Faier on IP Law: Script Transform, LLC v. Motorola Mobility, 2021 WL 825666 – Venue in a Patent Matter. (NDIL) March 1, 2021.
This is a proceeding about venue. Motorola moved for dismissal under Federal Rule 12(b)(3) arguing that plaintiff lacked venue to bring its patent action in the Northern District of Illinois. The court granted the motion. Venue in a patent matter is governed by 28 U.S.C. Section 1400(b) that states that the action may be brought in a district where (1) defendant resides or (2) where the defendant committed acts of infringement and has a regular and established place of business. The burden is on plaintiff to prove venue. Motorola submitted declarations showing that it was a Delaware corporation and that it had no role in the alleged infringing goods as it only licensed its name to another firm and it took no part in distribution. Plaintiff did not refute this evidence.
The piece that does not sit well is that Motorola had a roll as the licensor and the products were advertised on a website that Motorola controlled. Is the public allowed to look to a licensor when there is a problem with a licensed product? If the Motorola brand were of no import to a US buyer than why would the Hong Kong firm license the mark? Is Motorola a tortfeaser when it allows its mark on an infringing product? Bottom line, I think Motorola got money because its name was on the product and anything that happens after that name goes on is arguably its responsibility. Motorola is here. It used to be headquartered here. The marketing of the goods was on the net on a Motorola website. Well, that seems pretty close to trying to make a sale.