United States District Court, W.D. North Carolina, Charlotte Division
Cogburn Jr. United States District Judge
MATTER is before the court on the court's prior
Order (#62) and the parties' responsive briefs. In its
previous Order, the court requested written argument as to:
(1) whether the pending related case of 3:17-cv-270 (the
“270” case) between the same parties should be
consolidated into the instant lead case, pursuant to Rule 42;
and (2) whether the instant matter should be transferred to
the District of Oregon. Having considered the briefs and the
record in this matter, the court enters the following Order.
(“Invue”) has filed a number of related patent
infringement suits against defendant (“Mobile
Tech”) pertaining to programmable security systems and
components thereof. The parties have proceedings underway
related to one or more of the patents at issue before the
Patent Trial and Appeal Board of the U.S. Patent and
Trademark Office. All actions other than the pending 270 case
have been stayed and consolidated with the instant lead case.
(#63) at 1.
issue here is whether venue is proper in this district and/or
whether the action should be transferred to another venue. In
addition, there is an issue of whether to consolidate the 270
case with the instant action.
STANDARDS OF REVIEW
Supreme Court's Recent decision in TC
22, 2017, the Supreme Court issued its decision in TC
Heartland LLC v. Kraft Foods Group Brands LLC, 137 S.Ct.
1514 (2017). Inter alia, the decision reaffirmed a
1957 decision, Fourco Glass v. Transmirrra Products
Corp., 353 U.S. 222 (1957), which found that a
corporation “resides” for purpose of venue in a
patent case in the state of its incorporation. Pursuant to
Fourco, § 1400(b) is “the sole and
exclusive provision controlling venue in patent infringement
actions.” 353 U.S. at 229.
are two prongs of the § 1400(b) test for venue in a
patent action: venue is proper either (1) where defendant
resides or (2) where the defendant has committed acts of
infringement and has a regular and established place of
business. The TC Heartland Court found that
§1400(b)'s first prong “definitively and
unambiguously” refers only to the state of
incorporation of a domestic corporation. 137 S.Ct. at 1520.
there is no evidence that all parties have consented to a
transfer of venue under §1404. There is also no evidence
that the defendant, Mobile Tech, “resides” in the
Western District of North Carolina. In fact, the defendant is
incorporated in the State of Indiana. (#63) at 5.
Nevertheless, venue in this District would be proper if the
defendant has both committed acts of infringement and has a
regular and established place of business here. A fixed
physical presence in a district is not dispositive, and the
guiding question is whether the corporate defendant does it
business through a permanent and continuous presence in the
district. In re Cordis Corp., 769 F.2d 733, 737
(Fed. Cir. 1985).
Transfer of Venue
28 U.S.C. § 1404(a) provides: “For the convenience
of parties and witnesses, in the interest of justice, a
district court may transfer any civil action to any other
district or division where it might have been brought or to
any district or division to which all parties have
consented.” Id. 28 U.S.C. § 1400(b),
which specifically governs venue in patent actions, provides,
“[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.”
Id. A motion to transfer pursuant to § 1404(a)
in a patent case requires application of the law of the
regional circuit. In re LinkAMedia Devices Corp.,
662 F.3d 1221, 1222-23 (Fed. Cir. 2011).
motion to transfer, the moving party carries a heavy burden.
Datasouth Computer Corp. v. Three Dimensional
Technologies, Inc., 719 F.Supp. 446, 451 (W.D. N.C.
1989). A court's decision to grant a motion to transfer
venue under 28 U.S.C. § 1404(a) is largely
discretionary. 3A Composites USA, Inc. v. United Indus.,
Inc., No. 5:13CV83-RLV, 2014 WL 1471075, at *1 (W.D.
N.C. Apr. 15, 2014) (citing Landers v. Dawson Const.
Plant Ltd., 201 F.3d 436, 1999 WL 991419, *2 (4th Cir.
1999)). In exercising such discretion, the court applies a
balancing test and considers various factors in deciding
whether transfer is appropriate. Jim Crockett Promotions,
Inc. v. Action Media Grp., Inc., 751 F.Supp. 93 (W.D.
N.C. 1990). The factors to be considered include:
1. The plaintiff's initial choice of forum;
2. The residence of the parties;
3. The relative ease of access of proof;
4. The availability of compulsory process for attendance of
witnesses and the costs of obtaining attendance of willing
5. The possibility of a view by the jury;
6. The enforceability of a judgment, if obtained;
7. The relative advantages and obstacles to a fair trial;
8. Other practical problems that make a trial easy,
expeditious, and inexpensive;
9. The administrative difficulties of court congestion;
10. The interest in having localized controversies settled at
home and the appropriateness in having the trial of a
diversity case in a forum that is at home with state law that
must govern the action; and
11. The avoidance of unnecessary problems with conflict of
Id. “The above factors fall into three
categories: (1) factors that favor neither party, (2) factors
that favor Defendant, and (3) factors that favor
Plaintiff.” Cohen v. ZL Technologies, Inc.,
No. 3:14-CV-00377-FDW, 2015 WL 93732, at *2 (W.D. N.C. Jan.
7, 2015) (citing Crockett, 751 F.Supp. at 98). The
court must analyze the eleven factors based on quality, not
just quantity. Id. (citing Crockett, 751
F.Supp. at 96). In most cases, the plaintiff's choice of
forum should be given significant weight, and should not be
disturbed unless the balance is strongly in favor of
transfer. Collins v. Straight, Inc., 748 F.2d 916,
921 (4th Cir. 1984) (citing Gulf Oil Corp. v.
Gilbert, 330 U.S. 501, 508 (1947)). A motion should not
be granted if transfer “would merely shift the
inconvenience from the defendant to the plaintiff, or if the
equities lean but slightly in favor of the movant after all
factors are considered.” Jim Crockett Promotions,
Inc. v. Action Media Grp., Inc., 751 F.Supp. 93, 95
(W.D. N.C. 1990).
motion to transfer, the facts as alleged in the complaint are
accepted as true and all reasonable inferences are drawn in
the plaintiff's favor. Century Furniture, LLC v. C
& C Imps., Inc., No. 1:07cv179, 2007 WL 2712955, at
*2 (W.D. N.C. Sept. 14, 2007).