Last October, Intellectual Ventures LLC (IV) expanded one of the longest-running litigation campaigns on the books, having hit camera makers, wireless carriers, networking equipment manufacturers, and mobile device makers since 2011, to also include automakers. 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 filed a motion to dismiss for improper venue, as well as a motion to stay matters until the Federal Circuit responded to petitions for a writs of mandamus filed by Hyundai and Volkswagen in response to a Western District of Texas order hinging venue there on the presence of in-district dealerships. In March, the Federal Circuit spoke, echoes of which continue to spread.
Background concerning this particular IV campaign can be read at " IV Turns to Automakers" (October 2021). Since its onset, in the Eastern District of Texas, Judge Rodney Gilstrap consolidated the Honda and Toyota cases (with the Toyota suit as lead), with Magistrate Judge Roy S. Payne presiding. Honda asked the court for permission to file sealed supplemental briefing related to its pending motion to dismiss, to address the effect of the Federal Circuit per curiam precedential opinion that in-district dealerships "do not constitute regular and established places of business of Volkswagen and Hyundai" in West Texas for venue purposes.
The court granted the request to provide that additional briefing, it was filed under seal, but then, on April 4, 2022, IV filed a notice of voluntary dismissal dropping the case without prejudice. That same day, IV refiled substantially the same suit 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; 9,232,158; 9,291,475; 9,602,608; 9,681,466; 10,292,138) against the provision of automobiles equipped with in-vehicle communication systems that support features such as network connectivity, automobile cameras, navigation, and more.
This time, however, only three of the six Honda entities named as defendants last October have been sued (Honda Motor Company, American Honda Motor Company, and American Honda Finance), with venue allegations identifying several alleged "regular and established places of business" operating under the Honda brand (e.g., "the Honda Rider Education Center, the Parts Center, Environmental Learning Center"). IV contends that "Honda" (defined as the three defendants collectively, Honda Motor company formed in Japan and the other two among its US subsidiaries) "ratifies and holds" such facilities out as its "regular and established places of businesses".
Honda has yet to respond to this move, in either venue. In its East Texas motion to dismiss for improper venue, Honda had included, in the alternative, a request to transfer that case to the Central District of California. Now, it appears, at least for the moment, the dispute will proceed in the Northern District of Texas.
Meanwhile, litigation against Toyota continues in East Texas (Judge Payne having just entered a protective order), while GM has answered the complaint and filed a motion to transfer the West Texas case against it to the Eastern District of Michigan, arguing that "[d]espite twelve patents, a kaleidoscope of accused products, and GM facilities within this District, the record demonstrates a demonstrable disconnect between the substance of this case and GM's presence in the Western District of Texas". That motion will now sit in a tense space between Judge Albright's reluctance to transfer for convenience and eagerness to move along to claim construction, albeit with less pressure here, as the Markman hearing in the case has been set for September 2022.
In response to multiple corrections to his approach to requested convenience transfers, Judge Albright has since taken additional steps to place limits on such motions—in particular, through an updated standing order designed to make it harder to file them in the first place. That March 7, 2022 standing order requires that motions for transfer be filed within eight weeks of receiving or waiving service of the complaint or within three weeks of the case management conference, whichever is later. After that, leave from the court is required. Parties must also repeatedly check in with the court about transfer motions, as Judge Albright now asks parties to file multiple status reports on pending motions—including one advising him when motions are ready for resolution, another when a case is four weeks away from the first Markman hearing (or, if there are more than one such hearing, six weeks before the first one), and yet another one week before the hearing if the motion still has not been decided.
The new Northern District of Texas suit against Honda has been assigned to Judge Ada Brown. 4/4, Northern District of Texas.
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