declaration of Matthew D. Murphey (Murphey
Decl.) at Exhibit 1 (copy of January 6, 2015 Order at p. 7, ECF No. 16-1, 16-2).

that was presented to the Court at the time of its first Motion to Dismiss are the same today. See
Edwards Declaration filed in Support of Seirus motion, ECF No. 16-13, dated February 27,
2015, at 3-4. Seirus has no place of business, employees, assets, business licensing, telephone
number(s), bank accounts, or any other corporate vitality in Oregon. Id.; and see Declaration of
Robert Murphy filed in Support of Seirus Renewed Motion to Dismiss, at 2.
On May 22, 2017, the Supreme Court issued its decision in TC Heartland, 2017 WL
2216934, at *3, explicitly overruling VE Holding and holding that the amendments to section
1391(c) did not modify the meaning of section 1400(b) as interpreted by Fourco Glass. With its
rejection of the Federal Circuits previously controlling precedent, the Supreme Courts TC
Heartland opinion now demonstrates that venue for Columbias action in this Court is improper,
and that the Court must dismiss or transfer it to the Southern District of California.
III. ARGUMENT
a) Venue Is No Longer Proper Under TC Heartland
As a result of TC Heartland, a domestic corporation resides only in its State of
incorporation for purposes of the patent venue statute, so the District of Oregon is not
an appropriate venue for this action under the first clause of 1400(b) ([a]ny civil action for
patent infringement may be brought in the judicial district where the defendant resides). As a
Utah corporation (See ECF No. 16-13, 3), Seirus does not reside anywhere in the District of
Oregon. Venue also is not appropriate under the second clause of 1400(b) (or where the
defendant has committed acts of infringement and has a regular and established place of
business) because Seirus does not have a regular and established place of business in Oregon,
but rather has been based in San Diego County, California for approximately 30 years. See ECF
No. 16-13, 3-4. Consequently, in view of TC Heartland, venue is improper in the District of

Oregon.
b) Without Venue, This Court Cannot Hear This Case
Under section 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. (Emphasis added).
The Federal Circuit has held that exercising jurisdiction when venue is barred by statute is a
species of usurpation of judicial power. See, e.g., In re EMC Corp., 677 F.3d 1351 (Fed. Cir.
2012) (mandamus power available to review patently erroneous denial of transfer of venue
under section 1404); In re Link_A_Media Devices Corp., 662 F.3d 1221, 1222 (Fed. Cir. 2011)
(same).
Therefore, since venue is improper, if the case were filed today, the Court would only
have two options: transfer the case or dismiss it altogether. See Atlantic Marine Const. Co., Inc.
v. U.S. Dist. Court for Western Dist. of Texas, __ U.S. __, 134 S.Ct. 568, 577 (2013) (When
venue is challenged, the court must determine whether the case falls within one of the three
categories set out in 1391(b). If it does, venue is proper; if it does not, venue is improper, and
the case must be dismissed or transferred under 1406(a).) (Emphasis added); King v.
Russell, 963 F.2d 1301, 1304 (9th Cir. 1992) ([Section] 1406(a) provides that the 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. (Emphasis added.)) And see Waytes v. City of Charlottesville, 153 F.3d
725 (4th Cir. 1998) (The district court, confronted with a case laying venue in the wrong
district, is statutorily obligated to dismiss the case unless transferring the case to a district where
the action could have been brought is in the interest of justice.); Quinn v. Watson, 119 F. Appx

517, 518 (4th Cir. 2005) (When a plaintiff files an action in the wrong venue, however,
[section] 1406(a) (2000) directs courts to dismiss, or if it be in the interest of justice, transfer
such case to the proper venue).
Improper venue is simply not a minor matter.4 It is well-established that a partys
substantial rights under section 1400(b) are always violated when, as here, its case is decided by
a court that lacks the authority to rule under the federal venue laws. Absent waiver, a decision
by a court that lacks statutory venue is no different than one by a court that lacks statutory
jurisdiction; the proper (and only) remedy is reversal of the judgment. See Olberding v. Illinois
Cent. R.R., 346 U.S. 338, 340 (1953) (reversing judgment after trial because of improper venue;
unless the defendant has also consented to be sued in that district, he has a right to invoke the
protection which Congress has afforded him); Schnell v. Peter Eckrich & Sons, Inc., 365 U.S.
260, 264 (1961) (rejecting claim that adherence to venue statute exalts form over substance);
Sockwell v. Phelps, 906 F.2d 1096, 1099 (5th Cir. 1990) (harmless error analysis has no place in
a case in which a party has not consented to or waived his challenge to the
statutorily improper venue); Save Our Cumberland Mountains, Inc. v. Clark, 725 F.2d 1434,
1437 (D.C. Cir. 1984) (to find that [a] venue ruling was harmless error would undermine any
policies Congress may have sought to promote when it chose to restrict venue).
Moreover the harminconvenience to witnesses, parties and otherwill already have
been done by the time the case is tried and appealed, and the prejudice suffered cannot be put
4
Research has failed to identify a Ninth Circuit opinion that addresses TC Heartland. It appears,
however, that the Ninth Circuit similarly and erroneously believed that venue in patent cases
incorporated the standard of [section] 1391(c) despite the plain language of Section 1400(b). See
West v. Terry Bicycles, Inc., 230 F.3d 1382, 2000 WL 152805 (unpublished) (9th Cir. 2000)
(dicta) (The standard set forth in section 1391(c) applies in patent cases. . . . It was therefore
error for the district court to dismiss the complaint for improper venue based on the fact that
Terry is not incorporated in Texas. Id., citing VE Holdings, supra, 917 F.2d at 1583.
back in the bottle. In re Volkswagen of Am., Inc., 545 F.3d 304, 319 (5th Cir. 2008). It is
therefore of no moment that this case is mere months from trial with respect to it having been
filed in an improper venue the harm Congress sought to avoid by enacting section 1400(b) is
not dependent on the extent of proceedings held in an improper venue.
c) This Court Must Retroactively Apply TC Heartland To This Case
The principle that statutes operate only prospectively, while judicial decisions operate
retrospectively, is familiar to every law student. United States v. Sec. Indus. Bank, 459 U.S. 70,
79 (1982). In Harper, 509 U.S. at 97, the Supreme Court made this point abundantly clear,
holding:
[w]hen [the] Court applies a rule of federal law to the parties before it, that rule is the
controlling interpretation of federal law and must be given full retroactive effect in all
cases still open on direct review and as to all events, regardless of whether such events
predate or postdate [the] announcement of the rule.
The Court concluded that a rule of federal law, once announced and applied to the parties to the
controversy, must be given full retroactive effect by all courts adjudicating federal law, and
extended to other litigants whose cases were not final at the time of the [first] decision. Id.
The Federal Circuit has relied on the holding in Harper to retroactively apply holdings
from subsequent legal decisions to currently pending cases, regardless of the stage of litigation.
NeuroRepair, Inc. v. The Nath Law Grp., 781 F.3d 1340, 1344 (Fed. Cir. 2015) citing Fourth
Circuit law, but speaking generally) (Although the events in the present matter transpired prior
to the decision in Gunn, the Supreme Courts interpretation of federal civil law must be given
full retroactive effect in all cases still open on direct review and as to all events, regardless of
whether such events predate or postdate [the Supreme Courts] announcement of the rule.)
(citing Harper); Heartland By-Prod., Inc. v. United States, 568 F.3d 1360, 1365 (Fed. Cir. 2009)
(citing Harper for the proposition that [t]he general rule is that judicial decisions are
retroactive.). Harper mandates that this Court apply TC Heartland retroactively and grant
Seirus motion to dismiss Columbias action.5
d) If the Court Finds Dismissal Inappropriate, Judicial Economy Favors

Transfer to the Southern District of California.
Dismissal is appropriate when a case was obviously or deliberately filed in the wrong
court. Wood v. Santa Barbara Chamber of Commerce, Inc., 705 F.2d 1515, 1523 (9th Cir.1983);
MTEC, LLC v. Nash, 2008 WL 4723483 (D.Or. 2008) (same). Here, Columbias first filing of
this case in the Western District of Washington only to dismiss it when faced with an impending
order to transfer the case to the Southern District of California, in addition to its re-filing of this
case in Portland the same day demonstrates that Columbia was solely attempting to make this
case as expensive as possible for Seirus to ensure it would be required to travel to distant forums
to defend itself. The court should therefore dismiss Columbias case. Columbia does not face
expiration of a statute of limitations or the other problems that counsel a district court to exercise
its discretion to transfer a case filed in an improper venue.
Moreover, were this Court to deny Seirus renewed motion and proceeds to try this case
as scheduled, the Court risks wasting judicial resources because any jury verdict rendered could
be vacated on appeal. This Court should grant mandamus to avoid the delays and expense of a
futile trial. Hoffman v. Blaski, 363 U.S. 335, 342 (1960). Indeed, in Olberding, supra, 346 U.S.
at 340, the Supreme Court reversed a plaintiffs judgment because of improper venue even
5
More than twenty years before Harper, the Supreme Court in Chevron Oil Co. v. Huson, 404
U.S. 97, 106-07 (1971), promulgated a three factor balancing test to determine whether a judicial
decision should be applied retroactively. Although Harper does not expressly overrule Chevron,
courts around the country have recognized that Harpers mandatory application of retroactivity
is inconsistent with Chevrons test and, therefore, it effectively overruled Chevron. See,
e.g.,Ditto v. McCurdy, [Continued]

though the case had been tried to a jury. The Court ordered a retrial in the proper venue. Id.
Following this reasoning, in Gogolin & Stelter v. Karns AutoImports, Inc., 886 F.2d 100, 104
(5th Cir. 1989) and United States ex rel. Harvey Gulf Intl Marine, Inc. v. Maryland Casualty
Co., 573 F.2d 245, 247-248 (5th Cir. 1978), the Fifth Circuit held that a judgment on the merits
must be reversed or vacated and the cases remanded for transfer or dismissal due to improper
venue. The Fifth Circuit explicitly declined to undertake a harmless error analysis. Id.; see also
Lied Motor Car Co. v. Maxey, 208 F.2d 672, 674 (8th Cir. 1953) (reversing judgment against the
defendant due to improper venue).
Either the District of Utah (where Seirus is incorporated) or the Southern District of
California are proper venues, with the Southern District of California the most logical forum to
which the case should be transferred. All of Seirus officers, employees, and other corporate
vitality is located in San Diego County, within the Southern District of California. That forum
favors Columbia with respect to its ability to compel the attendance of Seirus witnesses and
avoids the cost of both parties being required to export all of their witnesses and evidence to a
forum (Utah) where neither party is headquartered nor maintains corporate employees.
______________________
5
[cont.] 510 F.3d 1070 (9th Cir. 2007) (recognizing implied overruling); Felzen v. Andreas, 134
F.3d 873 (7th Cir. 1998) (noting that Chevron Oil was overruled in part by Harpers broad rule
of retroactivity); Atl. Coast Demolition & Recycling, Inc. v. Bd. of Chosen Freeholders of Atl.
Cnty., 112 F.3d 652, 672 (3d Cir. 1997) (the Supreme Courts latest retroactivity jurisprudence
has overruled Chevron Oils equitable balancing test as the determinant of whether a new
principle of law will be applied retroactively.); Mills v. State of Maine, 118 F.3d 37 (1st Cir.
1997) (holding the Supreme Court has largely rejected the Chevron Oil retroactivity analysis); In
re Federated Dept Stores, Inc., 44 F.3d 1310, 1317 (6th Cir. 1995) (recognizing that Harper has
overruled Chevron Oil); United Food & Commercial Workers Intl Union, Local No. 150A v.
NLRB, 1 F.3d 24, 35 (D.C. Cir. 1993) (same); Adams v. Alliant Techsystems Inc., 218 F. Supp.
2d 792, 797 (W.D. Va. 2002) (Chevron Oil was overruled on other grounds by Harper v.
Virginia Department of Taxation).

Therefore, in the interest of preserving judicial resources, this Court must grant this
motion and if it does not dismiss Columbias action, transfer it to the Southern District of
California.
IV. CONCLUSION
In view of the binding precedent of Harper and TC Heartland as well as the governing
statutes, this Court can no longer hear this case and is obligated to dismiss or transfer it.
Therefore, Seirus requests that the Court dismiss Columbias case, or transfer it to the Southern
District of California.
DATED: June 14, 2017

TROUTMAN SANDERS LLP
/s/ Matthew D. Murphey
MATTHEW D. MURPHEY, admitted pro hac vice

5 Park Plaza, Suite 1400
Irvine, CA 9261419
Telephone: (949) 662-2700
Facsimile: (949) 622-2739
Email: matt.murphey@troutmansanders.com
Attorneys for Defendant Seirus Innovative

Accessories, Inc.


Columbia Sportswear v. Seirus - Motion To Dismiss Per TC Heartland

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Case 3:15-cv-00064-HZ Document 163 Filed 06/14/17 Page 1 of 11

LISA D. HARDIE, OSB # 080783

MATTHEW D. MURPHEY, CSB #194111 (admitted pro hac vice)

PAUL E. MCGOWAN, GSB #360460 (admitted pro hac vice)

Attorneys for Defendant Seirus Innovative Accessories, Inc.

UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF OREGON

COLUMBIA SPORTSWEAR NORTH No. 3:15-cv-00064-HZ

PLAINTIFF, DEFENDANT SEIRUS INNOVATIVE

DEFENDANT. [EXPEDITED HEARING REQUESTED]

ORAL ARGUMENT REQUESTED

renewed motion to dismiss, Columbia is opposed to the characterization of it as a renewed

requires, transfer this case to the Southern District of California.

Page 2 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

In view of TC Heartland, it is mandatory that this Court grant Defendants renewed

predate or postdate [the] announcement of the rule. (Emphasis added)).

II. BACKGROUND AND LEGAL STANDARD

1574 (Fed. Cir. 1990), overruled, TC Heartland, supra, 2017 WL 2216934.

Page 4 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

Robert Murphy filed in Support of Seirus Renewed Motion to Dismiss, at 2.

a) Venue Is No Longer Proper Under TC Heartland

As a result of TC Heartland, a domestic corporation resides only in its State of

Page 5 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

b) Without Venue, This Court Cannot Hear This Case

Page 6 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

such case to the proper venue).

Improper venue is simply not a minor matter.4 It is well-established that a partys

Moreover the harminconvenience to witnesses, parties and otherwill already have

not dependent on the extent of proceedings held in an improper venue.

c) This Court Must Retroactively Apply TC Heartland To This Case

Seirus motion to dismiss Columbias action.5

d) If the Court Finds Dismissal Inappropriate, Judicial Economy Favors

its discretion to transfer a case filed in an improper venue.

Page 9 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

defendant due to improper venue).

Page 10 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

DATED: June 14, 2017

/s/ Matthew D. Murphey

MATTHEW D. MURPHEY, admitted pro hac vice

Attorneys for Defendant Seirus Innovative

Page 11 DEFENDANT SEIRUS INNOVATIVE Troutman Sanders LLP

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