United States District Court, D. Delaware
3G LICENSING, S.A., KONINKLIJKE KPN N.V. and ORANGE S.A., Plaintiffs,
HTC CORPORATION and HTC AMERICA INC., Defendants.
HONORABLE LEONARD P. STARK JUDGE
before the Court is Defendants HTC Corporation ("HTC
Corp.") and HTC America Inc.'s ("HTC
America" and collectively with HTC Corp.,
"HTC" or "Defendants") motion to dismiss
(1) both Defendants for improper venue, or, in the
alternative, to transfer venue to the Western District of
Washington; and (2) HTC Corp. for lack of personal
jurisdiction (D.I. 21). Having considered the parties'
motion briefing (D.I. 22, 28, 30) and letter briefing in
response to the Court's September 11, 2017 Oral Order
(D.I. 43, 50, 51, 54, 55), and for the reasons stated below,
IT IS HEREBY ORDERED that Defendants' motion to dismiss
(D.I. 21) is GRANTED-IN-PART and DENIED-IN-PART.
Venue Defense Is Not Untimely
initial matter, Defendants' venue challenge is not
untimely. As the Court of Appeals for the Federal Circuit
recently held, "[t]he Supreme Court changed the
controlling law when it decided TC
Heartlandin May 2017." In re Micron Tech.,
Inc., 875 F.3d 1091, 1099 (Fed. Cir. 2017). Therefore,
"[t]he venue objection was not available until the
Supreme Court decided TC Heartland because, before
then, it would have been improper, given controlling
precedent, for the district court to dismiss or to transfer
for lack of venue." Id. at 1096.
America is Not a Delaware Resident for Purposes of Patent
in a patent case for domestic corporations is governed
exclusively by 28 U.S.C. § 1400(b), TC
Heartland, 137 S.Ct. at 1516, which 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." For
purposes of § 1400(b), a defendant which is a domestic
corporation "resides" only in its state of
incorporation. See TC Heartland, 137 S.Ct. at 1517.
It is undisputed that HTC America - which is incorporated in
Washington (D.I. 20 at ¶ 10) - does not
"reside" in Delaware.
is Not Proper in Delaware for HTC America Under the Second
Prong of § 1400(b)
is proper in this District unless HTC America can show that
the second prong of § 1400(b) is not satisfied. See
Boston Scientific Corp. v. Cook Group Inc.___, F.Supp.3d
___, 2017 WL 3996110, at *4 (D. Del. Sept. 11, 2017) (holding
that burden is on party opposing venue). With respect to the
second prong's requirement that a defendant have
committed "acts of infringement" in the District,
it is undisputed that HTC America has sold and offered for
sale its allegedly infringing products in Delaware.
(See D.I. 22 at 3-5; D.I. 28 at 11) Therefore,
Delaware is a proper venue for this lawsuit unless HTC
America can meet its burden to show it does not have a
regular and established place of business in Delaware. If HTC
America can show that that is true, then venue here is
improper as to it, and the Court will have to dismiss or
transfer this case (at least as to HTC America).
America has met its burden - and, indeed, Plaintiffs no
longer seriously dispute that Delaware is an improper venue
as to HTC America. (See D.I. 50 at 2-3; D.I. 54 at
1) In HTC America's sworn declaration, it indicates that
it has no physical location or facility in Delaware, and it
has no employees located in Delaware. (D.I. 22 Ex. A at
¶¶ 5-6) HTC America has shown that it does not have
a regular and established place of business in this District.
Thus, venue does not lie in Delaware for HTC America under
the second prong of Section 1400(b).
Corp. is a Foreign Defendant and May be Sued in Any Judicial
Corp. is a foreign defendant; specifically, it is a Taiwanese
corporation with its principal place of business in Taoyuan,
Taiwan. (D.I. 20 at ¶ 9) In Brunette Mach. Works.,
Ltd. v. Kockum Indus., Inc., 406 U.S. 706, 706-07
(1972), the Supreme Court held that when a foreign defendant
is sued in a patent infringement action, the general venue
provision, 28 U.S.C. § 1391, governs. Pursuant to §
1391, a foreign defendant may be sued in any judicial
district. See 28 U.S.C. § 1391(c)(3).
Defendants argue that "[f]or policy reasons" in
light of the TC Heartland decision, the Court should
find that venue is improper in this District as to HTC Corp.
(D.I. 22 at 5-7; D.I. 55 at l) But the TC Heartland
Court made clear that its holding did
not address the applicability of
Section 1400(b) to foreign defendants, and it explicitly
stated that it did not "express any opinion on" its
holding in Brunette. 137 S.Ct. at 1520 n.2. Hence,
Brunette remains good law, see, e.g., Red.com,
Inc. v. Jinni Tech. Ltd., 2017 WL 4877414, at *7 (CD.
Cal. Oct. 11, 2017), and, accordingly, venue is proper in
this District as to HTC Corp.
Court May Exercise Personal Jurisdiction Over HTC Corp.
addition to arguing that venue is improper as to both HTC
America and HTC Corp., Defendants' motion also seeks
dismissal of HTC Corp. pursuant to Federal Rule of Civil
Procedure 12(b)(2), based on lack of personal jurisdiction.
(D.I. 22 at 7-9) ...