United States District Court, D. Delaware
HONORAB ELEONARD P. STARK UNITED STATES DISTRICT
before the Court is Defendants Kyocera Corporation
("Kyocera Corp.") and Kyocera International,
Inc.'s ("Kyocera International" and
collectively with Kyocera Corp, "Kyocera" or
"Defendants") motion to dismiss (1) Kyocera
International for improper venue or, in the alternative, to
transfer venue to the Southern District of California; (2)
Kyocera Corp. for lack of personal jurisdiction; and (3) the
entirety of Plaintiff Koninklijke KPN N.V.'s
("KPN" or "Plaintiff) First Amended Complaint
for failure to state a claim upon which relief can be
granted. (D.I. 16) Having considered the parties' motion
briefing (D.I. 17, 18, 24), KPN's Notice of Change in
Circumstances and Supplemental Authority and Defendants'
Response thereto (D.I. 43, 47), and the parties' letter
briefing in response to the Court's September 11, 2017
Oral Order (D.I. 51, 62, 63, 65, 66), and for the
reasons stated below, IT IS HEREBY ORDERED that
Defendants' motion to dismiss (D.I. 16) 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
Heartland[] in 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.
does the Court find that Kyocera International forfeited its
challenge to venue due to its conduct in this litigation.
See Micron, 875 F.3d at 1101 ("[D]istrict
courts have authority to find forfeiture of a venue
objection."); Boston Scientific Corp. v. Cook Group
Inc., F.Supp.3d, 2017 WL 3996110, at *9 (D. Del. Sept.
11, 2017) ("Prototypical examples of where the Court
might reach such a conclusion [that a defendant has forfeited
its venue challenge] include where a defendant raises venue
for the first time on the eve of trial, or many months (or
years) after TC Heartland was handed down, or where
dismissal or transfer would unduly prejudice a plaintiff. Or
a party may have taken affirmative steps in the litigation
that should, in particular circumstances, be viewed as
essentially estopping that party from prevailing on an
improper [venue] defense.") (internal citations
argues that Kyocera International forfeited its objection to
venue by joining in a Motion for Judgment on the Pleadings
filed in this and eight other related cases on August 16,
2017, asserting that United States Patent No. 6, 212, 662 is
invalid pursuant to 35 U.S.C. § 101. The Court
filed its initial complaint on January 30, 2017, and an
amended complaint on February 21, 2017. (D.I. 1, 10) In lieu
of answering, on June 9, 2017, Defendants filed their pending
motion to dismiss, due to, inter alia, improper
venue pursuant to Federal Rule of Civil Procedure 12(b)(3).
(D.I. 16) Subsequently, Kyocera International has repeatedly
reaffirmed that it contests venue (D.I. 24; D.I. 26 at 2;
D.I. 28 at 1; D.I. 33 at 1), and even moved to stay the case
pending resolution of the instant motion (D.I. 33), a request
KPN opposed (D.I. 37). Under these circumstances, KPN is wrong to
insist that Kyocera International's joinder in the
Section 101 motion filed in several coordinated cases waived
its steadfast challenge to venue. See, e.g., Lites Out,
LLC v. OutdoorLink, Inc., 2017 WL 5068348, at *4 (E.D.
Tex. Nov. 2, 2017) (finding no waiver due to defendant's
participation in litigation, where defendant timely disputed
venue and maintained its challenge to venue thereafter, thus
"clearly and consistently question[ing] venue before
taking part in the claim construction hearing"); cf.
In re Rosuvastatin Calcium Patent-Litig, 2009 WL
4800702, at *6 (D. Del. Dec. 11, 2009) (finding no waiver of
defendant's right to contest jurisdiction where it
continued to contest jurisdiction while simultaneously filing
counterclaim and defending itself in lawsuit).
does the Court's conclusion of no forfeiture threaten
Plaintiff with any undue prejudice, particularly given that
trial is not scheduled to begin until at least September 9,
2019. (D.I. 50 at 21)
International is Not a Delaware Resident for Purposes of
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 Kyocera International - which is
incorporated in California (D.L 10 at ¶ 7) - does not
"reside" in Delaware.
is Not Proper in Delaware for Kyocera International Under the
Second Prong of § 1400(b)
is proper in this District unless Kyocera International can
show that the second prong of § 1400(b) is not
satisfied. See Boston Scientific, 2017 WL 3 996110,
at *4 (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 Kyocera International has
sold and offered for sale its allegedly infringing products
in Delaware. (See D.I. 17 at 5-6; D.I. 18 at 9)
Therefore, Delaware is a proper venue for this lawsuit unless
Kyocera International can meet its burden to show it does not
have a regular and established place of business in Delaware.
If Kyocera International 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 Kyocera
International has met its burden - and, indeed, KPN no longer
seriously disputes that Delaware is an improper venue as to
Kyocera International. (See D.L 62 at 3) In Kyocera
International's sworn declarations, it indicates that it
has no physical location or facility in Delaware, and while
it has a single employee who lives in Delaware, that
employee's office is located at Kyocera
International's facility in New Jersey, and the employee
has no business responsibilities in Delaware. (D.I. 17 Ex. B
at ¶ 3; D.I. 63 Ex. A at ¶ 2) Kyocera International
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 Kyocera International under the second prong
of Section 1400(b).
Corp. Is a Foreign Defendant and May be Sued in ...