IV drops case in East Texas and files new case in second-choice location – Patent


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Last October, Intellectual Ventures LLC (IV) expanded one of the longest-running litigation campaigns, hitting camera makers, wireless carriers, networking equipment makers and device makers mobile since 2011, to also include car manufacturers. IV (as Intellectual Ventures I LLC and Intellectual Ventures II LLC) sued GM in the Western District of Texas, as well as Honda and
Toyota in the Eastern District of Texas. Honda has filed a motion to dismiss for improper venue, as well as a motion to stay until the Federal Circuit responds to mandamus Dropping by hyundaiand volkswagen in response to an order from the Western District of Texas that depended on the presence of dealers in the district. In March, the federal circuit took the floor, the echoes of which continue to spread.

Background regarding this particular IV campaign can be read at “IV Turns to Automakers” (October 2021). From its inception, in the Eastern District of Texas, Judge Rodney Gilstrap consolidated the Honda and Toyota cases (with the Toyota lawsuit leading), presiding by Magistrate Judge Roy S. Payne. Honda has asked the court for permission to file a sealed supplemental brief regarding its pending motion to dismiss, to address the effect of the Federal Circuit
by curie previous opinion that dealerships in the district “do not constitute regular and established places of business of Volkswagen and Hyundai” in West Texas for purposes of place.

The court granted the request to provide this additional information, it was filed under seal, but then, on April 4, 2022, IV filed a notice of voluntary termination dropping the case without prejudice. On the same day, IV filed substantially the same lawsuit in the Northern District of Texas, again asserting the same 11 patents (6,832,283; 7,382,771; 7,684,318; 7,891,004; 8,811,356; 8,953,641; automobiles equipped with communication systems in-vehicle devices supporting features such as network connectivity, car cameras, navigation, etc.

This time, however, only three of the six Honda entities named as defendants last October have been sued (Honda Motor Company, American company Honda Motorand American Finance Honda), with location claims identifying several alleged “regular and established business establishments” operating under the Honda brand (for example, “the Honda Rider Education Center, the Parts Center, Environmental Learning Center”). IV contends that “Honda” (defined as the three defendants collectively, the Japan-formed Honda Motor Company and the other two among its US subsidiaries) “ratifies and holds” these facilities as its “regular and established places of business”.

Honda has yet to respond to that decision, either way. In its motion to dismiss East Texas for improper venue, Honda had included, in the alternative, a request to transfer this matter to the Central District of California. Now, it appears, at least for now, that the dispute will continue in the Northern District of Texas.

Meanwhile, litigation against Toyota continues in East Texas (Judge Payne just entered a protective order), while GM has responded to the lawsuit and filed a motion to transfer the case from the West Texas against him in the Eastern District of Michigan, arguing that “[d]Despite twelve patents, a kaleidoscope of accused products and GM facilities in this district, the record demonstrates a demonstrable disconnect between the merits of this case and GM’s presence in the West District of Texas.” This motion will now sit in a space tension between Judge Albright’s reluctance to transfer for convenience and his eagerness to move forward to claim construction, albeit with less pressure here, as the Sniper the hearing in the case has been set for September 2022.

In response to multiple corrections to his approach to requested convenience transfers, Justice Albright has since taken additional steps to limit such requests, in particular through an updated standing order designed to make it more difficult for them to be filed in first place. This March 7, 2022 standing order requires transfer requests to be filed within eight weeks of receipt or waiver of service of the complaint or within three weeks of the case management conference, whichever is later. After that, court permission is required. Parties must also repeatedly check with the court for transfer motions, as Judge Albright now requires parties to file several status reports on pending motions, including one advising him when motions are ready to be resolved, another when a case is four weeks away from the first.
Sniper hearing (or, if there is more than one such hearing, six weeks before the first), and another week before the hearing if the application has still not been decided.

The new Northern District of Texas lawsuit against Honda has been assigned to Judge Ada Brown. 4/4, Northern District of Texas.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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