Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 1 of 10 PageID #: 921
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
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`AGIS SOFTWARE DEVELOPMENT LLC,
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`Plaintiff
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`v.
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`HMD GLOBAL OY and
`HMD AMERICA, INC.
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`Defendants.
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`Case No. 2:22-cv-00443-JRG
`(Lead Case)
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`MOTION TO DISMISS THE CASE
`AGAINST HMD AMERICA INC. FOR IMPROPER VENUE
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 2 of 10 PageID #: 922
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`TABLE OF CONTENTS
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`INTRODUCTION ................................................................................................................. 1
`I.
`II. STATEMENT OF DISPOSITIVE ISSUE TO BE DECIDED (L.R. CV-7(A)(1)) .......... 1
`III. LEGAL STANDARD ............................................................................................................ 1
`IV. ARGUMENT ......................................................................................................................... 3
`V. CONCLUSION ...................................................................................................................... 6
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`ii
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 3 of 10 PageID #: 923
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`CASES
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`TABLE OF AUTHORITIES
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`Blue Spike, LLC v. Caterpillar, Inc.,
`2017 WL 4129321 (E.D. Tex. Sept. 19, 2017) ..........................................................................2
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`Blue Spike, LLC v. Nook Digital, LLC,
`2017 WL 3263871 (E.D. Tex. July 28, 2017) ...........................................................................2
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`In re Cray Inc.,
`871 F.3d 1355 (Fed. Cir. 2017)..........................................................................................2, 3, 4
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`In re Google LLC,
`949 F.3d 1338 (Fed. Cir. 2020)..................................................................................................3
`
`In re Hoffmann-La Roche Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)..................................................................................................5
`
`In re ZTE (USA) Inc.,
`890 F.3d 1008 (Fed. Cir. 2018)..................................................................................................2
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`Magnacoustics, Inc. v. Resonance Tech. Co.,
`No. 97–1247, 1997 WL 592863 (Fed. Cir. Sept. 25, 1997).......................................................2
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`Moran v. Smith,
`2016 WL 4033268 (W.D. Tex. July 27, 2016) ..........................................................................5
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`TC Heartland LLC v. Kraft Foods Group Brands LLC,
`137 S. Ct. 1514 (2017) .......................................................................................................1, 2, 3
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`Uniloc 2017 LLC v. Riot Games, Inc.,
`2020 WL 1158611 (E.D. Tex. Mar. 10, 2020) ..........................................................................2
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`Westech Aerosol Corp. v. 3M Co.,
`927 F.3d 1378 (Fed. Cir. 2019)..................................................................................................2
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`STATUTES
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`28 U.S.C. § 1400(b) .............................................................................................................1, 2, 3, 6
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`28 U.S.C. § 1406(a) .............................................................................................................1, 2, 5, 6
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`OTHER AUTHORITIES
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`Rule 12(b)(3) ................................................................................................................................1, 6
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`U.S. Patent 8,213,970 ......................................................................................................................5
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`iii
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 4 of 10 PageID #: 924
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`I.
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`INTRODUCTION
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`Plaintiff AGIS Software Development LLC (“AGIS”) filed this case against Defendants
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`HMD America, Inc. (“HMD America”) and HMD Global Oy (collectively, “HMD”) on November
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`18, 2022.1 HMD moves this Court under Rule 12(b)(3) to dismiss the case against HMD America
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`for improper venue or transfer that case to the Southern District of Florida.2
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`HMD America is incorporated in Florida, so it does not “reside” in this district under 28
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`U.S.C. § 1400(b). HMD America also does not maintain a regular and established place of business
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`in this District under § 1400(b), because it is a Florida company with its headquarters in Miami
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`that has no physical offices or facilities in this District. HMD America has only a handful of remote
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`employees working from home in Texas, none relevant to the venue analysis. AGIS pleads no
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`legally relevant facts in its venue allegations, instead stating in a conclusory way that Defendants
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`“have regular and established places of business in this Judicial District,” without supporting facts.
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`AGIS’s case against HMD America cannot be maintained in the Eastern District of Texas, so this
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`case should be dismissed under Rule 12(b)(3) and 28 U.S.C. § 1406(a). Alternatively, the case
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`should be transferred to the Southern District of Florida, where HMD America resides.
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`II.
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`STATEMENT OF DISPOSITIVE ISSUE TO BE DECIDED (L.R. CV-7(A)(1))
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`Should this case be dismissed or transferred under Federal Rule of Civil Procedure 12(b)(3)
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`and 28 U.S.C. § 1406(a) for improper venue over HMD America, Inc. in this District?
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`III.
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`LEGAL STANDARD
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`28 U.S.C. § 1400(b) is the “sole and exclusive provision controlling venue in patent
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`infringement actions.” TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514,
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`1 AGIS also named a third entity in their complaint, “HMD Global.” This entity does not exist.
`2 HMD and AGIS have jointly moved to stay all deadlines and have notified the Court of a
`settlement in principle that resolves all claims against HMD. Dkt. 39. HMD nevertheless files
`this response to the Complaint because the Court has yet to enter an order on the parties’ motion.
`1
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`1519 (2017) (quoting Fourco Glass Co. v. Transmirra Prods. Corp., 353 U.S. 222, 229 (1957));
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`see also Uniloc 2017 LLC v. Riot Games, Inc., 2020 WL 1158611 at *2 (E.D. Tex. Mar. 10, 2020).
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`Section 1400(b) provides that venue is proper only (1) “where the defendant resides” or (2)
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`“where the defendant has committed acts of infringement and has a regular and established place
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`of business.” 28 U.S.C. § 1400(b). Under the first prong of § 1400(b), a domestic corporation
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`resides in its state of incorporation only. TC Heartland, 137 S. Ct. at 1521. Under the second prong,
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`“(1) there must be a physical place in the district; (2) it must be a regular and established place of
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`business; and (3) it must be the place of the defendant.” In re Cray Inc., 871 F.3d 1355, 1360 (Fed.
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`Cir. 2017). “If any statutory requirement is not satisfied, venue is improper under § 1400(b).” Id.
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`Simply stating that a defendant “has a regular and established place of business within the judicial
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`district, without more, amounts to a mere legal conclusion that the court is not bound to accept as
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`true.” Westech Aerosol Corp. v. 3M Co., 927 F.3d 1378, 1382 (Fed. Cir. 2019).
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`“[I]n an action involving multiple defendants[,] venue and jurisdiction requirements must
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`be met as to each defendant.” Magnacoustics, Inc. v. Resonance Tech. Co., No. 97–1247, 1997
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`WL 592863, at *1 (Fed. Cir. Sept. 25, 1997); Blue Spike, LLC v. Nook Digital, LLC, 2017 WL
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`3263871 at *3 (E.D. Tex. July 28, 2017), report and recommendation adopted sub nom. Blue Spike,
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`LLC v. Caterpillar, Inc., 2017 WL 4129321 (E.D. Tex. Sept. 19, 2017). Where venue is improper,
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`a court “shall dismiss, or if it be in the interest of justice, transfer such case to any district or
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`division in which it could have been brought.” 28 U.S.C. § 1406(a) (emphasis added). “[U]pon
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`motion by the Defendant challenging venue in a patent case, the Plaintiff bears the burden of
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`establishing proper venue.” In re ZTE (USA) Inc., 890 F.3d 1008, 1013 (Fed. Cir. 2018).
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`2
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 6 of 10 PageID #: 926
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`IV.
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`ARGUMENT
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`A.
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`The Complaint Against HMD America Should be Dismissed For Improper
`Venue, or In the Alternative, Transferred to the Southern District of Florida
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`Section 1400(b) provides that venue is proper only (1) “where the defendant resides” or (2)
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`“where the defendant has committed acts of infringement and has a regular and established place
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`of business.” AGIS has not pleaded—and cannot plead—facts sufficient to establish either prong
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`of the venue requirements under § 1400(b).
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`1. HMD America Does Not Reside in the Eastern District of Texas
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`It is undisputed that HMD America does not “reside” in this District under the first prong
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`of 28 U.S.C. § 1400(b) because—as AGIS concedes—HMD America is incorporated in Florida.
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`Compl. (Dkt.1), ¶ 4; see TC Heartland, 137 S. Ct. at 1521. Thus, HMD America’s residence does
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`not provide a basis for venue in this District.
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`2. HMD America Does Not have a Regular and Established Place of Business
`in the Eastern District of Texas
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`For a corporation to have a regular and established place of business in a district, “(1) there
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`must be a physical place in the district; (2) it must be a regular and established place of business;
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`and (3) it must be the place of the defendant.” In re Cray Inc., 871 F.3d at 1360-64.
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`Venue is improper because AGIS fails to show that HMD America has a physical place in
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`the Eastern District of Texas that is a regular and established place of business. A “physical place”
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`in the district means “a physical, geographical location in the district from which the business of
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`the defendant is carried out.” Id. at 1362. A “regular and established place of business” means a
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`“stable,” “permanent,” and “not transient” place in which there is a “regular, physical presence of
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`an employee or other agent of the defendant conducting the defendant’s business.” Id. at 1362‒63;
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`In re Google LLC, 949 F.3d 1338, 1344‒45 (Fed. Cir. 2020). HMD America has neither.
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`3
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 7 of 10 PageID #: 927
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`Although the Complaint alleges that HMD America has “regular and established places of
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`business in this Judicial District,” it fails to list a single address in Texas associated with HMD
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`America. Compl., ¶¶ 4, 8. AGIS does not, and cannot, plead that HMD America owns, leases,
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`rents, or maintains any physical space in Texas, let alone one from which it conducts steady,
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`persistent business. See In re Cray Inc., 871 F.3d at 1365. AGIS does not, and cannot, plead that
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`HMD America has advertised office locations or job positions based in Texas, or has marketed
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`employment opportunities specifically to residents of the Eastern District of Texas. Id. While four
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`employees work remotely from their homes in Texas, AGIS does not, and cannot, plead that HMD
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`America requires them to live there as a condition of their employment. Id. Further, AGIS does
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`not, and cannot, plead that HMD owns, leases, rents, provides housing allowances for, places
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`HMD signage on, or otherwise exercises control over its remote employees’ homes. Id. AGIS does
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`not, and cannot, plead that HMD expects its remote employees to meet customers or partners in
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`their homes or for their homes to be used as storage or distribution centers. Id. Since HMD America
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`lacks a physical location within the District that is a regular and established place of business,
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`venue is improper.
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`None of the remaining facts that AGIS separately pleads to support personal jurisdiction,
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`like HMD placing “infringing products . . . into the stream of commerce,” are sufficient to establish
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`venue. See Compl., ¶ 7. The Federal Circuit has held that “the regular and established place of
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`business standard requires more than the minimum contacts necessary for establishing personal
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`jurisdiction or for satisfying the doing business standard of the general business provision.” In re
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`Cray Inc., 871 F.3d at 1361. AGIS has not and cannot show that HMD America has a regular and
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`established place of business in the Eastern District of Texas.
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`4
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 8 of 10 PageID #: 928
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`3. Because Venue Is Improper, the Court Should Dismiss the Complaint
`against HMD America; Alternatively, the Court Should Transfer the Case
`to the Southern District of Florida
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`Because venue is improper in this District, this Court has discretion under 28 U.S.C. §
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`1406(a) to dismiss this case or to transfer the allegations against HMD America to a different
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`location where venue would be proper (i.e., the Southern District of Florida where HMD America
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`is incorporated). Should the Court determine that it is in the interest of justice to transfer this case
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`rather than dismissing it outright, HMD America respectfully requests that the Court transfer the
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`case to the Southern District of Florida “because ‘witnesses, evidence, the underlying events, and
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`[the defendant] are based there.’” See Moran v. Smith, 2016 WL 4033268, at *2 (W.D. Tex. July
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`27, 2016) (quoting Herman v. Cataphora, Inc., 730 F.3d 460, 466 (5th Cir. 2013)).
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`First, this case could have been brought in the Southern District of Florida, as HMD
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`America has a “regular and established place of business”—its headquarters—in Miami. Second,
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`most the relevant evidence and witnesses are in Florida. Relevant HMD sales and marketing staff,
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`and HMD records for the accused devices, are all in the Southern District of Florida. As for AGIS,
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`all of the party witnesses cited in its Initial Disclosures live in the Southern District of Florida, as
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`does the patent prosecuting attorney of record for U.S. Patent 8,213,970 (“the ’970 Patent”).3
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`Finally, the lawsuit “call[s] into question the work and reputation” of HMD America and its
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`employees who conduct business in the community, which gives the Southern District of Florida
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`a unique interest. In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1336 (Fed. Cir. 2009).
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`Should the Court elect to transfer this case rather than dismissing it outright, the Southern
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`District of Florida is the appropriate venue.
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`3 HMD does not include AGIS’s Initial Disclosures as an exhibit because AGIS twice failed to
`respond to HMD’s requests to meet-and-confer regarding AGIS’s improper designation of those
`disclosures, in their entirety, as confidential – attorney’s eyes only.
`5
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`V.
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`CONCLUSION
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`Venue is not proper in this District for HMD America under 28 U.S.C. § 1400(b). HMD
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`respectfully requests that the Court dismiss AGIS’s complaint under Rule 12(b)(3) and 28 U.S.C.
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`§ 1406(a) or transfer the case to the Southern District of Florida.
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`Given the litigation history between AGIS and HMD, HMD reserves the right to move for
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`its fees, including for having to bring this motion.
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`Dated: January 16, 2024
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`Respectfully submitted,
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`/s/ Matthew J. Moffa
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`MATTHEW J. MOFFA
`(Admitted E.D. Tex.)
`MMoffa@perkinscoie.com
`Perkins Coie LLP
`1155 Avenue of the Americas, 22nd Floor
`New York, NY 10036-2711
`Telephone: (212) 261-6857
`Facsimile: (737) 256-6300
`
`DAKOTA P. KANETZKY
`Texas Bar No. 24116599
`DKanetzky@perkinscoie.com
`PERKINS COIE LLP
`405 Colorado Street, Suite 1700
`Austin, Texas 78701
`Telephone: (737) 256-6115
`Facsimile: (737) 256-6300
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`Attorneys for Defendants HMD America, Inc.
`and HMD Global Oy
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`Case 2:22-cv-00443-JRG Document 43 Filed 01/16/24 Page 10 of 10 PageID #: 930
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`CERTIFICATE OF SERVICE
`The undersigned certifies that on January 16, 2024, a true and correct copy of the above
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`document was served on all counsel of record who are deemed to have consented to electronic
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`service via the Court’s CM/ECF system per Local Rule CV-5(a)(3)(A).
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`/s/ Matthew J. Moffa
`Matthew J. Moffa
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