United States District Court, W.D. Wisconsin
CELLULAR DYNAMICS INTERNATIONAL, INC. and WISCONSIN ALUMNI RESEARCH FOUNDATION, Plaintiffs,
LONZA WALKERSVILLE, INC., Defendant.
OPINION AND ORDER
STEPHEN L. CROCKER MAGISTRATE JUDGE
the court is the motion of defendant Lonza Walkersville, Inc.
to transfer this case to the United States District Court of
Maryland on the ground that venue is not proper in this
district. Dkt. 30. For the reasons discussed below, I am
granting this motion.
a patent infringement action involving stem cell technology.
On January 12, 2017, plaintiffs Cellular Dynamics
International, Inc. (“CDI”) and Wisconsin Alumni
Research Foundation (“WARF”) sued Lonza
Walkersville, Inc., for patent infringement, alleging that
Lonza had developed and sold induced pluripotent stem cells
(“iPSCs”), as well as a platform (known as the
“Lonza Kit”) for generating stem cells, that
directly or indirectly infringed upon five CDI patents and
two WARF patents licensed to CDI.
Lonza Walkersville is a Delaware corporation with its
principal place of business in Walkersville, Maryland. 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.” Under
controlling law at the time plaintiffs filed suit, for
purposes of § 1400(b) a corporation was “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.” VE Holding Corp. v. Johnson Gas
Appliance Co., 917 F.2d 1574, 1578 (Fed. Cir. 1990).
However, on May 22, 2017, the United States Supreme Court
overruled VE Holding and significantly narrowed the
reach of the venue statute, finding that the term
“reside” as used in the patent venue statute
“refers only to the State of incorporation.”
Id. at 1520 (citing In Fourco Glass Co. v.
Transmirra Products Corp., 353 U.S. 222, 226 (1957)).
This means that venue no longer can be established in a
patent case involving a non-resident corporate defendant
merely by showing that the defendant is subject to personal
jurisdiction. Instead, venue is proper only “where the
defendant has committed acts of infringement and has a
regular and established place of business.” 28 U.S.C.
§ 1400(b); Fourco, 353 U.S. at 226.
days after TC Heartland was decided, defendant filed
the instant motion pursuant to 28 U.S.C. § 1406, arguing
that venue is no longer proper in this district and asking
the court to transfer this case to the United States District
Court for the District of Maryland. Dkt. 30.In support,
defendant cited to declarations filed by Dr. Thomas Fellner,
Lonza Walkersville's Head of Commercial Development of
Cell Therapy, in which he averred that:
• Lonza Walkersville was incorporated in Delaware in
1991, and its principal place of business is in Walkersville,
• Lonza Walkersville is not registered to do business in
Wisconsin and has no regular or established place of business
• Lonza Walkersville neither owns nor leases any real
estate or other property in Wisconsin, and it has no
telephone listings or bank accounts in Wisconsin;
• Lonza Walkersville has no regular employees, agents or
distributors that reside in Wisconsin;
• Lonza Walkersville has no offices, no retail outlets,
and no distribution centers, order centers or manufacturing
facilities in Wisconsin;
• Lonza Walkersville has never had any employees,
representatives or agents in Wisconsin at any time;
• Lonza Walkersville does not maintain any inventory in
• Products bought from Lonza Walkersville are shipped
directly from its facility in Walkersville, Maryland to the
• Lonza Walkersville does not have any additional
warehouses or facilities in which its products are stored
prior to shipment in Wisconsin; and
• There is no long-standing, automatically renewing
contract between the University of Wisconsin and Lonza
Dkts. 9, 26. 37.
declarations appeared to refute decisively any claim that
defendant has a “regular and established place of
business” in this district, but plaintiffs called
defendant's due diligence into question when plaintiffs
produced a document that appeared to contradict Fellner's
denial that defendant had any long-standing contract with the
University of Wisconsin. See dkts. 39-40.
Accordingly, on June 20, 2017, I granted plaintiffs'
request to conduct expedited discovery on venue, but limited
it to “some very minimal discovery basically to prove
up the due diligence either of Dr. Fellner or a 30(b)(6)
representative.” Dkt. 41, 42. Specifically, I ordered
defendant to respond to plaintiffs' First Set of Requests
for Production, Numbers 1-3 and 7, and to “maybe have
somebody sit for a two-hour deposition basically to confirm
that due diligence was ...