United States District Court, S.D. Georgia, Brunswick Division
STAN BAKER UNITED STATES DISTRICT JUDGE
matter is before the Court on Defendant L.A.D. Global
Enterprises, Inc.'s (“Defendant LAD”) Motion
to Dismiss, (doc. 9), and Plaintiff A&J Manufacturing,
LLC's Response in Opposition to Defendant's Motion to
Dismiss and Motion to Transfer Venue to the District of
Kansas, (doc. 10). Plaintiff also filed a Notice of Dismissal
Without Prejudice of Defendant Hangzhou Xiaoshan Zhengda
Textile Co., Ltd. (“Defendant Hangzhou”). (Doc.
17.) For the reasons and in the manner set forth below, the
Court GRANTS Plaintiff's Motion, (doc.
10), and DENIES Defendant's Motion,
(doc. 9). Pursuant to Plaintiff's Notice, (doc. 17),
Defendant Hangzhou is hereby DISMISSED. The
Court TRANSFERS Plaintiff's Complaint
and remaining claims against Defendant LAD to the United
States District Court for the District of Kansas, First
Division. Further, the Court DIRECTS the
Clerk of Court to transfer all pleadings docketed in this
Civil Action Number, including this Order, to the First
Division of the District of Kansas and to
CLOSE this case.
April 27, 2017, Plaintiff filed a Complaint pursuant to 35
U.S.C. § 271 for patent infringement. (Doc. 1.)
Defendant LAD waived service and filed a Motion to Dismiss
for improper venue under Federal Rule of Civil Procedure
12(b)(3). (Docs. 6, 9.) In response, Plaintiff opposed
Defendant LAD's Motion and, alternatively, moved to
transfer venue to the United States District Court for the
District of Kansas, where Defendant LAD resides. (Doc. 10;
see also doc. 9-1, pp. 2-3.) Defendant LAD replied
in opposition, (doc. 11), and the Court then administratively
stayed discovery and Rule 26(f) deadlines pending resolution
of these motions. (Doc. 14.)
December 3, 2018, the Court directed Plaintiff to update the
Court regarding the status of its case against unserved
Defendant Hangzhou, and Plaintiff duly responded, (docs. 17,
18). In response, Plaintiff filed a Notice of Dismissal
Without Prejudice, (doc. 17), voluntarily dismissing
Defendant Hangzhou pursuant to Federal Rule of Civil
Procedure 41(a)(1)(A)(i). Plaintiff also reiterated its request
that this infringement action be transferred to the United
States District Court for the District of Kansas and
demonstrated that it could have originally been brought in
that court. (Doc. 18.) Defendant LAD, however, opposes
transfer and seeks dismissal of this case pursuant to Federal
Rule of Civil Procedure 12(b)(3) for improper venue. (Docs.
the patent venue statute, infringement actions are to 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). This section
“is the sole and exclusive provision controlling venue
in patent infringement actions, ” and its scope is not
to be expanded by reference to the general federal venue
statute, 28 U.S.C. § 1391. TC Heartland LLC v. Kraft
Foods Grp. Brands LLC, 137 S.Ct. 1514, 1519 (2017)
(quoting Fourco Glass Co. v. Transmirra Prods.
Corp., 353 U.S. 222, 229 (1957)). Thus, a domestic
corporation only “resides” in its state of
incorporation for purposes of the patent venue statute.
Id. at 1520. The United States Supreme Court's
recent decision in TC Heartland reversed prior
precedent of the Federal Circuit, VE Holding Corp. v.
Johnson Gas Appliance Co., 917 F.2d 1575, 1584 (Fed.
Cir. 1990), which had expanded venue in patent actions, by
reference to “reside” as defined in § 1391,
to also include districts where defendants were subject to
personal jurisdiction. See TC Heartland, 137 S.Ct.
at 1520-21. Following TC Heartland, venue in a
patent infringement action against a domestic corporation is
proper only in the defendant's state of incorporation or
in a judicial district where “the defendant has
committed acts of infringement and has a regular and
established place of business.” 28 U.S.C. §
1400(b); 137 S.Ct. at 1521.
of cases with improperly laid venue is governed by 28 U.S.C.
§ 1406(a). When a plaintiff files a case in the wrong
venue, the district court “shall dismiss, or if it be
in the interest of justice, transfer such case to any
district or division in which it could have been
brought.” Id. Section 1406(a) avoids unjust
dismissals where the plaintiff mistakenly thought that venue
was appropriate by providing for transfer. Goldlawr, Inc.
v. Heiman, 369 U.S. 463, 466 (1962). “The court
may transfer the case if (1) the proposed transferee court is
one in which the action ‘could have been brought'
and (2) transfer would be ‘in the interest of
justice.'” Leach v. Peacock, Civil Action
No. 2:09-cv-738-MHT, 2011 WL 1130596, at *4 (M.D. Ala. Mar.
25, 2011) (quoting 28 U.S.C. § 1406(a)); see also
Grey v. Cont'l Mktg. Assocs. Inc., 315 F.Supp. 826,
830 (N.D.Ga. 1970) (same). Trial courts generally have broad
discretion in determining whether to transfer or dismiss a
case. Leach, 2011 WL 1130596, at *4 (citing
England v. ITT Thompson Indus., Inc., 856 F.2d 1518,
1520 (11th Cir. 1988)).
seeks transfer of its case against Defendant LAD to the
United States District Court for the District of Kansas,
Kansas City-Leavenworth Division. (Doc. 18; see also
doc. 10.) Defendant LAD, however, opposes transfer and seeks
dismissal. (Docs. 9, 11.)
LAD opposes transfer because it contends that “the
present lawsuit could not have been brought in the District
of Kansas because [Defendant Hangzhou] could not be served
there.” (Doc. 11, p. 3.) Defendant also argues that the
interest of justice would not be served by transfer because
Plaintiff has delayed service, the lawsuit is in its infancy,
and no statute of limitations clock is at issue.
(Id. at pp. 3-5.) In response, Plaintiff shows that
venue is proper in the District of Kansas and that its patent
infringement claims against Defendant LAD could have
originally been brought there. (Doc. 18, pp. 1-2.) Plaintiff
further argues that the interest of justice would be served
by transfer because of the intervening change in venue law
wrought by TC Heartland and because no issues remain
outstanding with Defendant Hangzhou in light of the voluntary
dismissal. (Id. at pp. 2-3.)
to the Supreme Court's decision in TC Heartland,
when Plaintiff filed its Complaint against Defendant LAD,
(doc. 1), venue was likely proper in this Court under the
Federal Circuit's controlling precedent. See VE
Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d
1574, 1584 (Fed. Cir. 1990) (finding patent venue proper in
districts where a defendant would be subject to personal
jurisdiction). After the Supreme Court narrowed the patent
venue statute's ambit in TC Heartland, it became
clear that venue was no longer proper in this Court.
Following this change in law and Defendant LAD's
corresponding Motion, Plaintiff sought transfer to a district
where venue is indisputably proper-the District of Kansas.
(Doc. 10; see also doc. 18.) When Plaintiff filed
its Complaint on April 27, 2017, it could not have foreseen
that the Supreme Court would restrict the then-existing scope
of available venue in patent infringement cases less than one
month later in TC Heartland.
a case on venue grounds with this procedural posture would be
plainly unjust. Dismissal, even without prejudice, would
penalize Plaintiff for a change in the law over which it had
no control and would result in an unnecessary expenditure of
the parties' and the court system's resources, not to
mention further delay. Moreover, both sides agree that venue
over Defendant LAD would be proper in the United States Court
for the District of Kansas. (Docs. 9, 10.) Because this
action against Defendant LAD could have originally been
brought in the District of Kansas, Section 1406(a) provides a
remedy to avoid this unjust situation-transfer.
the Court GRANTS Plaintiff's Motion to
Transfer Venue to the District of Kansas, (doc. 10), and
DENIES Defendant's Motion to Dismiss,
(doc. 9). As Defendant LAD's principle place of business
is located in Johnson County, Kansas, (doc. 9-1, p. 2), venue
is proper in the First Division of the United States District
Court for the District of Kansas. 28 U.S.C. § 96. In the
interest of justice, the Court TRANSFERS