United States District Court, E.D. Texas, Marshall Division
MEMORANDUM AND OPINION ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE.
the Court is Defendants Amazon.com, Inc. and Amazon.com
LLC's (collectively, “Amazon”) Motion to
Transfer Pursuant to Contractual Forum Selection Clause (the
“Motion”). (Dkt. No. 30.) Having considered the
same and the briefing, the Court is of the opinion that the
Motion should be and hereby is DENIED for
the reasons set forth herein.
SLC and Amazon's Prior Licensing Agreement
and SLC entered into a Patent License and Litigation
Settlement Agreement (the “Agreement”) on April
22, 2015. (See Dkt. No. 37-2.) In exchange
for royalty payments, SLC (and its related foreign entity)
gave Amazon the right to make, use, or sell 75, 000 licensed
products in twenty European countries, “solely for the
purpose of encoding and decoding data in accordance with the
AMR-WB Standard” as related to several of SLC's
foreign patents. (See Id. §§ 1.19, 2.1,
and at Appx. B.) The Agreement also includes a choice of law
and forum selection provision:
This Agreement shall be governed by, interpreted and
construed in accordance with the laws of New York, without
reference to conflicts of laws principles. Any legal
action or other legal proceeding relating to this
Agreement 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.
(See Id. at § 10.1 (emphasis added).)
The Instant Lawsuit
sued Amazon on January 28, 2019, alleging infringement of
U.S. Patent Nos. 6, 795, 805 (“'805 Patent”);
6, 807, 524 (“the '524 Patent”); 7, 151, 802
(“'802 Patent”); 7, 260, 521 (“'521
Patent”); and 7, 191, 123 (“'123
Patent”) (collectively, the “Asserted
Patents”). (See Dkt. No. 1 (Complaint) at 7,
11, 16, 21, 25.) In its original Complaint, SLC appeared to
allege that Amazon had pre-suit notice of the Asserted
Patents by way of the Agreement. (See Id. ¶ 24;
see also Dkt. No. 30-2 (Letter by Marc Booth on
behalf of SLC to Amazon) (alleging infringement of the
Asserted Patents and identifying the limited scope of the
Agreement).) SLC subsequently amended the Complaint, which
now indicates non-reliance on the Agreement. (Dkt. No. 36
n.9.) There is no dispute that the Asserted Patents are not
covered by the Agreement. (Cf. Dkt. No. 37-2 at
a Texas limited liability company with its principal place of
business at 6136 Frisco Square Blvd., Suite 400, Frisco,
Texas 75034. (Dkt. No. 1 ¶ 1.) Defendant Amazon.com,
Inc. is a Delaware corporation with its principal place of
business at 410 Terry Avenue North, Seattle, Washington,
98109. (Dkt. No. 27 ¶ 2.) Defendant Amazon.com LLC was a
Delaware corporation that ceased operations by January 1,
2018, when it merged into Amazon.com Services,
(Id. ¶ 3.)
contends that the Agreement's forum selection clause
controls this case and asks, pursuant to the Agreement and 28
U.S.C. § 1404(a), the Court to “transfer this case
to the Southern District of New York[, ] where SLC is
currently asserting the same patents-in-suit in pending
litigation.” (See Dkt. No. 30 at 1.)
venue in the district in which the case is originally filed
is proper, the court may nonetheless transfer a case based on
“the convenience of parties and witnesses” to
“any other district or division where it might have
been brought or to any district or division to which all
parties have consented.” 28 U.S.C. § 1404(a). The
threshold inquiry when analyzing eligibility for §
1404(a) transfer is “whether the judicial district to
which transfer is sought would have been a district in which
the claim could have been filed.” In re Volkswagen
AG, 371 F.3d 201, 203 (5th Cir. 2004) [hereinafter
Volkswagen I]. As such, to prove that transfer is
proper, the movant must establish that, as of the time of
filing, each party “would have been amenable to process
in . . . the transferee court” and that “venue as
to all [parties] would have been proper [there].”
See Liaw Su Teng v. Skaarup Shipping Corp., 743 F.2d
1140, 1148 (5th Cir. 1984), overruled on other
grounds by In re Air Crash Disaster Near New
Orleans, 821 F.2d 1147 (5th Cir. 1987); accord
Hoffman v. Blaski, 363 U.S. 335, 342-44 (1960).
this initial threshold has been met, courts determine whether
the case should be transferred by analyzing various public
and private factors. See Humble Oil & Ref. Co. v.
Bell Marine Serv., Inc., 321 F.2d 53, 56 (5th Cir.
1963); accord In re Nintendo Co., Ltd., 589 F.3d
1194, 1198 (Fed. Cir. 2009). The private factors are: (1) the
relative ease of access to sources of proof; (2) the
availability of compulsory process to secure the attendance
of witnesses; (3) the cost of attendance for willing
witnesses; and (4) all other practical problems that make
trial of a case easy, expeditious, and inexpensive.
Volkswagen I, 371 F.3d at 203 (citing Piper
Aircraft Co. v. Reyno, 454 U.S. 235, 241 n.6 (1981)).
The public 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
conflict of laws or in the application of foreign law.
Id. These factors are to be decided based on
“the situation which existed when suit was
instituted.” Hoffman, 363 U.S. at 343. Though
the private and public factors apply to most transfer cases,
“they are 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].
prevail on a motion to transfer under § 1404(a), the
movant must show that transfer is “clearly more
convenient” than the venue chosen by the plaintiff.
Id. at 315; accord In re Apple Inc., 456
Fed.Appx. 907, 909 (Fed. Cir. 2012) (holding that a movant
must “meet its burden of demonstrating  that the
transferee venue is ‘clearly more
convenient.'”) (internal citation omitted). Absent
such a showing, plaintiff's choice of venue is to be
respected. Volkswagen II, 545 F.3d at 315. When
deciding a motion to transfer under § 1404(a), the court
may consider undisputed facts outside of the pleadings such
as affidavits or declarations, but it must draw all
reasonable inferences and resolve factual conflicts in favor
of the non-moving party. See Sleepy Lagoon, Ltd., v.
Tower Grp., Inc., 809 F.Supp.2d 1300, 1306 (N.D. Okla.
2011); see also Cooper v. Farmers New Century Ins.
Co., 593 F.Supp.2d 14, 18-19 (D.D.C. 2008).
above two-step process differs, however, when the movant has
raised the applicability of a forum selection clause. As the
Supreme Court has recognized, § 1404(a) provides
“a mechanism for enforcement of forum-selection clauses
that point to a particular federal district.” Atl.
Marine Constr. Co. v. U.S. Dist. Court for the W. Dist. of
Tex., 134 S.Ct. 568, 579 (2013). In those cases, the
court must first consider whether the party asserting the
clause and the defense or claim triggering that clause
crosses the threshold required to trigger the application of
the forum selection clause. Gen. Protecht Grp., Inc. v.
Leviton Mfg. Co., 651 F.3d 1355, 1359 (Fed. Cir. 2011)
[hereinafter GPG] (citing Tex. Instruments, Inc.
v. Tessera, Inc., 231 F.3d 1325, 1328 (Fed. Cir. 2000)).
If the court concludes that it does, then the usual §
1404 analysis is altered in two relevant ways: (1) the
plaintiff's choice of forum merits no weight, and (2) the
district court should consider arguments about public
interest factors only. Atl. Marine, 651 U.S. at
determine whether a forum selection clause is applicable, the
Federal Circuit has instructed that the nexus between the
current claims and the alleged defense flowing from the prior
license or settlement agreement must be
“non-frivolous.” GPG, 651 F.3d at 1359.
A bare allegation that a license provides a defense to the
claims in suit is insufficient to trigger the forum selection
clause. Id. While, the Federal Circuit has not
strictly demarcated the boundaries and scope of the
“non-frivolous” standard, this Court has
previously used a “less than one-half and nearer to
one-quarter” standard. The “attachment
point” along a continuum existing between a wholly
frivolous assertion of a license defense and a conclusive
showing of success on the merits where an asserted defense is
“almost assuredly . . . found before we reach the
mid-point of the spectrum” and is probably “found
nearer the one-quarter marker.” Zix Corp. v.
Echoworx Corp., No. 2:15-cv-1272-JRG, 2016 WL 7042221,
at *2-4 (E.D. Tex. June 9, 2016).