Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 1 of 22 PageID 2347 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. APPLE INC., et al., Case No. 3:15-cv-1477 Case Dispositive Motion Defendants. APPLE S MOTION TO DISMISS FOR IMPROPER VENUE July 27, 2017 Brian E. Ferguson (pro hac vice) Trial Counsel brian.ferguson@weil.com Robert T. Vlasis III (pro hac vice) robert.vlasis@weil.com 1300 Eye Street, N.W., Suite 900 Washington, D.C. 20005 Phone: (202) 682-7000 Fax: (202) 857-0940 Edward Soto Florida Bar Number: 265144 edward.soto@weil.com 1395 Brickell Ave, Suite 1200 Miami, FL 33131 Phone: (305) 577-3177 Fax: (305) 374-7159 Counsel for Defendant Apple Inc.
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 2 of 22 PageID 2348 TABLE OF CONTENTS I. INTRODUCTION...2 II. PROCEDURAL HISTORY...2 III. RELEVANT FACTS...3 IV. LEGAL STANDARDS...4 V. ARGUMENT...8 A. ParkerVision Failed to Assert Venue Under the Proper Test...8 B. Apple Does Not Reside in Florida...8 C. Apple Does Not Maintain a Regular and Established Place of Business in this District...9 1. Apple s Operations in this District Are Not a Substantial Part of Its Ordinary Business...9 2. Litigating in this District Would Conflict with Congressional Intent...13 D. Qualcomm s Motion to Transfer Venue...15 VI. CONCLUSION...15 i
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 3 of 22 PageID 2349 Cases TABLE OF AUTHORITIES Page(s) Action Commun. Sys., Inc. v. Datapoint Corp., 426 F.Supp. 973 (N.D. Tex. 1977)...6, 9, 13, 14 Atl. Marine Const. Co. v. U.S. Dist. Court for W. Dist. of Texas, 134 S. Ct. 568 (2013)...4 Bovie Med. Corp. v. Livneh, 2010 U.S. Dist. LEXIS 134490 (M.D. Fla. Dec. 10, 2010)...5 Bradford Novelty Co. v. Manheim, 156 F. Supp. 489 (S.D.N.Y. 1957)...6, 9 Candas v. Agnini, 14 F. Supp. 21...10, 11 Clopay Corp. v. Newell Cos., Inc., 527 F. Supp. 733 (D. Del. 1981)...11 In re Cordis Corp., 769 F.2d 733 (Fed. Cir. 1985)...6, 12 Dual Mfg. & Eng g, Inc. v. Burris Indus., Inc., 531 F.2d 1382 (7th Cir. 1976)...7 Eidson v. Arenas, 837 F. Supp. 1158 (M.D. Fla. 1993) ( Defendants Rule 12 Motion tolled Defendants time to file an answer until issuance of an Order by this Court. )...1 Fourco Glass Co. v. Transmirra Prod. Corp., 353 U.S. 222 (1957)...5, 8 Gaddis v. Calgon Corp., 449 F.2d 1318 (5th Cir. 1971)...6 Haight v. Viking Pump Co. of Delaware, 29 F. Supp. 575 (E.D. Wis. 1939)...11 Harper v. VA Dept. of Taxation, 509 U.S. 86 (1994)...6 ii
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 4 of 22 PageID 2350 Hsin Ten Enter. USA, Inc. v. Clark Enter., 138 F. Supp.2d 449 (S.D.N.Y. 2000)...6, 12 Kabb, Inc. v. Sutera, No. 91-3551, 1992 WL 245546 (N.D. Tex. Sept. 4, 1992)...7 L.D. Schreiber Cheese Co. v. Clearfield Cheese Co., 495 F. Supp. 313 (W.D. Pa. 1980)...9 Logantree LP v. Garmin Int l Inc., No. SA-17-CA-0098-FB (W.D. Tex. June 22, 2017)...12 Marquez v. Cable One, Inc., 463 F.3d 1118 (10th Cir. 2006)...1 Mastantuono v. Jacobsen Mfg. Co., 184 F. Supp. 178 (S.D.N.Y. 1960)...11 Phillips v. Baker, 121 F.2d 752 (9th Cir. 1941)...11 Ruth v. Eagle-Picher Co., 225 F.2d 572 (10th Cir. 1955)...7, 13, 14 Steinberg v. Luedtke Trucking, Inc., 2016 U.S. Dist. LEXIS 135234 (M.D. Fla. Sept. 30, 2016)...5 Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561, 62 S. Ct. 780, 86 L. Ed. 1026...11 TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 2017 U.S. LEXIS 3213 (2017)...2, 5, 9, 11 VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990)...5, 9 Wilson v. McKinney Mfg. Co., 59 F.2d 332 (9th Cir. 1932)...9, 11 Zimmers v. Dodge Bros., 21 F.2d 152 (N.D. Ill. 1927)...11, 12 iii
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 5 of 22 PageID 2351 Statutes 28 U.S.C. 1391(c)...5, 6 28 U.S.C. 1400(b)... passim 28 U.S.C. 1404...2, 15 28 U.S.C. 1659...2 Other Authorities Fed. R. Civ. P. 12(a)(4)(A)...1 Federal Rule of Civil Procedure 12(b)(3)...1, 4, 5 Local Rule 3.01(g)...1 Rule 12(b)(6)...1 iv
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 6 of 22 PageID 2352 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA JACKSONVILLE DIVISION PARKERVISION, INC., Plaintiff, v. APPLE INC., et al., Case No. 3:15-cv-1477 Case Dispositive Motion Defendants. APPLE S MOTION TO DISMISS FOR IMPROPER VENUE Pursuant to Federal Rule of Civil Procedure 12(b)(3), defendant Apple Inc. files this motion to dismiss this case for improper venue. 1 Pursuant to Local Rule 3.01(g), Apple has conferred with counsel for ParkerVision in a good faith effort to resolve the issues raised by this motion. Apple and ParkerVision were unable to agree on the resolution of this motion. 1 The Case Management and Scheduling Order (D.I. 55) states that the deadline to file [r]esponses to [the] Amended Complaint, including FRCP 12 motions and motions to transfer venue is July 27, 2017. The law is clear that the filing of a motion under Rule 12, including a motion to dismiss, tolls the applicable period for filing a responsive pleading until the Court has had an opportunity to rule on the motion. Fed. R. Civ. P. 12(a)(4)(A) ( Unless the court sets a different time, serving a motion under this rule alters these periods as follows: (A) if the court denies the motion or postpones its disposition until trial, the responsive pleading must be served within 14 days after notice of the court s action[.] ); see Marquez v. Cable One, Inc., 463 F.3d 1118, 1120 (10th Cir. 2006) ( [Defendant] filed its motion as a Rule 12(b)(6) dismissal motion,... which clearly does toll the time to answer. ); Eidson v. Arenas, 837 F. Supp. 1158, 1160 (M.D. Fla. 1993) ( Defendants Rule 12 Motion tolled Defendants time to file an answer until issuance of an Order by this Court. ). Accordingly, because Apple has filed the instant motion to dismiss under Rule 12, it is not filing an answer to the amended complaint today. Apple will file an answer within the time frame set by FRCP 12(a)(4)(A) if the Court denies this motion to dismiss. 1
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 7 of 22 PageID 2353 I. INTRODUCTION On May 22, 2017, the Supreme Court held in TC Heartland LLC v. Kraft Foods Grp. Brands LLC that patent infringement actions may be brought only in (1) venue in the defendant s state of incorporation; or (2) any venue in which the defendant has a regular and established place of business. See 137 S. Ct. 1514, 2017 U.S. LEXIS 3213 (2017). ParkerVision failed to assert venue under this standard, and its amended complaint should be dismissed for this reason alone. Venue is also improper in this District under both prongs of TC Heartland: Apple is neither incorporated in Florida, nor does it have, within the meaning of the statute, a regular and established place of business anywhere in the district. Accordingly, this Court should dismiss ParkerVision s claims against Apple. In the alternative, Apple does not oppose defendant Qualcomm s motion to transfer venue under 28 U.S.C. 1404, filed concurrently, which requests that this Court transfer this action to the Southern District of California. II. PROCEDURAL HISTORY ParkerVision filed its complaint against the defendants in this case on December 14, 2015, and its amended complaint on December 16, 2015. See Complaint [D.I. 1]; Amended Complaint [D.I. 3]. Pursuant to 28 U.S.C. 1659, on February 12, 2016, the Court stayed this action pending resolution of a parallel ITC proceeding involving the same patents and parties here. See D.I. 41. On March 9, 2017, after ParkerVision had dropped three of the four asserted patents, the judge in the ITC matter issued an order finding that ParkerVision had failed to adequately preserve its infringement contentions for the fourth remaining patent, and accordingly, ParkerVision withdrew its complaint in 2
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 8 of 22 PageID 2354 its entirety. This Court subsequently lifted the stay on May 26, 2017, following the ITC s final termination of the parallel investigation. See D.I. 50. III. RELEVANT FACTS Apple is a California corporation and was founded in California in 1976. See Exhibit A [Decl. of M. Jaynes] at 3. Since its founding, Apple has maintained its principal place of business and corporate headquarters in Cupertino, California. Id. Apple s management, research and development, and marketing activities are primarily located in or near Cupertino, including surrounding cities such as Sunnyvale. Id. at 4. The primary operation, marketing, and finance decisions for Apple also occur in or near Cupertino, and Apple business records related to product revenue are located there. Id. As of July 2017, Apple had more than 28,000 employees who work in or near its Cupertino headquarters. Id. Apple operates approximately 270 retail stores in the United States, more than 50 of which are in California. Id. at 9. In addition to Apple s retail stores, Apple has hundreds of facilities and corporate offices in California. Id. The accused technology in this case resides within the RF transceiver chips, supplied by defendant Qualcomm Incorporated ( Qualcomm ) and integrated into certain of Apple s iphones and cellular ipads. See, e.g., id. at 5. The Apple employees who design and develop the radio platform that allows the RF transceiver chip to convert a baseband signal used by the accused iphones and cellular ipads into a radio frequency for communications with the cellular network, and vice versa ( Accused Technology ), are based in or around Cupertino, California. Id. at 6. Moreover, Qualcomm s headquarters 3
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 9 of 22 PageID 2355 are located in San Diego, California, and Apple s primary contacts with Qualcomm are located in or around the Bay Area and in San Diego. Id. at 7. In contrast to its operations in California, Apple s operations in this District consist of 9 retail stores and 2 non-retail leased facilities. Id. at 8. Apple has no other facilities or corporate offices in this District. Id. Apple s retail stores in this District comprise less than 3.5% of Apple s approximately 270 retail stores nationwide, and this percentage is significantly smaller when considering the total number of Apple retail stores around the world. Id. at 10. Apple s non-retail facilities in this District comprise less than 1% of Apple s facilities nationwide, and this percentage is significantly smaller when considering the total number of Apple s non-retail facilities around the world. Id. at 11. No Apple employees in this District or in the entire state of Florida are or were involved in the design and development of the Accused Technology, and no Apple employee in this District will serve as a witness in this case. Id. at 12. Apple does not manufacture iphones or cellular ipads in this District, and no documents relevant to this case reside in this District. Id. To the extent that Apple s products are sold or used in this District, they are and were sold and used nationwide, and are not used in any manner or degree differently here than they are used elsewhere. Id. IV. LEGAL STANDARDS Under Fed. R. Civ. P. 12(b)(3) an action may be dismissed when venue is wrong or improper based on the applicable federal venue rules. Atl. Marine Const. Co. v. U.S. Dist. Court for W. Dist. of Texas, 134 S. Ct. 568, 577 (2013). When 4
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 10 of 22 PageID 2356 challenged by a motion to dismiss for on [sic] improper venue pursuant to Federal Rule of Civil Procedure 12(b)(3), the plaintiff has the burden of showing that venue is proper in its chosen forum. Steinberg v. Luedtke Trucking, Inc., 2016 U.S. Dist. LEXIS 135234 at *4 (M.D. Fla. Sept. 30, 2016). In considering a motion to dismiss for improper venue, the court must accept all allegations of the complaint as true, unless contradicted by the defendants affidavits, and when an allegation is so challenged, the court may examine facts outside of the complaint to determine whether venue is proper. Bovie Med. Corp. v. Livneh, 2010 U.S. Dist. LEXIS 134490 at *6 (M.D. Fla. Dec. 10, 2010). The court must draw all reasonable inferences and resolve all factual conflicts in favor of the plaintiff. Id. The patent venue statute, 28 U.S.C. 1400(b), provides that [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. Under the first prong, the Federal Circuit had long held that a plaintiff could bring a patent infringement action anywhere the defendant was subject to personal jurisdiction pursuant to 28 U.S.C. 1391(c). See VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574 (1990). But the Supreme Court recently abrogated this standard, holding that a corporation resides only in the state in which it is incorporated, thereby restoring its 1957 holding in Fourco Glass. See TC Heartland, 137 S. Ct. at 1520; Fourco Glass Co. v. Transmirra Prod. Corp., 353 U.S. 222, 226 (1957). Thus, under the first prong, venue is only proper in a district located in the state where the defendant is incorporated. 5
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 11 of 22 PageID 2357 The TC Heartland decision applies retroactively to all currently pending patent cases. See Harper v. VA Dept. of Taxation, 509 U.S. 86, 97 (1994) ( When [the Supreme Court] applies a rule of federal law to the parties before it, that rule is the controlling interpretation of federal law and must be given full retroactive effect in all cases still open on direct review and as to all events, regardless of whether such events predate or postdate our announcement of the rule. ). This means that any patent infringement action pending in a district where venue is improper under TC Heartland should be dismissed. Under the second prong of 1400(b), a regular and established place of business requires more than the minimum contacts necessary for establishing personal jurisdiction or for satisfying the doing business standard of the general venue provision, 28 U.S.C. 1391(c). See, e.g., Action Commun. Sys., Inc. v. Datapoint Corp., 426 F.Supp. 973, 975 (N.D. Tex. 1977) (discussing Bradford Novelty Co. v. Manheim, 156 F. Supp. 489, 491 (S.D.N.Y. 1957)). [T]he appropriate inquiry is whether the corporate defendant does its business in that district through a permanent and continuous presence there and not... whether it has a fixed physical presence in the sense of a formal office or store. In re Cordis Corp., 769 F.2d 733, 737 (Fed. Cir. 1985). Moreover, whether a defendant is authorized to do business in [the state] is not controlling and will not satisfy the [ 1400(b)] requirement. Gaddis v. Calgon Corp., 449 F.2d 1318, 1320 (5th Cir. 1971) (internal citation omitted). Nor do websites accessible in the district provide venue under the patent infringement statute. See Hsin Ten Enter. USA, Inc. v. Clark Enter., 138 F. Supp.2d 449, 459 (S.D.N.Y. 2000) (finding venue improper in Southern District of New York even though defendant s website 6
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 12 of 22 PageID 2358 supported personal jurisdiction there). Finally, the fact that defendants sell products to distributors in a district will not establish venue there: It is well-settled that the mere presence of independent sales representatives does not constitute a regular and established place of business for purposes of Section 1400(b). Kabb, Inc. v. Sutera, No. 91-3551, 1992 WL 245546, at *2 (N.D. Tex. Sept. 4, 1992); see also Dual Mfg. & Eng g, Inc. v. Burris Indus., Inc., 531 F.2d 1382, 1387 (7th Cir. 1976) (noting that even exclusive distributorship and exclusive, independent distributors will not create venue under 1400(b)). In enacting the second prong of 1400(b), Congress recognized the complex nature of patent cases and the importance of hearing such cases in districts where the pertinent witnesses and evidence resides, in order to ensure the court s access to as much technical information as possible: The patent venue statute, as construed in Stonite Products Co. v. Melvin Lloyd Co., 315 U.S. 561, 62 S. Ct. 780, 86 L. Ed. 1026, reflected a sound policy of long standing. It was based on considerations of practicality and convenience in such litigation. A patent infringement action involves a peculiar combination of science or technology and law. In the ascertainment of the pertinent technical facts, it is important that the trial judge have first-hand visual and audible knowledge of the conditions, the environment and the art itself and the testimony of the most competent witnesses. Practicality and convenience are best served when the case is prosecuted where the alleged acts of infringement occurred and the defendant has a regular and established place of business. An intention on the part of Congress to depart from that policy should not be lightly inferred. Ruth v. Eagle-Picher Co., 225 F.2d 572, 577 (10th Cir. 1955) (affirming dismissal from district where defendant was neither incorporated nor had committed acts of 7
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 13 of 22 PageID 2359 infringement). Thus, in patent litigations, the location where the defendants and their witnesses reside must take priority over the plaintiff s chosen forum. V. ARGUMENT A. ParkerVision Failed to Assert Venue Under the Proper Test As a threshold matter, ParkerVision s complaint should be dismissed based on ParkerVision s failure to adequately plead venue. ParkerVision s sole allegations as to venue in its amended complaint are as follows: Venue in this District is proper under 28 U.S.C. 1400(b) and 1391(b) and (c), because Defendants are subject to personal jurisdiction in this District and have committed acts of infringement in this District. Defendants make, use, and/or sell infringing products within this District, have continuing presence within the District, and have the requisite minimum contacts with the District such that this venue is a fair and reasonable one. Upon information and belief, Defendants have transacted and, at the time of the filing of this Complaint, are continuing to transact business within the District. See Amended Complaint [D.I. 3] at 19. ParkerVision s amended complaint failed to allege either that Apple was incorporated in Florida, or that Apple has a regular and established place of business in this District. Nor has ParkerVision moved to amend its complaint to correct this deficiency. Apple s motion should be granted for this reason alone. B. Apple Does Not Reside in Florida Even had ParkerVision pled the correct standard, its amended complaint must still be dismissed. Under the first prong of Section 1400(b), Apple does not reside in this District. Indeed, in TC Heartland, the Supreme Court reaffirmed its prior holding in Fourco that the word resides refers only to a defendant corporation s state of 8
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 14 of 22 PageID 2360 incorporation. TC Heartland, 137 S. Ct. at 1520. Apple is incorporated in California, and thus, ParkerVision cannot rely upon Apple s place of residence to establish venue in this District. See Exhibit A [Decl. of M. Jaynes] at 3. C. Apple Does Not Maintain a Regular and Established Place of Business in this District 1. Apple s Operations in this District Are Not a Substantial Part of Its Ordinary Business Under the second prong of 1400(b), Apple does not have a regular and established place of business in this District. Although this prong has infrequently been invoked in recent years due to the Federal Circuit s erroneous ruling in VE Holding, prior courts have held that a regular and established place of business requires more than simply doing business in a district but rather that the corporation is engaged in carrying on in a continuous manner a substantial part of its ordinary business. See, e.g., Wilson v. McKinney Mfg. Co., 59 F.2d 332, 334-35 (9th Cir. 1932) (quoting Zimmers v. Dodge Bros., 21 F.2d 152, 156 (N.D. Ill. 1927)) (emphasis added); see also Action Commun. Sys., Inc. v. Datapoint Corp., 426 F.Supp. at 975 (explaining that a regular and established place of business requires more than the minimum contacts necessary for establishing personal jurisdiction or for satisfying the doing business standard of the general venue provision); Bradford Novelty Co. v. Manheim, 156 F. Supp. 489, 491 (S.D.N.Y. 1957); L.D. Schreiber Cheese Co. v. Clearfield Cheese Co., 495 F. Supp. 313, 317 (W.D. Pa. 1980) ( A regular and established place of business under 28 U.S.C. 1400(b) has been described as a place where a party is engaged in carrying on in continuous manner a substantial part of its ordinary business. In other words 28 9
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 15 of 22 PageID 2361 U.S.C. 1400(b) requires a significant on-going corporate presence by a defendant in the district where venue is alleged to lie. ). Here, Apple s operations in this District are neither significant nor substantial in the context of Apple s ordinary business. Nor are they in any way related to the Accused Technology at issue in this case. Indeed, Apple s operations in this District are a small fraction of Apple s total business in the United States, and are especially small compared to Apple s operations in its home district, the Northern District of California. See Candas v. Agnini, 14 F. Supp. 21, 22 (finding a few sales in the district not enough to support the proposition that... the defendants have conducted a substantial part of their business in New York ). Apple owns or leases hundreds of buildings in California, and only two in this District. Exhibit A [Decl. of M. Jaynes] at 8-9. Management activity, including product design, marketing, sales, and finance decisions, occurs in Cupertino, California, not in this District. Id. at 4. And none of Apple s employees in this district have anything to do with the Accused Technology in this case. Id. at 6, 12. Moreover, Apple s activities in this District are small not only in the quantitative sense, but also when considering the nature and character of the operations here. For example, Apple s operations in this District consist of retail sales and two leased facilities unrelated to any technology in this case any sales and usage of the accused products in this District is no different than it is elsewhere throughout the United States. Id. at 8, 12. Apple does not manufacture any products here or design or develop any features that allegedly infringe the asserted patents here. Id. at 6, 12. In total, Apple s operations in this District comprise less than 1% of its nationwide operations in terms of leased 10
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 16 of 22 PageID 2362 facilities, and less than 3.5% in terms of retail stores. The heart of Apple s business is in Cupertino, California, not here because Apple does not maintain any substantial operations here, venue is improper. ParkerVision may argue that Apple s operations here regardless of their character are sufficient to confer venue. Not so. Indeed, as with websites, courts have recognized that mere maintenance of an office in a district is insufficient for proper venue. In Zimmers, for example, the court explained: Maintenance of an office in the district of suit does not necessarily constitute doing business ; nor, on the other hand, does failure to maintain such office mean that the corporation is not doing business in the district of suit.... The corporation must be engaged in carrying on in a continuous manner a substantial part of its ordinary business, to carry on which it was chartered. 21 F.2d at 156 2 ; see also Phillips v. Baker, 121 F.2d 752 (9th Cir. 1941) (quoting Zimmers favorably); Candas, 14 F. Supp. at 22 (following Zimmers); Haight v. Viking Pump Co. of Delaware, 29 F. Supp. 575, 577-78 (E.D. Wis. 1939) (following Zimmers and Wilson and finding no substantial part of defendant s ordinary business was conducted in Wisconsin ); Mastantuono v. Jacobsen Mfg. Co., 184 F. Supp. 178, 180 (S.D.N.Y. 1960) (following Phillips); Clopay Corp. v. Newell Cos., Inc., 527 F. Supp. 733, 740 (D. Del. 1981) (describing substantial part of its ordinary business test as the 2 Zimmers and other earlier cases speak in terms of jurisdiction instead of venue because the predecessor to 1400(b) used that term: In suits brought for the infringement of letters patent the district courts of the United States shall have jurisdiction, in law or in equity, in the district of which the defendant is an inhabitant, or in any district in which the defendant, whether a person, partnership, or corporation, shall have committed acts of infringement and have a regular and established place of business. 48, 36 Stat. 1100. TC Heartland confirms that this language, addressed in Stonite Products Co. v. Melvin Lloyd Co., 62 S.Ct. 780 (1942), was the predecessor of 1400(b) and part of the development of patent venue law. TC Heartland, 2017 U.S. LEXIS 3213 at *9-*10; Stonite, 62 S. Ct. at 562 n.1 (quoting Section 48 of the Judicial Code). Thus, these cases interpreting regular and established place of business were conducting the same venue inquiry that is before this Court. 11
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 17 of 22 PageID 2363 most general standard for venue under 1400(b)). The Zimmers court went on to note that if the district representative in the case at bar should be removed from this district, the established business of the defendant would not be appreciably or substantially affected. Id. at 157. The holding in Zimmers applies equally here: If Apple s operations in this District were removed, those operations would not impact the design or development of the Accused Technology in this case. Exhibit A [Decl. of M. Jaynes] at 13. Similarly, in In re Cordis Corp., the Federal Circuit consistent with Zimmers held that the existence of a fixed physical presence was not determinative of proper venue. 769 F.2d at 737 (Fed. Cir. 1985). Instead, the appropriate inquiry is whether the corporate defendant does its business in that district through a permanent and continuous presence there. Id. (finding that venue was proper, but based on a highly deferential standard because the issue came to the court on a petition for mandamus). Thus, the mere presence of Apple stores and leased facilities in this District, unrelated as they are to the accused technology in this case, is not issue-dispositive under Zimmers, Cordis, and similar cases. Instead, such operations are akin to maintenance of a website that facilitates sales in the district also insufficient to confer venue. See, e.g., Logantree LP v. Garmin Int l Inc., No. SA-17-CA-0098-FB (W.D. Tex. June 22, 2017) (finding defendant s website listing distributors in the district insufficient to confer venue); Hsin Ten Enter. USA, Inc. v. Clark Enter., 138 F.Supp.2d 449, 459 (S.D.N.Y. 2000) (finding venue improper in district pursuant to 1400(b) even though defendant s website supported personal jurisdiction there). Indeed, online sales are insufficient for proper 12
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 18 of 22 PageID 2364 venue, and that principle logically extends to retail stores as well. Taken together, venue here is therefore improper. 2. Litigating in this District Would Conflict with Congressional Intent As indicated above, given the complex nature of patent cases, Congress intended them to be heard in the district where the pertinent witnesses and evidence reside. Ruth, 225 F.2d at 577 (affirming dismissal from district where defendant was neither incorporated nor had committed acts of infringement). Courts have explained that the patent-specific venue considerations are tied to the unique considerations of practicality and convenience in patent litigation. Id. As the court in Action Communication Systems, Inc. v. Datapoint Corp. explained: The patent venue statute reflects Congressional realization of the technical and intricate nature of patent litigation. In most such cases there is a mass of technical data produced at trial. Bradford Novelty Co. v. Manheim, 156 F.Supp. 489, 491 (S.D.N.Y. 1957). Congress sought to restrict venue in these actions to those places where that mass of technical data is located. One obvious place is the principal place of business. Another is the site of Defendant s regular and established place of business where acts of infringement have occurred. 426 F. Supp. at 974. The court found it just as obvious... that this mass of data and witnesses are not available in every place where the Defendant does business. Id. These cases support a holding that, when a defendant maintains operations in a district, whether such operations are substantial requires a nexus between the defendant s activities in the district and the technology accused of infringement in the case. Without such a nexus, none of the defendant s activities in the district are relevant to the litigation, and thus, the 13
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 19 of 22 PageID 2365 Congressional intent of the venue statute is not served if venue is found to lie in such a district. Here, no Apple employee or facility in Florida has anything to do with the technology asserted in this case. Exhibit A [Decl. of M. Jaynes] at 12. The ParkerVision asserted patents 3 generally relate to a method of converting radio frequency signals to baseband signals in the context of cellular phone and tablet wireless communications. Apple does not manufacture iphones or cellular ipads here, and no Apple employee in this District or in the entire state of Florida are or were involved in the design and development of the Accused Technology. Id. Unsurprisingly, therefore, no Apple employee in this District will be a witness in this case, nor are any relevant documents located here. Id. The key witnesses and documents in this case regarding the relevant functionality are those of Qualcomm, which also resides in California. Id. at 5-7. The above facts simply do not support venue here. See Action Commun. Sys., 426 F. Supp. at 975 ( Congress sought to restrict venue in [patent] actions to those places where that mass of technical data is located. ). Indeed, because none of the evidence relevant to the alleged infringement is located in this District, proper venue lies elsewhere. See Ruth, 225 F.2d at 577 (explaining that due to the complex nature of patent cases, venue is proper where convenient to the technical witnesses and evidence). Taken together, Apple cannot be said to be carrying on... a substantial part of its ordinary business in this District. Apple s operations here do not constitute a regular 3 ParkerVision initially asserted four patents but has since informed the defendants and the Court that it will be asserting only one patent. D.I. 54. 14
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 20 of 22 PageID 2366 and established place of business in this District with respect to 1400(b), and venue is therefore improper. D. Qualcomm s Motion to Transfer Venue Defendant Qualcomm has concurrently filed a motion to transfer venue under 28 U.S.C. 1404 to the Southern District of California. Because the accused technology is solely found in Qualcomm chips, and those chips are designed in Qualcomm s facilities located in San Diego, California, it is logical that the case proceed there. Should the Court deny Apple s motion to dismiss, Apple does not oppose transfer of this case to the Southern District of California. VI. CONCLUSION ParkerVision s complaint as to Apple should be dismissed for improper venue. In the alternative, Apple does not oppose Qualcomm s motion to transfer this case to the Southern District of California. Dated: July 27, 2017 WEIL, GOTSHAL & MANGES LLP By: /s/ Brian E. Ferguson Brian E. Ferguson (pro hac vice) Trial Counsel brian.ferguson@weil.com Robert T. Vlasis III (pro hac vice) Robert.vlasis@weil.com 1300 Eye Street, N.W., Suite 900 Washington, D.C. 20005 Phone: (202) 682-7000 Fax: (202) 857-0940 15
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 21 of 22 PageID 2367 Edward Soto Florida Bar Number: 265144 edward.soto@weil.com 1395 Brickell Ave, Suite 1200 Miami, FL 33131 Phone: (305) 577-3177 Fax: (305) 374-7159 Counsel for Defendant Apple Inc. 16
Case 3:15-cv-01477-BJD-JRK Document 58 Filed 07/27/17 Page 22 of 22 PageID 2368 Certificate of Service I certify that on July 27, 2017, I electronically filed the foregoing with the Clerk of the Court by using the CM/ECF system. I further certify that I mailed the foregoing document and the notice of electronic filing by first-class mail to the following non- CM/ECF participants: None. By: /s/ Brian E. Ferguson Brian E. Ferguson (pro hac vice) brian.ferguson@weil.com Counsel for Defendant Apple Inc. 17
Case 3:15-cv-01477-BJD-JRK Document 58-1 Filed 07/27/17 Page 1 of 4 PageID 2369 Exhibit A Decl. of M. Jaynes
Case 3:15-cv-01477-BJD-JRK Document 58-1 Filed 07/27/17 Page 2 of 4 PageID 2370
Case 3:15-cv-01477-BJD-JRK Document 58-1 Filed 07/27/17 Page 3 of 4 PageID 2371
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