Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

EVS Codec Technologies, LLC v. LG Electronics, Inc.

United States District Court, E.D. Texas, Marshall Division

July 5, 2019

EVS CODEC TECHNOLOGIES, LLC, SAINT LAWRENCE COMMUNICATIONS LLC, Plaintiffs,
v.
LG ELECTRONICS, INC., LG ELECTRONICS USA, INC., LG ELECTRONICS MOBILECOMM U.S.A., INC., Defendants.

          MEMORANDUM OPINION AND ORDER

          RODNEY GILSCRAP UNITED STATES DISTRICT JUDGE.

         Before the Court is Defendants LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm U.S.A., Inc.'s (collectively, “LG”) Second Renewed Motion to Transfer Pursuant to Forum Selection Clause (the “Transfer Motion”) (Dkt. No. 73) and Motion for a Temporary Stay of this Litigation Pending Resolution of LG's Second Renewed Motion to Transfer (the “Stay Motion”) (Dkt. No. 87) (collectively, the “Motions”). Having considered the Motions, briefing, and relevant authorities, the Court GRANTS the Transfer Motion and DENIES AS MOOT the Stay Motion for the reasons stated herein.

         I. INTRODUCTION

         Plaintiffs EVS Codec Technologies, LLC (“ECT”) and Saint Lawrence Communications LLC (“SLC”) (collectively, “Plaintiffs”) allege that LG infringes U.S. Patent Nos. 6, 795, 805; 6, 807, 524; 7, 151, 802; 7, 260, 521; and 7, 191, 123 (collectively, the “Patents-in-Suit”). (Dkt. No. 70 (Third Amended Complaint).)[1] The Patents-in-Suit relate to the Enhanced Voice Services Codec Standard (the “EVS Standard”). The EVS Standard is a speech and audio compression technology that “enables vastly improved voice quality, network capacity and advanced features for voice services over Long Term Evolution (‘LTE' or ‘4G') networks.” (Id. ¶ 25.) Plaintiffs allege that LG infringes the Patents-in-Suit by “manufactur[ing], us[ing], s[elling], import[ing], and/or offer[ing] for sale [certain LG smartphones and electronic devices that] . . . contain[] the EVS Codec and/or practic[e] the EVS Standard in the United States.” (Id. ¶¶ 44-45, 60-61, 77- 78, 93-94, 112-13.)

         LG asserts that Plaintiffs' claims are barred by a prior license agreement between SCL and LG. (Dkt. No. 75 ¶¶ 42-48 (Answer), ¶¶ 31-59 (Counterclaims I-III).) In 2014, SLC sued LG on the Patents-in-Suit in this District. See Saint Lawrence Commc'ns LLC v. LG Elecs., Inc., No. 2:14-cv-01055-JRG, Dkt. No. 1 (E.D. Tex. Nov. 18, 2014). The parties settled the case, and entered into the AMR WB Standard Patent License Agreement (the “Agreement”). (Dkt. No. 73- 1.) Pursuant to the Agreement, SLC granted LG a license and release to the Patents-in-Suit (id. §§ 2.12.2, 2.4), and agreed “not to sue [LG] . . . for infringement of any patents owned or controlled or licensable by [SLC] during the Term of th[e] Agreement (‘Covenant Patents') solely with respect to LG Products for the life of such patents” (the “Express Covenant”) (id. § 2.8). The parties further agreed as part of the Agreement to a forum selection clause, which provides that “[a]ny legal action or other legal proceeding relating to the interpretation or the enforcement of any provision of th[e] Agreement must be brought or otherwise commenced in a federal or state court in New York.” (Id. § 11.1.) LG asserts that the Agreement's “[Express] [C]ovenant bars Plaintiffs' infringement claims, ” and that resolution of such argument will necessarily require interpreting the Agreement. (Dkt. No. 73 at 1, 11.) Since the Agreement's forum selection clause requires that all “legal actions . . . . relating to the interpretation . . . . of th[e] Agreement . . . be brought . . . in New York, ” LG argues that this “clause directly governs [the parties' dispute] and must be enforced.” (Dkt. No. 73 at 2.) Accordingly, LG moves to transfer this case to the Southern District of New York under 28 U.S.C. § 1404(a).[2]

         II. LEGAL STANDARD

         Section 1404(a) provides that “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” 28 U.S.C. § 1404(a). A case may also be transferred under § 1404(a) if there is an applicable forum selection clause. Atl. Marine Constr. Co., Inc. v. U.S. Dist. Court for the W. Dist. of Tex., 571 U.S. 49, 52 (2013). If a party files such a motion, then “proper application of § 1404(a) requires that a forum-selection clause be ‘given controlling weight in all but the most exceptional cases.'” Id. To make this determination, courts follow a two-step analysis.

         The court first determines if the forum selection clause governs the dispute. See Gen. Protecth Grp., Inc. v. Leviton Mfg. Co., 651 F.3d 1355, 1359 (Fed. Cir. 2011) [hereinafter GPG].[3] In patent cases, the applicability of a forum selection clause often arises when a defendant asserts a defense based on a license agreement. See, e.g., Zix Corp. v. Echoworx Corp., No. 2:15-cv-01272-JRG, 2016 WL 7042221 (E.D. Tex. June 9, 2016). The Federal Circuit has held that a forum selection clause applies if the nexus between the case and the agreement at issue is “non-frivolous.” GPG, 651 F.3d at 1359. A bare allegation that a license provides a defense to the claims in suit fails to meet this standard and will not trigger a forum selection clause. Id. Beyond this, however, the Federal Circuit has provided little guidance. Previously, this Court has used a less than one-half and nearer to the one-quarter standard when addressing forum selection clauses under § 1404(a). See Zix, 2016 WL 7042221 at *3. In Zix, this Court examined the continuum existing between a wholly frivolous assertion of a license defense and a conclusive showing of success on the merits to find the “attachment point” at which the asserted defense becomes “non-frivolous.” Id. This Court concluded that the elusive attachment point is “almost assuredly . . . found before we reach the mid-point of the spectrum, ” and that it is probably “found nearer the one-quarter marker.” Id.

         If the court finds that the parties' dispute triggers a valid forum selection clause, then the “district court should ordinarily transfer the case to the forum specified in that clause [unless there are] . . . extraordinary circumstances unrelated to the convenience of the parties” that disfavor transfer. Atl. Marine, 571 U.S. at 62. “[T]his requires district courts to adjust their usual § 1404(a) analysis in three ways.” Id. at 63. “First, the plaintiff's choice of forum merits no weight” and “the plaintiff bears the burden of establishing that transfer to the forum for which the parties bargained is unwarranted.” Id. “Second, [the] court . . . should not consider arguments about the parties' private interests” and “may consider arguments about public-interest factors only.” Id. at 64. These public interest factors are: (1) the administrative difficulties flowing from court congestion; (2) the local interest in having localized interests decided at home; (3) the familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary problems of conflicts of laws or in the application of foreign law. In re Volkswagen, 371 F.3d 201, 203 (5th Cir. 2003) [hereinafter Volkswagen I]. This list is “not necessarily exhaustive or exclusive, ” and no single factor is dispositive. In re Volkswagen of Am., Inc., 545 F.3d 304, 314-15 (5th Cir. 2008) [hereinafter Volkswagen II]. The court should also assess these factors based on “the situation which existed when suit was instituted.” Hoffman v. Blaski, 363 U.S. 335, 343 (1960). Finally, when a forum selection clause controls, “a § 1404(a) transfer of venue will not carry with it the original venue's choice-of-law rules-a factor that in some circumstances may affect public-interest considerations.” Atl. Marine, 571 U.S. at 64.

         III. DISCUSSION

         A. Applicability of the Forum Selection Clause

Section 11.1 of the Agreement provides:
11.1 This Agreement shall be governed by, interpreted and construed in accordance with the laws of New York, without reference to conflicts of law principles. Any legal action or other legal proceeding relating to the interpretation or the enforcement of any provision of this Agreement must be brought or otherwise commenced in a federal or state court in New York. Each Party expressly and irrevocably consents and submits to the jurisdiction of such state and federal courts in connection with any such legal proceeding.

(Dkt. No. 73-1 § 11.1.) Specifically, the Agreement states that “[a]ny legal action or other legal proceeding relating to the interpretation or the enforcement of any provision of this Agreement must be brought or otherwise ...


Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.