Fish & Richardson Wins Federal Circuit Mandamus Petition to Vacate Venue Transfer for Cutsforth, Inc.

Fish won a major victory for Cutsforth, Inc. on November 15, 2017 when the Federal Circuit vacated a venue transfer that its competitor, MotivePower, Inc., won after the U.S. Supreme Court's TC Heartland decision upended a long established rule of law regarding where a plaintiff can file a patent lawsuit. The Federal Circuit's opinion reaffirms that district courts' primary responsibility is to ensure that the litigation process is as fair as possible, to all sides.

As a result of the ruling, the case returns to the Minnesota District Court where the two companies have been litigating for over five years, including going through discovery, experts and summary judgment briefing and argument. Cutsforth, which makes innovative brush technology used in the maintenance of electrical turbines, was founded in Cohasset, MN and has its distribution and field service operations in Bloomington, MN. MotivePower has facilities in Pittsburgh, PA and had sought the transfer of the case to Pittsburgh, which the Minnesota judge granted in August 2017 after the TC Heartland decision.

"Prior to the Federal Circuit's clarification in the Cutsforth case, district judges faced with TC Heartland's venue law may have felt their hands tied, even when that led to an outcome - like transferring a case that was well on its way to trial - that was unfair," said Fish & Richardson principal Rob Courtney, who represents Cutsforth with Fish principal Matt Samuel. "Today's opinion makes clear fairness is a primary factor in evaluating issues like venue, even post-TC Heartland. When a company like Cutsforth invests years to litigate in Minnesota, the Court can and should consider that investment when deciding a venue transfer motion," added Samuel.

Cutsforth sued MotivePower for patent infringement in Minnesota in 2012. MotivePower subsequently sought and won IPRs against the Cutsforth patents while the litigation was stayed. Fish appealed both IPR decisions to the Federal Circuit and won rare reversals of the IPR decisions in January 2016 and April 2016. The precedential April 2016 decision was the first-ever full reversal of an IPR decision of non-patentability, and turned on claim construction errors by the Patent Trial and Appeal Board. These decisions affirming Cutsforth's patentability claims cleared the path for the company's district court infringement proceedings to continue against MotivePower in Minnesota.