United States District Court Finds That A Retail Store Operating Under Assumed Name Was Defendant’s Established Place of Business
On March 11, 2021, Judge Alan D. Albright of the United States District Court for the Western District of Texas denied defendant’s motion to dismiss for improper venue or to transfer pursuant to 28 U.S.C. § 1404. Precis Group, LLC, v. Tracfone Wireless, Inc., 6-20-CV-00303 (W.D. Tex. Mar. 11, 2021). The Court found that a retail store operating in the district under an assumed name was defendant’s established place of business, and therefore sufficient to establish venue.
On April 21, 2020, plaintiff filed a complaint for patent infringement in the Western District of Texas against a mobile phone company. To establish venue, plaintiff alleged that defendant operated a retail store in the district under a brand name. On June 22, 2020, defendant filed a motion to dismiss for improper venue, or to transfer the case to the United States District Court of Florida pursuant to 28 U.S.C. § 1404.
On March 2, 2021, having received no ruling from the district court on its motion, defendant petitioned the Court of Appeal for the Federal Circuit (CAFC) for a writ of mandamus directing the district court to issue an order on the motion. On March 8, 2021, the CAFC granted the writ of mandamus. In re: Tracfone Wireless, Inc., F.3d __, (Fed. Cir. Mar. 8, 2021). The district court issued its decision that same week.
Defendant’s motion papers included an affidavit stating that the store was an unaffiliated, independently owned, third-party retailer. In opposition, plaintiff argued that the store is the same as defendant, and pointed to: (i) the store’s website, which stated that the store is “a brand of” defendant, “d/b/a” the name of the store; (ii) the store’s Terms and Conditions, which refers to the store’s employees as representatives and agents of defendant; and (iii) defendant’s ownership of the store’s trademark. On these facts, the district court found that “[the store] holds itself out as a being owned by and essentially one and the same as [defendant],” and that those facts were “sufficient to establish that [defendant] has a regular and established place of business in this district.”
After finding that venue was proper, the Court analyzed whether the Southern District of Florida was more convenient for the witnesses and the parties than the Western District of Texas such that, in the interest of justice, the Court ought to transfer the case pursuant to 28 U.S.C. § 1404. The Court found the Western District of Texas was more convenient, and denied the request for transfer, because that district was closer to the location of two non-party witnesses. The first witness, located in Arizona, was a prosecuting attorney for the patents-in-suit. The second witness, located in Minnesota, was a named inventor for the patents-in-suit. In denying the motion, the Court minimized any inconvenience to defendant’s own witnesses that were all located in Florida.