Extreme Technologies L L C v. Stabil Drill Specialties L L C
4:19-cv-01977
S.D. Tex.May 30, 2019Background
- Extreme Technologies sued Stabil Drill Specialties for patent infringement (Smoothbore™ reamer), filing first in S.D. Tex. (Feb 15, 2019), dismissing that case (Feb 21), and refiling in W.D. La. the same day.
- Stabil moved to dismiss for improper venue under Rule 12(b)(3) or, alternatively, to transfer venue to the Southern District of Texas under 28 U.S.C. § 1404(a).
- Extreme argued venue proper in W.D. La. because Stabil is a Louisiana LLC (thus "resides" in Louisiana) and has a regular and established place of business there.
- Stabil argued venue was improper (allegations vague, no specific infringing acts in W.D. La.) and that Southern District of Texas is clearly more convenient: product developed/manufactured/sold in Houston and key witnesses located there.
- The court found venue proper in W.D. La. under 28 U.S.C. § 1400(b) (LLC "resides" in Louisiana and alleged acts of infringement there) but granted transfer to S.D. Tex. under § 1404(a) after weighing private and public interest factors and citing possible judge-shopping by Extreme.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper venue under 28 U.S.C. § 1400(b) (where defendant "resides" / regular place of business and acts of infringement) | Stabil "resides" in Louisiana as a Louisiana-formed LLC; alleged manufacture/sale supports acts in W.D. La. | Venue improper: allegations vague; key manufacture/sale occur in Houston, not Lafayette. | Venue is proper in W.D. La.: LLC residency in Louisiana and allegations suffice to allege infringing acts there. |
| Transfer under 28 U.S.C. § 1404(a) (convenience of parties/witnesses) | Plaintiff's choice of W.D. La. entitled to deference; no showing S.D. Tex. is clearly more convenient. | S.D. Tex. is clearly more convenient: majority of evidence/witnesses, manufacturing and development in Houston; plus plaintiff dismissed prior S.D. Tex. filing (judge-shopping). | Transfer to S.D. Tex. granted: private-interest factors favor transfer; public-interest factors neutral; judge-shopping weighed for transfer. |
Key Cases Cited
- TC Heartland, LLC v. Craft Foods Group Brands, LLC, 137 S. Ct. 1514 (2017) (sole venue statute for patent suits is 28 U.S.C. § 1400(b); domestic corporation "resides" only in state of incorporation)
- In re ZTE (USA) Inc., 890 F.3d 1008 (Fed. Cir. 2018) (plaintiff bears burden to demonstrate proper venue in response to motion to dismiss)
- In re Volkswagen of America, Inc., 545 F.3d 304 (5th Cir. 2008) (party seeking § 1404(a) transfer must show transferee forum is clearly more convenient; lists private and public interest factors)
- In re Volkswagen AG, 371 F.3d 201 (5th Cir. 2004) (court assesses whether transferee district would have been a proper venue as threshold for transfer)