United States District Court, M.D. Tennessee, Nashville Division
ORDER DENYING DEFENDANT'S MOTION TO DISMISS FOR
IMPROPER VENUE AND TRANSFERRING CASE UNDER 28 U.S.C. §
McCALLA UNITED STATES DISTRICT COURT JUDGE.
cause is before the Court on Defendant Olympia Tools,
International's Motion for Judgment on the Pleadings
Pursuant to Fed.R.Civ.P. 12(c) for Dismissal Based on
Improper Venue, filed June 1, 2017. (ECF No. 31.) The Court
has considered the motion, as well as Plaintiff JPW
Industries, Inc.'s Response (ECF No. 44), Olympia's
Reply (ECF No. 50), Olympia's Supplemental Brief in
Support (ECF No. 63), JPW's Supplemental Response Brief
(ECF No. 74), and Olympia's Reply to JPW's
Supplemental Brief. (ECF No. 77.) For the reasons discussed
below, the Court finds that, pursuant to 28 U.S.C. §
1400(b), venue is not proper in the Middle District of
Tennessee. Additionally, pursuant to 28 U.S.C. § 1406(a)
and in the interest of justice, the case shall be transferred
to the Central District of California. Accordingly,
Defendant's Motion for Dismissal Based on Improper Venue
action arises out of allegations by Plaintiff JPW Industries
(“JPW”) against Defendant Olympia Tools
International (“Olympia”) for infringement of
United States Patent 9, 079, 464 (“the '464
patent”). Plaintiff JPW is a Washington corporation
with a principal place of business in Tennessee. (Compl.
¶ 5, ECF No. 1.) Defendant Olympia is a California
corporation with a principal place of business in California.
(Def.'s Ans., ECF No. 20 at PageID 53.)
action involves alleged infringement of the following patent
on a portable vise, invented by Timothy Onello and Charles
Weber and assigned to Plaintiff:
U.S. Patent Number
9, 079, 464
July 14, 2015
Portable Work Holding Device and Assembly
(Id. ¶¶ 11-12; U.S. Patent 9, 079, 464,
ECF No. 1-1.) Plaintiff alleges that Defendant's OLYMPIA
HITCH VISE (Model No. 38-652) infringes one or more of the
claims recited in the patent. (Compl. ¶¶ 13-15).
Plaintiff asserts that at least claims 1, 3, 5-8, 12, and
21-25 are infringed. (Id. at ¶ 15.) Plaintiff
sells a competing portable vise, ATV: ALL TERRAIN VISE, and
has entered two copies of the device into evidence as
Exhibits 1 and 2.
filed the Complaint on December 6, 2016, in the Middle
District of Tennessee. (ECF No. 1.) On February 24, 2017,
Defendant filed its Answer, denying infringement and raising
affirmative defenses including invalidity and prosecution
history estoppel. (Def.'s Ans., ECF No. 20.) On March 9,
2017, the parties held an initial case management conference
before Magistrate Judge Barbra Holmes, (ECF No. 23), and on
March 16, 2017, Magistrate Judge Holmes entered an Initial
Case Management Order. (ECF No. 24.)
25, 2017, the parties entered a Joint Claim Construction
Statement (ECF No. 30), identifying eight claims whose terms
the parties disputed. On June 9, 2017, both parties filed
Opening Claim Construction Briefs. (ECF Nos. 35-36.) On
September 6, 2017, the Court held a Claim Construction
Hearing in Nashville, Tennessee. At the hearing, the Court
heard arguments from both parties regarding interpretation of
the terms listed in the Joint Claim Construction Statement.
(ECF No. 30.) The Court entered an Order Following Claim
Construction Hearing on October 5, 2017. (ECF No. 87.)
1, 2017, Defendant filed the instant Motion for Judgment on
the Pleadings for Dismissal Based on Improper Venue. (ECF No.
31.) On June 29, Plaintiff filed a response to the motion.
(ECF No. 44.) On July 11, 2017, Defendant filed a reply. (ECF
No. 50.) On July 19, 2017, the Court ordered supplemental
briefing on Defendant's motion. (ECF No. 56.) In that
order, the Court found that Defendant had preserved the issue
of venue by objecting to venue in its answer, and that
Defendant had not waived venue after preserving it. (ECF No.
56 at PageID 611.) The Court also ordered supplemental
briefing on whether Defendant maintains a “regular and
established place of business” in this district, in
light of Raytheon Co. v. Cray, Inc., No
2:15-CV-01554-JRG, 2017 WL 2813896 (E.D. Tex. June 29, 2017).
(Id. at Page IDs 611-12.) On August 22, 2017,
Plaintiff filed a Supplemental Brief opposing Defendant's
Motion. (ECF No. 74.) On August 24, 2017, Defendant filed a
Reply to Plaintiff's Supplemental Brief. On September 21,
2017, the United States Court of Appeals for the Federal
Circuit decided a petition for writ of mandamus from
Raytheon v. Cray in which the Federal Circuit
reversed the Eastern District of Texas and set forth a
three-element test for evaluating whether a corporation has a
“regular and established place of business” under
28 U.S.C. § 1400(b). In re: Cray, Inc, No.
2017-129, 2017 WL 4201535 at *4 (Fed. Cir. Sept. 21, 2017).