Team Worldwide Corp. v. Wal-Mart Stores, Inc.

287 F. Supp. 3d 651
CourtDistrict Court, E.D. Texas
DecidedFebruary 13, 2018
DocketCIVIL ACTION NO. 2:17–CV–00235–JRG
StatusPublished
Cited by2 cases

This text of 287 F. Supp. 3d 651 (Team Worldwide Corp. v. Wal-Mart Stores, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Team Worldwide Corp. v. Wal-Mart Stores, Inc., 287 F. Supp. 3d 651 (E.D. Tex. 2018).

Opinion

RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE

Before the Court are five Motions: (1) Intex Recreation Corp. and Intex Trading Ltd.'s (collectively, "Intex") Motion to Sever Claims for Misjoinder (Dkt. No. 86); (2) Intex's Motion to Sever, Change Venue, and Stay (Dkt. No. 88); (3) Bestway (USA), Inc.'s ("Bestway") Motion to Sever and Transfer (Dkt. No. 93); (4) the Coleman Company, Inc.'s ("Coleman") Motion to Sever Claims for Misjoinder (Dkt. No. 94); and (5) Coleman's Motion to Sever, Change Venue, and Stay (Dkt. No. 96.) Having considered the Motions, the Court is of the opinion that the Motions should be and hereby are DENIED as set forth herein.

I. BACKGROUND

On March 29, 2017, Team Worldwide Corporation ("TWW") filed suit against Wal-Mart Stores, Inc., Wal-Mart Stores Texas, LLC, Wal-Mart.com USA LLC, Sam's West, Inc. d/b/a Sam's Club (collectively, "Walmart" or "Defendants"), alleging infringement of U.S. Pat. No. 9,211,018, U.S. Pat. No. 7,346,950, and U.S. Pat. No. 7,246,394 (collectively, the "Asserted Patents"). On June 5, 2017, Walmart filed its answer. (Dkt. No. 16.) In July, this Court held a scheduling conference where counsel for TWW and Walmart appeared before the Court.

On August 2, 2017, Intex sought this Court's permission to intervene pursuant to Fed. R. Civ. P. 24. (Dkt. No. 29.) One day later, Coleman sought this Court's permission to intervene. (Dkt. No. 35.) On October 5, 2017, Bestway (USA), Inc. ("Bestway") also sought this Court's permission to intervene. (Dkt. No. 64.) In their Motions, each intervenor also expressed an intent, after being allowed to intervene, to seek severance for misjoinder, and to seek transfer of the newly severed cases for improper venue or convenience. On December 7, 2017, the Court allowed Intex, Coleman, and Bestway to intervene as of right.1 (Dkt. No. 84.)

*653Shortly thereafter, the intervenors filed the motions currently before the Court.2 Each intervenor asks this Court to sever the "peripheral defendant" Walmart,3 and transfer the new cases against each intervenor, and then stay the remaining case against Walmart. (See, e.g. , Dkt. No. 88 at 10.) With respect to transfer, each intervenor argues that venue in this District is improper or, in the alternative, that venue is clearly more convenient in each intervenor's requested transferee District.4 (Dkt. No. 88 at 2; Dkt. No. 93 at 5; Dkt. No. 96 at 8.)

II. APPLICABLE LAW

A. Joinder of Parties- 35 U.S.C. § 299

Under Section 19(d) of the Leahy-Smith America Invents Act, P.L. 112-29 ("the AIA") (codified as 35 U.S.C. § 299 ), plaintiffs may only join multiple defendants accused of patent infringement (notwithstanding Rule 24 ) if:

(1) any right to relief is asserted against the parties jointly, severally, or in the alternative with respect to or arising out of the same transaction, occurrence, or series of transactions or occurrences relating to the making, using, importing into the United States, offering for sale, or selling of the same accused product or process;
and
(2) questions of fact common to all defendants or counterclaim defendants will arise in the action.

35 U.S.C. § 299(a) (emphasis added).

If parties are "misjoined" under § 299, then Fed. R. Civ. P. 21 provides a remedy.5 "On motion or on its own, the court may at any time, on just terms, add or drop a party. The court may also sever any claim against a party." Fed. R. Civ. P. 21.

B. The Venue Inquiry-1400(b)

"Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b) ; TC Heartland LLC v. Kraft Foods Group Brands LLC , --- U.S. ----, 137 S.Ct. 1514, 197 L.Ed.2d 816 (2017). This statutory language permits venue under either of two distinct inquiries. The first depends on *654where each defendant "resides." 28 U.S.C. § 1400(b). The second depends on where each defendant has a "regular and established place of business," so long as that place is also "where the defendant has committed acts of infringement." Id. If venue is not proper under either inquiry, a court must dismiss the case or transfer it to a district in which the case could have originally been brought, with the appropriate action determined according to the interests of justice. Fed. R. Civ. P. 12(b)(3) ; 28 U.S.C. § 1406(a).

C. Convenience Transfer-1404(a)

Section 1404(a) 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." 28 U.S.C. § 1404(a).

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Bluebook (online)
287 F. Supp. 3d 651, Counsel Stack Legal Research, https://law.counselstack.com/opinion/team-worldwide-corp-v-wal-mart-stores-inc-txed-2018.