United States District Court, S.D. California
ORDER DENYING DEFENDANTS' MOTION TO DISMISS FOR
IMPROPER VENUE [DOC. NO. 96.]
MARILYN L. HUFF, DISTRICT JUDGE UNITED STATES DISTRICT COURT
12, 2017, Defendants HTC Corporation and HTC America, Inc.
filed a motion to dismiss the action for improper venue
pursuant to Federal Rule of Civil Procedure 12(b)(3). (Doc.
No. 96.) On June 26, 2017, Plaintiff Infogation Corp. filed
an opposition to Defendants' motion to dismiss. (Doc. No.
98.) On June 28, 2017, the Court took the matter under
submission. (Doc. No. 99.) On July 3, 2017, Defendants filed
their reply. (Doc. No. 101.) For the reasons below, the Court
denies Defendants' motion.
27, 2016, Plaintiff InfoGation filed a complaint for patent
infringement against Defendants HTC Corp. and HTC America,
alleging infringement of U.S. Patent No. 6, 292,
(Doc. No. 1.) Specifically, Plaintiff alleges that
Defendants' smartphones, which run the Android operating
system and can connect to a Google Maps navigation server
through a wireless carrier's network data, infringe,
either literally or through the doctrine of equivalents,
claim 15 of the '743 patent. (Id.)
November 1, 2016, Defendants filed an answer and
counterclaims to Plaintiff's complaint. (Doc. No. 21) In
the answer, Defendants denied that venue was proper in this
district. (Id. ¶ 7.) On November 21, 2016,
Defendants filed a motion to stay the action pending
resolution of a later-filed declaratory judgment action
pending in the Northern District of California: Google
Inc. v. InfoGation Corp., No. 3:16-cv-05821-VC (N.D.
Cal., filed Oct. 7, 2016). (Doc. No. 38.) On November 22,
2016, the Court issued a scheduling order for the action
setting forth all dates leading up to trial. (Doc. No. 39.)
On December 21, 2016, the Court denied without prejudice
Defendants' motion to stay. (Doc. No. 46.)
December 2, 2016, Plaintiff served its infringement
contentions. (Doc. No. 89-1, Apreotesi Decl. Ex. A.) On
January 27, 2017, Defendants served their invalidity
contentions. (Id. Ex. B.) On February 24, 2017,
Defendants filed a motion for judgment on the pleadings
pursuant to Federal Rule of Civil Procedure 12(c) on the
basis that the '743 patent is invalid under 35 U.S.C.
§101. (Doc. No. 49.) On March 27, 2017, the Court denied
Defendants' motion for judgment on the pleadings. (Doc.
No. 63.) On March 27, 2017, Defendants served amended
invalidity contentions. (Doc. No. 82-1, Pennington Decl. Ex.
March 30, 2017, Plaintiff filed a separate complaint for
patent infringement against Defendants, alleging infringement
of U.S. Patent No. 9, 528, 843. (17-cv-646-Doc. No. 1.) On
April 17, 2017, Defendants filed a motion to stay the action
pending inter partes review proceedings as to the
'743 patent. (Doc. No. 70.) On May 2, 2017, the parties
filed a joint motion to consolidated Case No. 17-cv-646 with
Case No. 16-cv-1902 pursuant to Federal Rule of Civil
Procedure 42(a). (Doc. No. 76.)
5, 2017, the Court issued a claim construction order,
construing terms from the '743 patent. (Doc. No. 78.) On
May 9, 2017, the Court granted the parties' joint motion
to consolidate, consolidated Case No. 17-cv-646 with Case No.
16-cv-1902, and issued an amended scheduling order for the
consolidated action. (Doc. No. 81.) On June 7, 2017, the
Court issued an order resolving a dispute between the parties
regarding Plaintiff's disclosure of its asserted priority
date for the '743 patent. (Doc. No. 91.) By the present
motion, Defendants move pursuant to Federal Rule of Civil
Procedure 12(b)(3) and 28 U.S.C. §§ 1400(b),
1406(a) to dismiss the consolidated action for improper venue
or, in the alternative, to transfer the action to either the
Western District of Washington or the Northern District of
California. (Doc. No. 96-1 at 1.)
U.S.C. § 1406(a) provides: “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.” Under
Federal Rule of Civil Procedure 12(b)(3), a party may move to
dismiss an action for “improper venue.” In
deciding a Rule 12(b)(3) motion, a court need not accept the
pleadings as true and may consider facts outside the
pleadings. Murphy v. Schneider Nat'l, Inc., 362
F.3d 1133, 1137 (9th Cir. 2004). Once a defendant raises an
objection to venue, the plaintiff bears the burden of
establishing that the selected venue is proper. See
Piedmont Label Co. v. Sun Garden Packing Co., 598 F.2d
491, 496 (9th Cir. 1979); Kaia Foods, Inc. v.
Bellafiore, 70 F.Supp.3d 1178, 1183 (N.D. Cal. 2014).
patent infringement actions, venue is proper “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.” 28 U.S.C.
§ 1400(b); see TC Heartland LLC v. Kraft Foods Grp.
Brands LLC, 137 S.Ct. 1514, 1516 (2017). In TC
Heartland, 137 S.Ct. at 1517, the Supreme Court recently
reaffirmed its decision in Fourco Glass Co. v. Transmirra
Products Corp., 353 U.S. 222, 226 (1957), and held
“that a domestic corporation ‘resides' only
in its State of incorporation for purposes of the patent
argue that the action should be dismissed for improper venue
because Defendant HTC America neither “resides”
nor “has a regular established place of business”
in the Southern District of California. (Doc. No. 96-1 at
5-7.) In response, Plaintiff argues that Defendants waived