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Invue Security Products Inc. v. Mobile Tech, Inc.

United States District Court, W.D. North Carolina, Charlotte Division

August 21, 2017

INVUE SECURITY PRODUCTS INC., Plaintiff,
v.
MOBILE TECH, INC., Defendant.

          ORDER

          Max O. Cogburn Jr. United States District Judge

         THIS 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.

         I. BACKGROUND

         Plaintiff (“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.

         At 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.

         II. STANDARDS OF REVIEW

         A. Supreme Court's Recent decision in TC Heartland

         On May 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.

         There 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.

         Here, 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).

         B. Transfer of Venue

         Title 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).

         Upon a 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 witnesses;
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 laws.

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).

         On a 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).

         C. ...


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