6:22-cv-00459
W.D. Tex.Apr 11, 2023Background
- Plaintiff Intirion sued College Products for patent infringement (MicroChill microwave+refrigerator systems) in W.D. Tex., filed May 6, 2022.
- College Products is incorporated and principally located in Iowa (Sioux City); it asserted no office, employees, property, or sales in the Western District of Texas.
- College Products moved to dismiss for improper venue under Fed. R. Civ. P. 12(b)(3) and 28 U.S.C. § 1400(b); it submitted a sworn CEO affidavit denying any sale/use/offer-for-sale of the accused products in the district.
- Intirion relied on allegations plus limited evidence (an email to Baylor, trade-show attendance in Frisco, and marketing) to argue acts of infringement and a regular and established place of business in the district.
- The court found Intirion’s evidence showed only advertising/marketing (not actionable acts of infringement) and did not establish a physical, regular, established place of business in the district; the court denied dismissal but transferred the case to the Northern District of Iowa.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether acts of infringement occurred in this district under § 1400(b) | Allegations + evidence (email to Baylor, trade-show, marketing) suffice to show acts of infringement here | No acts occurred here; CEO affidavit denies making/using/offering/selling accused products in the district | Plaintiff’s evidence amounts to marketing/advertising only; insufficient to show acts of infringement in the district; held for defendant on this point |
| Whether defendant has a "regular and established place of business" in the district | Website/representations and purported agent/employee presence establish a physical, regular place of business | No office, property, employees, or leases in the district; allegations are unsupported | Plaintiff failed to prove a physical location used by defendant in the district; no regular and established place of business established |
| Evidentiary standard on a Rule 12(b)(3) venue challenge when defendant submits a contradictory affidavit | Plaintiff argued its complaint allegations alone should be accepted | Defendant argued its affidavit controverts plaintiff’s allegations and requires proof | Court will not accept allegations as true where contradicted by defendant’s sworn affidavit; plaintiff must make a prima facie showing (no evidentiary hearing required) |
| Transfer vs. dismissal when venue is improper | (not argued) — plaintiff sought to keep case in W.D. Tex. | Transfer appropriate because defendant resides and operates in N.D. Iowa and has pending related litigation there | Court declined dismissal and ordered transfer to the Northern District of Iowa in the interest of justice |
Key Cases Cited
- TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) (§ 1400(b) is exclusive venue statute for patent infringement)
- In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017) (three-part test for a "regular and established place of business")
- In re ZTE (USA) Inc., 890 F.3d 1008 (Fed. Cir. 2018) (Federal Circuit law controls substantive patent-venue questions)
- Group One, Ltd. v. Hallmark Cards, Inc., 254 F.3d 1041 (Fed. Cir. 2001) (mere advertising/promoting is generally not an offer creating venue)
- NexLearn, LLC v. Allen Interactions, Inc., 859 F.3d 1371 (Fed. Cir. 2017) (questioning whether advertising alone supports relatedness of claims for venue/personal jurisdiction)
- Ambraco, Inc. v. Bossclib, B.V., 570 F.3d 233 (5th Cir. 2009) (court may consider evidence beyond the complaint on a 12(b)(3) motion)