Carucel Investments, L.P. v. Novatel Wireless, Inc.

157 F. Supp. 3d 1219, 2016 U.S. Dist. LEXIS 12517, 2016 WL 368355
CourtDistrict Court, S.D. Florida
DecidedJanuary 19, 2016
DocketCase No. 15-cv-61116-BLOOM/Valle
StatusPublished
Cited by13 cases

This text of 157 F. Supp. 3d 1219 (Carucel Investments, L.P. v. Novatel Wireless, Inc.) is published on Counsel Stack Legal Research, covering District Court, S.D. Florida primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Carucel Investments, L.P. v. Novatel Wireless, Inc., 157 F. Supp. 3d 1219, 2016 U.S. Dist. LEXIS 12517, 2016 WL 368355 (S.D. Fla. 2016).

Opinion

ORDER

BETH BLOOM, UNITED STATES DISTRICT JUDGE

THIS. CAUSE is before the Court upon Defendants’ Motion to Transfer or, Alternatively, Sevér and Stay Claims against AT & T, ECF No. [35] (“Motion” or “Mot.”), as alleged in Plaintiffs Complaint for patent ' infringement, ECF No. [1] (“Complaint”).1 / The' Court has carefully reviewed the Motion, the record, the supporting and opposing submissions, including Plaintiffs Response, ECF No. [44] (“Response”‘or “Resp”), Defendants’ Reply, ECF Nos. [49] (“Reply”), and Plain-tiffSur-Reply [55] (“Sur-Reply”), the exhibits attached thereto, the applicable law, [1222]*1222and is otherwise fully advised. For the reasons that follow, Defendants’ Motion to Transfer is GRANTED.

I. Background

On May 27, 2015, Carucel Investments, L.P. (“Plaintiff’), filed the instant Complaint against Defendants Novatel Wireless, Inc. (“Novatel”), Verizon Communications, Inc. (“Verizon”), and AT & T Mobility LLC (“AT & T”) (collectively, “Defendants”). TigerDirect, Inc. (“Tiger”), was originally named as a fourth defendant in the case. However, the Court entered an Order dismissing Tiger without prejudice on September 17, 2015, ECF No. [14], two days after Carucel filed a Notice of Voluntary Dismissal without Prejudice as to Tiger, ECF No. [11]. The remaining three Defendants filed the instant Motion on October 22, 2015.

Plaintiff alleges that Defendants have been and are infringing upon claims of U.S. Patent No. 7,221,904 (the “904 Patent”), U.S. Patent No. 7,848,701 (the “701 Patent”), U.S. Patent No. 7,979,023 (the “023 Patent”), U.S. Patent No. 8,463,177 (the “177 Patent”), U.S. Patent No. 8,718,-543 (the “543 Patent”), and U.S. Patent No. 8,849,191 (the “191 Patent”) (collectively, the “Asserted Patents”). Compl. ¶ 2. Each of the Asserted Patents, entitled “Mobile Communication System with Moving Base Station,” is “valid and enforceable,” and was “duly and legally issued by the United States Patent and Trademark Office to the named inventor Charles D. Gavrilovich,” between 2007 and 2014. Id. ¶¶ 14-27.

The Complaint alleges that Novatel’s mobile broadband hotspot devices (the “Accused Products”)2 infringe the Asserted Patents. Id. ¶28. Additionally, Verizon and AT & T “are infringing the Asserted Patents by using, selling, importing and/or offering for sale one or more of the Accused Products.”3 Id. ¶¶ 29-31. Plaintiff asserts six counts against all Defendants, one for each of the patents allegedly infringed by Defendants. See generally id. As a result of Defendants’ infringement of the Asserted Patents, Carucel seeks “monetary damages under 35 U.S.C. § 284 in an amount to be proven at trial, but in no event less than a reasonable royalty to compensate for Defendants’ infringements, together with interest and costs as fixed by the Court.” Id. ¶ 32.

In their Motion, Defendants request that the Court transfer this action to the Southern District of California pursuant to 28 U.S.C. § 1404. In the event that the Court denies the transfer, Novatel and AT & T alternatively seek the severance and stay of the claims asserted against AT & T. Mot. at 1-2.

II. Legal Standard

The transfer statute, 28 U.S.C. § 1404(a), which embodies a codification and revision of the forum non conveniens doctrine, see Piper Aircraft Co. v. Reyno, 454 U.S. 235, 253, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981), 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.” “Section 1404(a) reflects an increased desire to have federal civil suits tried in the federal system at the place [1223]*1223called for in the particular case by considerations of convenience and justice.” Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964). The statute grants broad discretion to the district court. See Osgood v. Disc. Auto Parts, LLC, 981 F.Supp.2d 1259, 1263 (S.D.Fla.2013) (stating that the “standard for transfer under 28 U.S.C. § 1404(a) leaves much to the broad discretion of the trial court”) (citation omitted); see also Piper Aircraft, 454 U.S. at 253, 102 S.Ct. 252 (noting that “[district courts were given more discretion to transfer under § 1404(a) than they had to dismiss on grounds of forum non conveniens”) (citation omitted); Motorola Mobility, Inc. v. Microsoft Corp., 804 F.Supp.2d 1271, 1275 (S.D.Fla.2011) (“The Court has broad discretion in determining whether these factors suggest that transfer is appropriate.”).

In determining the appropriateness of transfer, courts employ a two-step process. See Osgood, 981 F.Supp.2d at 1263 (citing Abbate v. Wells Fargo Bank, Nat. Ass’n, 2010 WL 3446878, at *4 (S.D.Fla. Aug. 31, 2010)); Precision Fitness Equip., Inc. v. Nautilus, Inc., 2008 WL 2262052, at *1 (S.D.Fla. May 30, 2008) (citing Thermal Techs., Inc. v. Dade Serv. Corp., 282 F.Supp.2d 1373, 1376 (S.D.Fla.2003); Jewelmasters, Inc. v. May Dep’t Stores, 840 F.Supp. 893, 894-95 (S.D.Fla.1993) (citing Cont’l Grain Co. v. The Barge FBL-585, 364 U.S. 19, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960))). First, the district court is tasked with determining whether the action could have been pursued in the venue to which transfer is sought. See Osgood, 981 F.Supp.2d at 1263 (citing Abbate, 2010 WL 3446878, at *4). With regard to this first prong, an action “might have been brought” in any court that has subject-matter jurisdiction, where venue is proper, and where the defendant is amenable to process issuing out of the transferee court. Windmere Corp. v. Remington Prods., Inc., 617 F.Supp. 8, 10 (S.D.Fla.1985) (citing 15 C. Wright, A. Miller and E. Cooper, Federal Practice and Procedure § 3845 (1976)). Second, “courts assess whether convenience and the interest of justice require transfer to the requested forum.” Id. (citation omitted). In analyzing this second prong, the Court applies several factors weighing various public and private interests. See Motorola Mobility, 804 F.Supp.2d at 1275-76.

Alternatively, Rule 21 of the Federal Rules of Civil Procedure vests district courts with the authority to “on just terms, add or drop a party” and “sever any claim against a party.” Fed.R.Civ.P. 21.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Cite This Page — Counsel Stack

Bluebook (online)
157 F. Supp. 3d 1219, 2016 U.S. Dist. LEXIS 12517, 2016 WL 368355, Counsel Stack Legal Research, https://law.counselstack.com/opinion/carucel-investments-lp-v-novatel-wireless-inc-flsd-2016.