IN THE UNITED STATES DISTMCT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION

Transcription

1 IN THE UNITED STATES DISTMCT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION COOPER LIGHTING, LLC, Plaintiff, CIVIL ACTION FILE NO. l:16-cv-2669-mhc CORDELIA LIGHTING, INC. and JIMWAY, INC., Defendants. ORDER This case comes before the Court on Defendants Cordeha Lighting, Inc. ("Cordelia") and Jimway, Inc. ("Jimway")'s Motion to Dismiss for Improper Venue in Light of TC Heartland v. Kraft Food Brands Group, or to Transfer Pursuant to 28 U.S.C. 1406(a) [Doc. 56] and Defendants' Motion to Stay Litigation Pending Patent Office Inter Partes Review of Validity of All Patents- Smt[Doc. 68].

2 I. BACKGROUND A. Procedural History On July 22, 2016, Cooper Lighting, LLC ("Cooper") fded smt against Defendants alleging infringement of patents and stating as a basis for venue "28 U.SC 1391(b) and 28 U.S.C. 1400(b), as Defendants reside in this district and/or wrongful acts giving rise to the Cooper's claims have occurred in this district as alleged herein." Compl. 6 [Doc. 1]. Defendants answered the Complaint and denied that venue was proper. Answer ^ 6 [Doc. 17]. Cooper fded an Amended Complaint, making an identical venue allegation. Am. Compl. ^ 6 "Doc. 18]. In lieu of answering. Defendants then to fded a partial motion to dismiss the Amended Complaint, but did not address their original contention that venue was not appropriate in the motion to dismiss. Motion to Dismiss [Doc. 23]. On April 6, 2017, the Court granted the partial motion to dismiss. Order [Doc. 44]. On April 20, 2107, Defendants answered the Amended Complaint, again denying venue. Answer to Am. Compl. ^ 6 [Doc. 50]. On May 22, 2017, the Supreme Court issued a decision in TC Heartland LLC V. Kraft Foods Group Brands LLC, 137 S. Ct (2017). The Court held that a domestic corporation resides only in its state of incorporation for purposes of 28 U.S.C. 1400(b). Id at On June 8, 2017, Defendants fded the instant 2

3 motion to dismiss, contending that in light of TC Heartland, venue is only proper in the state of their incorporation, Califomia. Defs.' Mem. of Law in Supp. of their Mot. to Dismiss for Improper Venue in Light of TC Heartland LLC v. Kraft Foods Group Brands LLC, or to Transfer Pursuant to 28 U.S.C. 1406(a) ("Defs.' Br.") [Doc. 56-1] at 9. On July 26, 2017, Defendants filed an application for inter partes review ("IPR") with the Patent Office challenging the validity of the four patents that are the subject of the instant dispute. Mem. in Supp. of Defs.' Mot. to Stay Litig. Pending Patent Office Inter Partes Review of Validity of All Patents-in-Suit ("Defs.' Stay Br.") [Doc. 68-1] at 2-4. Shortly afterwards, on August 21, 2017, Defendants filed a Motion to Stay Litigation Pending Patent Office Inter Partes Review of Validity of All Patents-in-Suit [Doc. 68]. Defendants' application has been assigned to the Patent Trial and Appeal Board ("PTAB"), and its decision may narrow or resolve the issues in the litigation. Defs.' Stay Br. at 4-5. B. Facts Related to Venue 1, Cordelia Cordelia is listed in the online Whitepages with a phone number of (770) and an address of 844 Livingston Ct. SE, Marietta, GA Decl. of Geoffrey K. Gavin ("Gavin Decl.") [Doc. 58-1] ^ 3. Cads to the phone 3

4 number, if not answered by a live person, receive a recorded message stating "[y]ou have reached the Atlanta office of Cordeha Lighting." Id 114. Cordelia has paid state property taxes on personal property located at the 844 Livingston Court address since Id. If 5. Cordelia does not own, but leases the property located at 844 Livingston Court. Decl. of Jessie King ("King Decl.") [Doc. 62-2] 6-7. The property at 844 Livingston Court shows signage for Cordelia Lighting outside the entrance to the parking lot, on front door ofthe building, and on parking spaces. Gavin Decl. If 11. The Atlanta location was created "exclusively for use as a convenience location for a single customer. The Home Depot...." King Decl. If 8. Other than meetings with The Home Depot, no other customers are invited to the location, and it is not a retail outlet. Id. If 12. Products to Georgia customers are not shipped through 844 Livingston Court; moreover, no invoices are created or sales booked through that location. Id Iflf There are two Cordelia employees present at the location, both with sales roles directed to The Home Depot. Id. If Jimway Jimway sells lighting fixtures to customers in Georgia. Answer to Am. Compl. If 12. Jimway has no employees located in the state of Georgia. King Decl. If 9. Cordelia and Jimway are separate corporate entities, with separate 4

5 financial statements and balance sheets. Id. Tf 15. Jimway and Cordelia share a common officer. Gavin Decl. If 8. II. LEGAL STANDARD A. Standard for Venue Cases 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." 28 U.S.C. 1400(b). A corporate defendant resides only in its state of incorporation for purposes of Section 1400(b). TC Heartland, 137 S. Ct. at To determine "whether a corporate defendant has a regular and established place of business in a district, the appropriate inquiry is whether the corporate defendant does its business in that district through a permanent and continuous presence there...." In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985).^ A defendant may waive its privilege to contest venue if it omits the objection from a responsive pleading. FED. R. CIV. P. 12(h); see also Lerov v. Great W. United Corp., 443 U.S. 173, 180 (1979). "Although, under the Federal Rules of ' Substantive decisions of the Federal Circuit dealing with patent matters are binding on this Court. 28 U.S.C. 1295(a)(1); see also Catch Curve, Inc. v. Integrated Glob. Concepts, Inc., No. 1:06-CV-2199-CC, 2009 WL , at *1 (N.D. Ga. Feb. 18, 2009) (citing Phonometrics, Inc. v. Westin Hotel Co., 350 F.3d 1242, (Fed. Cir. 2004)). 5

6 Civil Procedure, an amended complaint supersedes the initial complaint and becomes the operative pleading in the case, the filing of an amended complaint does not automatically revive all defenses or objections that the defendant may have waived in response to the initial complaint." Krinsk v. SunTrust Banks, Inc., 654 F.3d 1194, 1202 (11th Ch. 2011) (quotations and citation omitted). However, one exception to waiver occurs if a defense was not "available to the party" at the time the responsive pleading was made. FED. R. CiV. P. 12(h)(1)(A). See also Curtis Pub. Co. v. Butts, 388 U.S. 130, 143 (1967) (holding "effective waiver must... be one of a known right or privilege.") (citation and quotations omitted). "A defense is available unless its legal basis did not exist at the time of the answer or pre-answer motion, or the complaint does not contain facts sufficient to indicate that a defense was possible." Gilmore v. Palestinian Interim Self-Gov't Auth., 843 F.3d 958, 964 (D.C. Cir. 2016), cert, denied. No , 2017 WL (U.S. Oct. 2, 2017); see also Artistic Stone Grafters, Inc. v. Safeco Ins. Co. of Am., No. CV , 2010 WL , at *3 (S.D. Ga. Jan. 25, 2010) (holding no waiver occurred where venue defense was raised after it became applicable to the case). 6

7 B. Standard for a Stay The party seeking a stay bears the burden of showing that a stay is appropriate. See Automatic Mfg. Sys., Inc. v. Primera Tech., Inc., No. 6:12-CV- 1727, 2013 WL , at *1 (M.D. Fla. May 13, 2013) (citing Landis v. N. Am. Co., 299 U.S. 248, 255 (1936)). "Courts have inherent power to manage then dockets and stay proceedings, including the authority to order a stay pending conclusion of a PTO reexamination." Ethicon, Inc. v. Quigg, 849 F.2d 1422, (Fed. Cir. 1988) (citation omitted). Several courts have noted the benefits of staying infringement litigation pending an IPR: [a]ll prior art presented to the Court will have been first considered by the PTO, with its particular expertise[;] Many discovery problems relating to prior art can be alleviated by the PTO examination[;] In those cases resulting in effective invalidity of the patent, the suit will likely be dismissed[;] The outcome of the reexamination may encourage a settlement without the further use of the Court[;] The record of reexamination would likely be entered at trial, thereby reducing the complexity and length of the litigation[;] Issues, defenses, and evidence will be more easily limited in pretrial conferences after a reexamination[; and] The cost will likely be reduced both for the parties and the Court. Tomco^ Equip. Co. v. Se. Agri-Svs., Inc., 542 F. Supp. 2d 1303, 1307 (N.D. Ga. 2008) (alterations in original) (quoting Datatreasurv Corp. v. Wells Fargo & Co., 490 F. Supp. 2d 749, 754 (E.D. Tex. 2006)). Although there are many potential benefits to a stay pending the outcome of an IPR proceeding, "the Court should not 7

8 ignore the potential difficulties" including "the possible length of the review, and the fact that the IPR process "only considers the validity of the patent with regard to prior art." Id (internal citations omitted). III. VENUE Because TC Heartland was decided after their Motion to Dismiss was filed, Defendants contend that they have not waived the venue defense. Cooper responds that because Defendants could have relied on the case law which formed the basis for the decision in TC Heartland, they have waived the venue defense. Even if the defense is not waived. Cooper contends that Defendants have "committed acts of infringement and ha[ve] a regular and established place of business" in the Northem District of Georgia. PL's Opp'n to Defs.' Mot. to Dismiss for Improper Venue in Light of TC Heartland v. Kraft Food Brands Group, or to Transfer Pursuant to 28 U.S.C. 1406(A) ("PL's Br.") [Doc. 58] at 2. A plaintiff must show that venue is proper as to each defendant. Cook Grp., Inc. V. Purdue Research Found., No. IP C-M/S, 2002 WL , at *2 (S.D. Ind. June 24, 2002); Toombs v. Goss, 768 F. Supp. 62, 65 (W.D.N.Y. 1991). See also Lvttle v. United States, No. l:10-cv-3302-cap, 2011 WL , at ^2 (N.D. Ga. Oct. 6, 2011) (holding in non-patent arena that "when a complaint states multiple claims against multiple parties, the plaintiff has the burden of 8

9 establishing that venue is proper as to each claim."). Accordingly, the Court must address whether each Defendant has waived a challenge to venue and, if not, whether venue is appropriate as to each Defendant. A. Did Defendants Waive their Venue Defense? The issue of whether Defendants have waived a challenge to venue turns on whether the defense was "available" to them at the time the Motion to Dismiss was fded on October 24, 2016, prior to the Supreme Court's decision in TC Heartland. The answer to this question turns on whether (1) Defendants could have asserted an improper venue defense prior to TC Heartland, and (2) whether TC Heartland effected a change in the law. 1. Whether Defendants had a Venue Defense Prior to TC Heartland Prior to TC Heartland, a corporation was determined to "reside" for purposes of 28 U.S.C where it would be subject to personal jurisdiction. VE Holding Corp. v. Johnson Gas Apphance Co., 917 F.2d 1574, 1579 (Fed. Ch. 1990). Neither Jimway nor Cordelia objected to venue or personal jurisdiction in ^ Defendants also contend that they did not waive the venue defense because they included it in their answer to the amended complaint although they failed to assert it in a previous Rule 12(b) motion to dismiss. Defs.' Br. at 12. As Cooper correctly points out (PL's Br. at 3-4), an amended complaint does not revive a waived venue defense. Krinsk, 654 F.3d at

10 the Motion to Dismiss; accordingly, the Court must examine whether such an argument would have been futile. Under the applicable Federal Circuit law, "[djetermining whether personal jurisdiction exists over an out-of-state defendant involves two inquiries: whether the forum state's long-arm statute permits service of process, and whether the assertion of personal jurisdiction would violate due process." Fusionbrands, Inc. v. Suburban Bowerv of Suffem, Inc., No. l:12-cv-0229-jec, 2013 WL , at *4 (N.D. Ga. Sept. 26, 2013) (citing Avocent Huntsville Corp. v. Aten Int'l Co., Ltd., 552 F.3d 1324, 1329 (Fed. Ch. 2008).) Where there has been no evidentiary hearing, a plaintiff need only make a prima facie showing that defendants are subject to personal jurisdiction. Id Georgia's long-arm statute reaches those nonresidents whose conduct brings them within the coverage of one of the six subsections of O.C.G.A , only one of which is relevant here: A court of this state may exercise personal jurisdiction over any nonresident..., as to a cause of action arising from any ofthe acts... enumerated in this Code section, in the same manner as if he or she were a resident of this state, if in person or through an agent, he or she: (1) Transacts any business within this state[." 10

11 O.C.G.A (1). A party "transacts business" in Georgia within the meaning of the statute if (1) it purposefully does some act or consummates some transaction in the state, (2) the cause of action arises from or is connected with that transaction, and (3) the exercise of jurisdiction by a court does not offend traditional notions of faimess and substantial justice. Aero Toy Story, LLC v. Grieves, 279 Ga. App. 515, t2006); see also Diamond Crvstal Brands, Inc. V. Food Movers Infl, Inc., 593 F.3d 1249, 1260 n.ll (11th Ch. 2010). Although the Supreme Court of Georgia adopted a literal interpretation ofthe statute's "transacts any business" prong in Innovative Clinical & Consulting Services, LLC V. First National Bank of Ames, it nevertheless held that courts must construe this prong "as reaching only to the maximum extent permitted by procedural due process." 279 Ga. 672, 675 (2005) (intemal quotations and citation omitted). Under the Due Process Clause of the Fourteenth Amendment, a court may only exercise personal jurisdiction over a nonresident defendant if it has established "certain minimum contacts with [the forum] such that the maintenance of the suit does not offend traditional notions of fair play and substantial justice." Helicopteros Nacionales de Colombia, S.A. v. Hall, 466 U.S. 408, 414 (1984) (quoting Int'l Shoe Co. v. Washington, 326 U.S. 310, 316 (1945) (intemal quotation marks omitted)). Importantly, the defendant's contacts with the forum 11

12 state must be sufficient to give it fair warning that it could be haled into court there. Burger King Corp. v. Rudzewicz, 471 U.S. 462, 474 (1985). A defendant is said to have fair warning if it "has purposefully directed [its] activities at residents of the forum... and the litigation results from alleged injuries that arise out of or relate to those activities." Id. at 472 (internal quotation marks and citations omitted). If the court decides the defendant purposefully established minimum contacts with the forum state, it must then consider other factors to determine if the assertion of personal jurisdiction would comport with "fair play and substantial justice." Id at 476 (quoting Infl Shoe Co., 326 U.S. at 320). With respect to Cordelia, the Court finds that the facts outlined above are sufficient to satisfy Georgia's long-arm statute and federal due process concerns, as it sells to Georgia customers, the patent infringement case arises out of those sales, and it has a physical location and employees in Georgia. Thus, any argument Cordelia would have made that it is not subject to personal jurisdiction (and therefore venue) in Georgia would have been frivolous. With respect to Jimway, its only apparent cormection to Georgia is that it admits to selling lighting fixtures to customers in Georgia. However, Georgia courts have held that selling allegedly infringing products to customers in Georgia is enough to satisfy Georgia's long-arm statute and federal due process concems. 12

13 See Sarvint Techs., Inc. v. Omsignal Inc., 161 F. Supp. 3d 1250, (N.D. Ga. 2015) ("multiple courts have found personal jurisdiction over a patent defendant based on a single sale or minimal sales of the accused product, particularly when it is sold directly by the defendant into the forum.") (collecting cases). Accordingly, this Court finds that Jimway could not have reasonably objected to personal jurisdiction (and therefore venue), and any argument to that effect also would have been frivolous. 2. Whether TC Heartland Effected a Change in the Law Finding that Defendants could not have stated a venue defense under the existing case law at the time they fded the Motion to Dismiss, this Court now tums to whether TC Heartland effected a change in the law sufficient to excuse waiver. This Court is not the first to struggle with this question. To date, the Federal Circuit has been presented with the question three times, each in the form of a writ of mandamus from a district court's holding that venue had been waived. In each case, the Federal Circuit has declined to address the merits of the question, instead finding no abuse of discretion sufficient to satisfy the writ of mandamus standard for relief Without necessarily agreeing with the district court's conclusion that the Supreme Court's decision in TC Heartland did not effect a change in the law, we nonetheless find that the district court did not clearly abuse its discretion in finding that Hughes waived its right to move to 13

14 transfer for improper venue. Our ruling is based largely on the fact that Hughes filed its motion only after the TC Heartland case was decided by the Supreme Court and less than two months before trial. In re Hughes Network Svs., LLC, No , 2017 WL , at *1 (Fed. Ch. July 24, 2017). See also In re Nintendo of Am. Inc., No , 2017 WL , at =^ 1-2 (Fed. Ch. July 26, 2017) (declining to decide whether TC Heartland had effected a change in the law, holding that petitioner had not satisfied the exacting standards for a writ of mandamus and upholding district court decision finding waiver of venue defense had occurred where case was three months before trial); In re Sea Rav Boats, Inc., 695 F. App'x 543, 544 (Fed. Cir. 2017) (finding writ of mandamus standard not filled where venue objection was made two weeks before trial). However, unlike the posture of this case, each of these decisions involved cases where trial was imminent. Compare Ironburg Inventions Ltd. v. Valve Corp., No. 1:15-CV-4219-TWT, 2017 WL , at *3 (N.D. Ga. Aug. 3, 2017) (holding that "TC Heartland is an intervening change in the law. Valve did not waive the defense of improper venue by failing to assert it in its prior Motions to Dismiss."). In 1948, Congress passed 28 U.S.C. 1400; subpart (b) has not changed since its enactment. See 28 U.S.C. 1400(b) (1948). In 1957, the Supreme Court held that 28 U.S.C. 1400, not the general venue provision, 28 U.S.C. 1391, was 14

15 the exclusive venue provision to be used in patent infringement cases. Fourco Glass Co. V. Transmirra Prod. Corp., 353 U.S. 222, , (1957). In 1988, Congress amended the general venue statute to add that "[f]or purposes of venue under this chapter,... [a] corporation shall be deemed to reside in any district in that State within which its contacts would be sufficient to subject it to personal jurisdiction if that district were a separate State " 28 U.S.C (1988). Two years later, the Federal Circuit held that the 1988 amendments also applied to Section 1400(b) because of the language "[f]or purposes of venue under this chapter...." was meant to include Section 1400(b). VE Holding Corp, 917 F.2d at "Congress could readily have added 'except for section 1400(b),' if that exception, which we can presume was well known to the Congress, was intended to be maintained." Id. This was the legal landscape when Defendants fded their motion to dismiss. Cooper contends that the TC Heartland case was not an intervening change in the law because the case itself "merely affirmed legal precedent available to Defendants since at least 1957." PL's Br. at 5-6. Cooper points to the Supreme Court's language that: "Congress has not amended 1400(b) since Fourco, and neither party asks us to reconsider our holding in that case." Id at 5 (citing TC Heartland, 137 S. Ct. at 1520). But simply because Section 1400(b) was unaltered 15

16 does not mean that the statute could not have been later affected by the amendments to Section That was the question the Federal Circuit was asked to decide in VE Holding, and a question that could not have been answered by Fourco (which was decided thirty years before the 1988 amendments). Indeed, the VE Holding court viewed it as a matter of "first impression." VE Holding, 917 F.2d at VE Holding was binding precedent on all district courts, including this Court, until it was abrogated by the TC Heartland decision. And simply as a matter of common sense, if Fourco was "controlling law" as Cooper would have this Court believe, there would have been no need for the Supreme Court to consider the matter and issue its opinion in TC Heartland. Accordingly, this Court concludes that TC Heartland was an intervening change in the law. This case is still in its initial phase and trial is not imminent, therefore, the considerations weighed by the Federal Circuit in the recent mandamus cases are not applicable. B. Did Cooper Have to Affirmatively Plead Venue? Defendants contend that venue is inappropriate in this Court because Cooper failed to plead in the Amended Complaint that Defendants have committed acts of infringement and have a regular and established place of business in the Northern District of Georgia. Cooper responds that "[i]t is well-established law that 'a 16

17 plaintiff is not required to include any venue allegations [in its complaint] to avoid a dismissal under Rule 12(b)(3).'" PL's Br. at (citing Elite Flower Servs., Inc. V. Elite Floral & Produce, LLC, No. 13-CV UU, 2013 WL , at *5 (S.D. Fla. June 18, 2013)). The Court agrees with Cooper. Rule 8 requires that a plaintiffs complaint include only the following: "(1) a short and plain statement of the grounds for the court's jurisdiction... ; (2) a short and plain statement of the claim showing that the pleader is entitled to relief; and (3) a demand for the relief sought...." FED. R. CIV. P. 8. There is no requirement that venue be pled; rather, when determining venue, "pleadings need not be accepted as true, and facts outside the pleadings may be considered." Estate of Myhra v. Royal Caribbean Cruises, Ltd., 695 F.3d 1233, 1239 n.22 (11th Ch. 2012) (quoting Doe 1 v. AOL LLC, 552 F.3d 1077, 1081 (9th Cir. 2009)). C. Is Venue Is Proper in the Northern District of Georgia? Section 1400(b) places venue "where the defendant resides,^ or where the defendant has committed acts of infringement and has a regular and established place of business." Cooper contends that venue is proper under the statute's second test, as Defendants have committed acts of infringement and have a regular ^ Cooper concedes that if venue has not been waived, then venue is not proper under the first test as Defendants are incorporated in California, meaning they reside in California based upon TC Heartland. PL's Br. at

18 and established place of business in the Northern District of Georgia. PL's Br. at 9. Jimway and Cordelia admit in the amended answer that they sell lighting fixtures within the state of Georgia. Answer to Am. Compl. If^f Thus, the only dispute is over whether Jimway and Cordelia have a regular and established place of business in the Northern District of Georgia. 1. Jimway Cooper's brief contains detailed factual allegations purporting to establish that Cordelia has a regular and established place of business in the Northem District of Georgia. PL's Br. at However, neither Cooper's brief nor the Amended Complaint allege that Jimway has a regular and established place of business in the Northern District of Georgia. A plaintiff must establish that venue is proper as to each defendant. Lyttle, 2011 WL , at *2. While dismissal against one defendant "may not be an efficient resuh, the Supreme Court has specifically held that Section 1400(b) must be strictly followed... If the requirements for venue under Section 1400(b) are not met, the Court is constrained to dismiss the action, even where the result is inefficient or unfair." CVI/Beta Ventures, Inc. v. Tura LP, 905 F. Supp. 1171, 1201 (E.D.N.Y. 1995), judgment rev'd in part, vacated in part, 112 F.3d 1146 (Fed. Cir. 1997) (citing SchneU v. Eclmch & Sons, 365 U.S. 260, (1961)). 18

19 A district court cannot dispense witli the explicit patent venue requirement which Congress has created. Congress has not created an exception to 1400(b) in cases involving multiple defendants or conspiring defendants. I have no authority to create such an exception to the statute and will not do so now. Toombs, 768 F. Supp. at 65."^ Cooper fails to allege facts which show that Jimway has a regular and established place of business in the Northern District of Georgia; therefore, this Court lacks venue as to Jimway. 2. Cordelia The Federal Circuit recently issued an opinion explaining in detail the requirements of establishing a "regular and established place of business" for venue purposes. See In re Cray Inc., 871 F.3d 1355 (Fed. Cir. 2017). To determine whether a "regular and established place of business" exists, the Federal Circuit explained that: "(1) there must be a physical place in the district; (2) it must be a regular and established place of business; and (3) it must be the place of the defendant. If any statutory requirement is not satisfied, venue is improper under 1400(b)." Id. at Cordelia admits that the first prong is satisfied, as its location at 844 Livingston Court is a "physical presence." Reply in Supp. of Defs.' The court in Toombs also suggested that a plaintiff need not show venue is proper for each defendant where the defendant lacking venue was intertwined with or controlled by a defendant where proper venue was shown. Toombs, 768 F. Supp. at 64. Cooper has made no similar allegations here, but rather alleges "Defendant Jimway is affiliated or associated with Cordelia." Am. Comp. ^

20 Mot. to Dismiss for Improper Venue in Liglit of TC Heartland, or to Transfer Pursuant to 28 U.S.C. 1406(a) [Doc. 62] ("Defs.' Reply Br.") at 11. To determine the second prong, whether the business is "regular and established," the Federal Circuit has provided the following guidance. With respect to the word "regular," the court has explained: "S]poradic activity cannot create venue. A regular place of business is, obviously, a place where such business is carried on regularly and not merely temporarily, or for some special work or particular transaction. Indeed, the doing of a single act pertaining to a particular business will not be considered engaging in or carrying on the business; yet a series of such acts would be so considered. In re Cray Inc., 871F.3datl362 (citations omitted, alterations accepted). With respect to the word "established," the Federal Circuit explained that the place of business cannot be transient. Id. at For example, "[w]here the defendant's establishment in the district was just a location for a particular transaction, the necessary element of permanency is lacking." Id. (alterations accepted, citations and quotations omitted). "On the other hand, a five-year continuous presence in the district demonstrates that the business was established for purposes of venue." Id. (alterations accepted, citations and quotations omitted). In the case at hand, Cordelia has been present in Georgia continuously for at least seven years. Although the office is for the benefit of only one customer. The Home Depot, the 20

21 office is not temporary or establislied solely for a particular transaction. Accordingly, the Court finds the office is "regular and established." For the third prong, the place of business must be that of the defendant (and not an employee). Id. at Relevant considerations include whether the defendant owns or leases the place, or exercises other attributes of possession or control over the 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. 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 location. In the final analysis, the court must identify a physical place, of business, of the defendant. Id Applied to the facts of this case, the place of business, 844 Livingston Court, is a location of Cordelia. While Cordelia only leases the location, there is signage to show that it is a Cordelia location, and its answering service identifies the premises as a Cordelia location. Even though it may not serve as a general retail location, Cordelia actively engages in business from that location, albeit for one large customer. Accordingly, the Court finds Cordelia has a "regular and 21

22 established place of business" such that venue under 28 U.S.C. 1400(b) is appropriate. D. Whether Transfer is Appropriate Defendants ask the Court to transfer the action in accordance with 28 U.S.C to the United States District Court for the Central District of Califomia, where both Defendants are headquartered and venue is appropriate because both reside in Cahforniaunder 28 U.S.C. 1400(b). Defs.' Br. at Section 1406(a) provides "[t]he district court of a district in which is fded a case laying venue in the wrong division or district 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." As venue is lacking as to Jimway in the Northern District of Georgia, this is the appropriate resolution of the matter as to Jimway, but not as to Cordelia. There are two options for the Court with respect to Cordelia. One is for the Court to transfer to the Central District of California under 28 U.S.C. 1404(a), "for the convenience of parties and witnesses, in the interest of justice...." Another is for the Court to sever the action by each Defendant under Federal Rule of Civil Procedure 21, which would allow Cooper to proceed against Cordelia in the present action, but transfer the action against Jimway to the Central District of 22

23 California. The Court is unable to assess whether transfer or severance is appropriate without additional briefing from the parties addressing these issues. IV. STAY PENDING INTER PARTES REVIEW Finally, Defendants contend that a stay is proper because the case is in its early stages and PTAB's decision may narrow the issues between the parties. Defs.' Stay Br. at 6-9. Cooper agrees that a stay for the first phase is appropriate, but opposes a stay for the entirety of the IPR process. PL's Opp'n-in-Part to Defs.' Mot. to Stay Litig. Pending Patent Office Inter Partes Review of Validity of All Patents-in-Smt ("PL's Stay Br.") [Doc. 76] at 1. The Court finds that a stay is appropriate through at least PTAB's institution decision. Because the PTAB's institution decision in the IPRs is estimated to occur mid-february 2018, the parties shall provide a status report to the Court as to the status of the PTAB's decision on March 1, The Court will then reassess the appropriateness ofa continuance of the stay for the entirety of the IPR process. The entry of the stay shall not apply to the additional briefing with respect to the venue issue. V. CONCLUSION Accordingly, it is hereby ORDERED that the parties shall file supplemental briefs on the question of whether this Court should sever the action and transfer only the case against Jimway to the United States District Court for the Central 23

24 District of Califomia or transfer the entire action to the Central District of California for the convenience of parties and witnesses and in the interests of justice. Cooper shall fde its supplemental brief no later than November 27, 2017; Defendants shall have ten (10) days from the date of Cooper's filing to file its response, and Cooper shall have seven (7) days from the date of Defendants' filing to file any reply. It is further ORDERED that Defendants' Motion to Stay Litigation Pending Patent Office Inter Partes Review of Validity of All Patents-in-Suit [Doc. 68] is GRANTED until further order ofthe Court. With the exception ofthe supplemental briefing ordered herein and the Court's decision as to transfer, all other proceedings in this case are hereby STAYED. It is further ORDERED that the parties file a joint status report no later than March 1, 2018, advising the Court as to the status of the PTAB's institution decision. IT IS SO ORDERED this 13th day of November, MARK H. COHEN United States District Judge 24