Opinion
W:21-CV-01247-ADA-DTG
01-18-2023
VOIP-PAL.COM, INC., Plaintiff, v. HUAWEI TECHNOLOGIES CO., LTD., et al., Defendants.
MEMORANDUM OPINION AND ORDER
DEREK T. GILLILAND, UNITED STATES MAGISTRATE JUDGE
Before the Court is Defendants' Motion to Dismiss or Transfer Venue (ECF No. 25). Defendants consist of Huawei Technologies Co., Ltd., Huawei Technologies USA Inc., Huawei Device Co., Ltd., Huawei Device (Shenzhen) Co., Ltd., and Huawei Device USA Inc. (collectively, “Huawei”), who together filed the Motion on August 3, 2022 (id.). Plaintiff VoIP-Pal.com, Inc. (“VoIP-Pal”) filed its Opposition on October 26, 2022 (ECF No. 52). Huawei filed a Reply on November 9, 2022 (ECF No. 54). The Court held a hearing on the Motion on December 21, 2022 (ECF No. 59). After careful consideration of the briefing and the arguments presented at the hearing, the Court GRANTS Huawei's Motion as set forth below.
For purposes of this Order, “U.S. Defendants” refers to Huawei Device USA Inc. and Huawei Technologies USA Inc., and “Foreign Defendants” refers to Huawei Device Co., Ltd., Huawei Device (Shenzhen) Co., Ltd., and Huawei Technologies Co., Ltd.
I. FACTUAL BACKGROUND
Plaintiff VoIP-Pal filed this lawsuit accusing Defendant Huawei of infringing U.S. Patent Nos. 8,630,234 and 10,807,721, both titled “Mobile gateway.” (ECF No. 10). Defendants answered on April 11, 2022, denying infringement and denying that venue is proper in this District for the U.S. Defendants. (ECF No. 15, ¶¶ 11-15). While admitting that the Foreign Defendants are corporations organized under the laws of, and resident in, China (id., ¶¶ 2-4),
Defendants' Answer denied that the U.S. Defendants had principal places of business in Plano, Texas (id., ¶¶ 5-6), as alleged by VoIP-Pal (ECF No. 10, ¶¶ 5-6).
On May 23, 2022, the Court entered a Scheduling Order, setting August 15, 2022, as the deadline for parties to file motions for inter-district transfer without leave of Court. (ECF No. 22). On August 3, 2022, Defendants filed their Motion, identifying Addison, Texas (in the Northern District of Texas) as the location of the U.S. Defendants' place of business, (ECF No. 25 at 3) and asserting that none of the Defendants have a place of business, evidence, or employees in this District (id. at 1, 5-6).
II. ANALYSIS
The Motion raises two primary arguments: (1) venue is improper as to the U.S. Defendants under 28 U.S.C. § 1400(b); and (2) the case should be transferred to the Northern District of Texas pursuant to 28 U.S.C. § 1404(a). See ECF No. 25 at 1. In opposition, VoIP-Pal argues that the U.S. Defendants waived their venue challenge and that the Northern District of Texas is not a clearly more convenient venue in which to litigate this action. See ECF No. 52 at 1, 5, 10.
A. Venue is improper as to the U.S. Defendants in the Western District of Texas.
Under Section 1400(b), patent litigation may be brought “(1) in the judicial district where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business.” Akurate Dynamics, LLC v. Carlisle Fluid Techs., Inc., No. 6:20-cv-606-ADA, 2021 WL 860006, at *1 (W.D. Tex. Mar. 8, 2021). Each U.S. Defendant resides in the Northern District of Texas. Additionally, each U.S. Defendant's only place of business in Texas is in the Northern District of Texas. Thus, venue is not proper in this district for the U.S. Defendants.
Whether Defendants have committed acts of infringement within the Western District of Texas is not at issue for purposes of the Motion.
VoIP-Pal concedes this point but argues that the U.S. Defendants waived their venue challenge. As evidence of waiver, VoIP-Pal points to an alleged delay by the U.S. Defendants in raising their venue objection and to the U.S. Defendants' engaging in claim construction in this case. VoIP-Pal also points to the U.S. Defendants' failure to object to venue in unrelated litigation and to their representations to VoIP-Pal regarding proper parties.. See No. 52 at 1-6.
The Defendants contend that none of that conduct amounted to a waiver of their venue objection. Defendants' Motion was filed before the Scheduling Order deadline and within four months of Defendants' Answer. See ECF No. 15 and ECF No. 25. Additionally, Defendants' Answer, specifically contested VoIP-Pal's venue allegations as to the U.S. Defendants and asserted that their registered offices are in the Northern District of Texas. See ECF No. 15, ¶ 15. Finally, Defendants contend that their conduct in wholly unrelated cases is irrelevant to the present motion.
In light of the facts and the procedural stage of this action, the Court agrees with Defendants. The Court finds that Defendants' Answer properly preserved their objection to venue in the Western District of Texas. See Fed.R.Civ.P. 12(h); ECF No. 15, ¶ 15. The Court further finds that the U.S. Defendants timely filed this motion under the Scheduling Order and at a very early point in the present litigation. Thus, the Court finds that the U.S. Defendants did not waive their venue objection and that venue is improper in this district as to the U.S. Defendants.
Because venue is improper as to the U.S. Defendants in the Western District of Texas, the Court may either “dismiss, or if it be in the interest of justice, transfer [this] case to any district or division in which it could have been brought.” 28 U.S.C. § 1406(a). This case could have been brought in the Northern District of Texas. See ECF No. 25 at 4. The Court therefore finds that, in the interest of justice, the case as to the U.S. Defendants should be transferred to the Northern District of Texas.
Having determined that venue is improper as to the U.S. Defendants and that the Court should transfer the case, the Court must decide what to do with the non-U.S. Defendants.
B. The private and public interest factors favor transfer of this case to the Northern
District of Texas.
As the Court noted during the hearing on December 21, 2022, the private and public interest factors are either neutral or favor transfer to the Northern District of Texas. The Court is cognizant of the judicial efficiencies that may be achieved litigating this action in the Western District of Texas where the Court has four other, co-pending, lawsuits involving the same plaintiff and the same asserted patents. With the transfer of the U.S. Defendants to the Northern District of Texas, however, the possibility of related defendants litigating two lawsuits (one against the U.S. Defendants and one against the Foreign Defendants) in two different courts renders the “practical problems” factor neutral. In addition, the evidence before the Court demonstrates that the majority of the U.S.-based witnesses and documents are located in or extremely close to the Northern District of Texas. Further, the parties' briefing failed to identify any potential witnesses or documents in the Western District of Texas. As a result, the Court finds that, on balance, the private and public interest factors favor transferring this case to the Northern District of Texas.
C. Conclusion
For the reasons noted above and on the record at the hearing, and based on the evidence before the Court, Huawei's Motion to Dismiss or Transfer is GRANTED. It is therefore ORDERED that this case be transferred to the Northern District of Texas, Dallas Division.