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Invensense, Inc. v. Stmicroelectronics, Inc.

United States District Court, Fifth Circuit

January 10, 2014

INVENSENSE, INC., Plaintiff,
v.
STMICROELECTRONICS, INC., et al., Defendants.

MEMORANDUM OPINION AND ORDER

RODNEY GILSTRAP, District Judge.

Before the Court is Defendant STMicroelectronics, Inc.'s ("STI") Motion To Dismiss for Improper Venue, or in the Alternative, To Transfer (Dkt. No. 19), filed July 17, 2013. Defendants argue, first, that venue is improper in the Eastern District of Texas and the case should be dismissed under Federal Rule of Procedure 12(b)(3); and, in the alternative, they argue that the Court should transfer this case to the Northern District of California for the convenience of the parties and witnesses under 28 U.S.C. § 1404(a). For the reasons set forth below, Defendant's Motion is DENIED IN PART AND GRANTED IN PART.

I. FACTUAL BACKGROUND

Plaintiff Invensense, Inc. ("Invensense") is a Delaware corporation with its principal place of business in Sunnyvale, California, part of the Northern District of California (Dkt. No. 11, at 2). Invensense develops and sells microelectromechanical systems (MEMS) devices, such as accelerometers and gyroscopes, for use in consumer products such as smart phones and tablets. Id. at 1. STI is a Delaware corporation with its principal place of business in Coppell, TX, in the Northern District of Texas (Dkt. No. 19-1, at 2). STI markets and sells MEMS devices, including the products accused in this suit. In addition to its facilities in Coppell, STI has a regional office in the Northern District of California. Id. at 2.

The largest U.S. customer for STI's accused products is Apple, Inc. ("Apple") (Dkt. No. 19-2, at 2). Apple includes STI MEMS devices in consumer products sold throughout the United States, including the Eastern District of Texas (Dkt. No. 28-2). STI does not merely sell preexisting components to Apple at arms' length; rather, STI "works throughout the United States with numerous leading U.S. technology companies... to design, adapt, support, and update ST[I]'s MEMS devices for these customers' applications" (Dkt. No. 55-1, at 2). This work required "significant support and collaboration between ST[I]]'s and Apple's technical and non-technical personnel" and STI personnel "worked closely with Apple's engineers to assist Apple in utilizing ST[I] MEMS devices." Id. Without such collaboration, "the decision by Apple to utilize ST[I] MEMS may not have occurred." Id.

Invensense filed this lawsuit for patent infringement in the Eastern District of Texas on May 14, 2013 (Dkt. No. 1). However, the suit appears to be part of a broader patent dispute between these parties that began with a May 2012 suit (the "original patent suit") filed by STI against Invensense in the Northern District of California, alleging infringement of nine of STI's patents (Dkt. No. 20-1). In that case, Invensense counterclaimed, asserting infringement by STI of two of Invensense's patents (Dkt. No. 20-2). Those counterclaims asserted patents relating to the design and manufacture of microelectromechanical systems, and accused specific components and versions of STI's L3G4200D and LSM330 devices. Id.

Incident to the original patent suit, Invensense petitioned the United States Patent and Trademark Office to reexamine seven of STI's asserted patents (Dkt. No. 20-5). Invensense then petitioned the Northern District of California for a partial stay of STI's suit pending the results of the reexamination. Id. That request was denied because "a partial stay of this matter would not simplify or streamline the trial or reduce the burdens of litigation on the parties or the Court" (Dkt. No. 20-6) (emphasis added). Invensense then amended its motion, seeking to stay the entire case, including its counterclaims, "to alleviate any claimed prejudice from a one-sided stay of only ST[I]'s patents" (Dkt. No. 20-7). In response, the Northern District of California granted the stay, based on the explicit finding that the stay would not allow STI to gain an unwarranted tactical advantage (Dkt. No. 20-8).

STI then filed a Complaint with the International Trade Commission (ITC) seeking an investigation into Invensense's customers' alleged infringement of five patents, three of which it had asserted in the original patent suit (Dkt. No. 20-9). STI followed this with new infringement suits filed in the Northern District of California alleging infringement of the other two patents at issue in the ITC investigation (Dkt. No. 20, at 4). The ITC rejected Invensense's request to stay the ITC investigation on the basis of distinct remedies available in that forum (Dkt. No. 20-12).

Invensense, for its part, filed this suit against STI for infringement on two additional patents. The patents asserted in this suit share common inventors and deal with similar substance as the patents at issue in Invensense's original counterclaims, and accuse some of the same products, including the L3G4200D and LSM330 devices mentioned above (Dkt. No. 38-1).

STI's Coppell, TX facility is less than a mile from the border that divides the Eastern and Northern Districts of Texas. Invensense alleges that the bulk of relevant documentary evidence is located in Coppell, and STI does not rebut this assertion, though it does aver that little if any relevant evidence exists within the Eastern District of Texas. This may be true but does not speak to the existence of evidence extremely close by. Each side has identified potential witnesses in or near their preferred venue, and each side questions the relevance of the other side's witnesses.

II. PROPRIETY OF VENUE

Defendants' first argument is that this case should be dismissed for improper venue under 28 U.S.C. § 1406.

A. Legal Standards

Federal Rule of Civil Procedure 12(b)(3) allows a defendant to move to dismiss an action brought in an improper venue. If the Court finds that venue is improper, it "shall dismiss, or if it be in the interest of justice, transfer such case to any district ...


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