United States District Court, D. Delaware
CONNOLLY, UNITED STATES DISTRICT JUDGE
AGCO Corporation and Precision Planting LLC have jointly
moved pursuant to 28 U.S.C. § 1404(a) to transfer to the
Central District of Illinois these patent infringement
actions filed by Deere & Company. Defendants have jointly
filed identical motions in both civil actions. See
D.I. 19 in both Civil Action Nos. 18-827 and 18-828. AGCO and
Precision Planting are both incorporated in Delaware.
Precision Planting is headquartered and has its principal
place of business in the Central District of Illinois.
Precision Planting is a recently-acquired subsidiary of AGCO.
AGCO has another subsidiary, GSI, with three facilities in
the Central District of Illinois, but AGCO is headquartered
and has its principal place of business in Duluth, Georgia.
GSI is not a defendant in this case.
parties have asked that I consolidate these actions,
see D.I. 31 at 2 n.2, and Defendants have asked that
I transfer both actions. Defendants do not want me to
transfer only one of the actions; on the contrary, they have
presented me with an "all or nothing" choice -
either transfer both actions or deny Defendants' motions.
See Tr. of Dec. 20, 2018 Hr'g at 6:21-7:19.
Accordingly, I will deny Defendants' motions because
there is a "real question" about whether Deere
could have sued AGCO in the Central District of Illinois.
1404(a) provides that "[f]or the convenience of the
parties and witnesses, in the interests of justice, a
district court may transfer any civil action to any other
district or division where it might have been brought."
28 U.S.C. § 1404(a). Under § 1404(a), an action
"might have been brought" in the transferee forum
"only if the plaintiff had an 'unqualified
right' to bring the action in the transferee forum at the
time of the commencement of the action." Shutte v.
Armco Steel Corp., 431 F.2d 22, 24 (3d Cir. 1970).
"If there is a 'real question' whether a
plaintiff could have commenced the action originally in the
transferee forum, it is evident that [the plaintiff] would
not have an unqualified right to bring [its] cause in the
transferee forum." Id. (citation omitted). In
Shutte, the Third Circuit considered there to be a
"real question" about whether suit could have been
brought in the proposed transferee forum against one of the
two defendants moving for transfer, because although
jurisdiction over the defendant was proper under
Missouri's long-arm statute, "the legality of that
statute had not been adjudicated, and there were strong
doubts as to its validity." Id.
patent infringement case "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." 28 U.S.C. §
1400(b). Under § 1400(b), a domestic corporation
"resides" only in its state of incorporation.
TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137
S.Ct. 1514, 1521 (2017). Therefore, AGCO "resides"
only in Delaware. So as a prerequisite to transferring this
case under § 1404(a), there must be no "real
question" about whether AGCO has "a regular and
established place of business" in the Central District
deciding whether a defendant has a regular and established
place of business in a district, no precise rule has been
laid down and each case depends on its own facts."
In re Cray Inc., 871 F.3d 1355, 1362 (Fed. Cir.
2017). There are, however, certain statutory
"requirements" that "must be present."
Id. First, "[t]he statute requires a
'place.'" Id. "The second
requirement... is that the place 'must be a regular and
established place of business.'" Id.
"[T]he third requirement" is that the place must be
"a place of the defendant" Id. at 1363
(emphasis in original). "The[se]
'requirements'... inform whether there exist the
necessary elements, but do not supplant the language of the
statute." Id. at 1362.
argues that it has a "regular and established place of
business" in the Central District of Illinois because
its subsidiary GSI has three facilities there. D.I. 20 at 9;
D.I. 34 at 5-7. Deere argues that GSI's facilities are
not "place[s] of [AGCO]" and therefore that
Cray's third requirement for proper venue would
not have been satisfied if Deere had originally sued AGCO in
the Central District of Illinois. D.I. 31 at 5 (second
alteration in original) (internal quotation marks and
Cray, the Federal Circuit explained that whether a
place of business is "of the defendant" under
§ 1400(b) depends on multiple factors:
Relevant considerations include whether the defendant owns or
leases the place, or exercises other attributes of possession
or control over the place. One can also recognize that a
small business might operate from a home; if that is a place
of business of the defendant, that can be a place of business
satisfying the requirement of the statute.
Another consideration might be whether the defendant
conditioned employment on an employee's continued
residence in the district or the storing of materials at a
place in the district so that they can be distributed or sold
from that place. Marketing or advertisements also may be
relevant, but only to the extent they indicate that the
defendant itself holds out a place for its business.
... [A] defendant's representations that it has a place
of business in the district are relevant to the inquiry.
Potentially relevant inquiries include whether the defendant
lists the alleged place of business on a website, or in a
telephone or other directory; or places its name on a sign
associated with or on the building itself. But the mere fact
that a defendant has advertised that it has a place of
business or has even set up an office is not sufficient; the
defendant must actually engage in business from that
A further consideration for this requirement might be the
nature and activity of the alleged place of business of the
defendant in the district in comparison with that of
other places of business of the defendant in other venues.
871 F.3d at 1363-64 (emphasis in original). Cray
does not discuss whether a defendant's subsidiary's
presence in a place is a relevant consideration. Moreover, as
far as I am aware, neither the Supreme Court nor the Federal
Circuit has ruled on whether a defendant's
subsidiary's "place of business" could be one
that "the defendant has" for purposes of §
Deere could have sued AGCO in the Central District of
Illinois therefore is a question of first impression that
depends on the impact of recent judicial interpretations of
the patent venue statute and requires an open-ended
multifactor inquiry just to satisfy one of three
"requirements" for proper venue. Accordingly, I
consider there to be a "real question" about
whether Deere could have sued AGCO in the ...