Genuine Enabling Tech., LLC v. Nintendo Co.

369 F. Supp. 3d 590
CourtDistrict Court, D. Delaware
DecidedFebruary 25, 2019
DocketCivil Action No. 17-134
StatusPublished
Cited by4 cases

This text of 369 F. Supp. 3d 590 (Genuine Enabling Tech., LLC v. Nintendo Co.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Genuine Enabling Tech., LLC v. Nintendo Co., 369 F. Supp. 3d 590 (D. Del. 2019).

Opinion

Goldberg, District Judge.

Currently before me in this patent infringement action is a motion challenging venue in this district. Plaintiff, Genuine Enabling Technology, LLC, a Delaware limited liability company, brought this action in this district, asserting patent infringement claims against two defendants-Nintendo Co., Ltd, a Japanese company, and its wholly-owned subsidiary, Nintendo of America, Inc., which is incorporated in the State of Washington.

Nintendo of America contends that venue in this district is improper under the patent venue statute, 28 U.S.C. § 1400(b), and moves for dismissal or, alternatively, transfer of the entire case to the United States District Court for the Western District of Washington. Plaintiff responds that Nintendo of America waived its ability to challenge venue in this district by registering to do business in Delaware and by designating an agent to receive service of process here. For the reasons that follow, I will grant Nintendo of America's Motion, and transfer this case, in its entirety, to the Western District of Washington.

I. FACTUAL & PROCEDURAL BACKGROUND 1

Plaintiff alleges that it is the owner of a patent that claims a method of data encoding and synchronization. In its Complaint for Patent Infringement, filed in this district on February 8, 2017, Plaintiff asserts infringement claims against Defendants, Nintendo Co., Ltd. (hereinafter "Nintendo (Japan)"), and its wholly owned subsidiary, Nintendo of America, Inc. (hereinafter "Nintendo of America").2 Plaintiff alleges that Defendants market and sell video game consoles and controllers that infringe Plaintiff's patent. (Compl. ¶¶ 4, 8, 19-20, 21-24.)

As noted above, Plaintiff is a Delaware limited liability company. Nintendo (Japan) is a Japanese company. Nintendo of America is incorporated in the State of Washington, *593but is registered to do business in Delaware and has appointed an agent to receive service of process here. (Compl. ¶¶ 2-3, 5-6.)

Nintendo (Japan) filed an answer, raising improper venue as an affirmative defense. Nintendo of America, however, filed the instant Motion to Dismiss or Transfer, under 28 U.S.C. § 1406(a).3 In its Motion, Nintendo of America argues that, under the patent venue statute, 28 U.S.C. § 1400(b), venue is improper in this district, because it is neither incorporated in Delaware nor has a regular and established place of business here. Plaintiff initially responds that Nintendo of America: (1) does have a regular and established place of business in Delaware; and (2) waived its ability to challenge venue in this district by registering to do business in Delaware and by designating an agent for service of process in this state.

While the Motion was pending, Plaintiff informed the Court that, in light of a subsequent decision by the United States Court of Appeals for the Federal Circuit, it would no longer argue that Nintendo of America has a regular and established place of business in Delaware, or seek jurisdictional discovery on that issue. Rather, Plaintiff would rest its opposition to the Motion solely on its argument that Nintendo of America waived its ability to challenge venue in this district. (Pl.'s 10/25/2017 Ltr., Doc. No. 36.)

For the reasons set out below, I conclude that Nintendo of America has not waived its ability to challenge venue in this district. Accordingly, I will grant the Motion and transfer the entire case to the Western District of Washington, where venue is proper as to both Defendants.

II. LEGAL STANDARD

When a plaintiff files a suit in an improper forum, "district courts are required either to dismiss or transfer to a proper forum." Lafferty v. St. Riel, 495 F.3d 72, 77 (3d Cir. 2007) (citing Goldlawr, Inc. v. Heiman, 369 U.S. 463, 465-66, 82 S.Ct. 913, 8 L.Ed.2d 39 (1962) ); 28 U.S.C. § 1406(a). Motions to dismiss for improper venue "generally require the court to accept as true the allegations of the pleadings." Heft v. AAI Corp., 355 F.Supp.2d 757, 762 (M.D. Pa. 2005) (citing Pinker v. Roche Holdings Ltd., 292 F.3d 361, 368 (3d Cir. 2002) ). "The parties may submit affidavits in support of their positions, and may stipulate as to certain facts, but the plaintiff is entitled to rely on the allegations of the complaint absent evidentiary challenge." Heft, 335 F.Supp.2d at 762 (citing Carteret Sav. Bank, F.A. v. Shushan, 954 F.2d 141, 142 n.1 (3d Cir. 1992) ; Myers v. Am. Dental Ass'n, 695 F.2d 716, 724 (3d Cir. 1982) ). "Dismissal is considered to be a harsh remedy ... and transfer of venue to another district court in which the action could originally have been brought, is the preferred remedy." Spiniello Cos. v. Moynier, No. 13-5145, 2014 WL 7205349, at *5 (D.N.J. Dec. 17, 2014) (quoting NCR Credit Corp. v. Ye Seekers Horizon, Inc., 17 F.Supp.2d 317, 319 (D.N.J. 1998) ).

III. ANALYSIS

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369 F. Supp. 3d 590, Counsel Stack Legal Research, https://law.counselstack.com/opinion/genuine-enabling-tech-llc-v-nintendo-co-ded-2019.