United States District Court, N.D. Illinois, Eastern Division
PHYLLIS A. HUSTER, Plaintiff,
j2 GLOBAL COMMUNICATION, INC., ADVANCED MESSAGING TECHNOLOGIES, INC., UNIFIED MESSAGING SOLUTIONS, LLC, ACACIA PATENT ACQUISITION LLC, and CHARLES R. BOBO II, Defendants.
OPINION AND ORDER
JOAN H. LEFKOW, District Judge.
Plaintiff Phyllis A. Huster filed a complaint against defendants j2 Global Communication, Inc. ("j2"), Advanced Messaging Technologies, Inc. ("AMT"), Unified Messaging Solutions, LLC ("UMS"), Acacia Patent Acquisition LLC ("Acacia"), and Charles R. Bobo, II to correct the inventorship of nine U.S. patents (collectively "the patents in suit") under 35 U.S.C. § 256. Defendants filed four motions to dismiss, including a motion to dismiss on the grounds of improper venue. The court finds that venue is improper in this district but, rather than dismiss the case, it will transfer it to the Northern District of Georgia in the interest of justice.
In 1994, while living in Atlanta, Georgia, Huster developed a prototype for a system that receives and stores voicemail and faxes in a central location and distributes them to users through an Internet browser. (Compl. ¶ 10.) By the fall of 1994, Huster was using her computer as a server to receive and transmit faxes over the internet. ( Id. ¶ 13.) Around the same time, Bobo, also a Georgia resident,  retained Huster as a consultant for his company, NetOffice, Inc. ("NetOffice"), which also was developing a system to send faxes via email. ( Id. ¶¶ 11, 13.) As compensation for her services, Huster received consulting fees and stock in NetOffice. ( Id. ) Bobo eventually abandoned work on his own system in favor of Huster's system (the "fax-to-email system"). ( Id. ¶ 13.)
Huster and Bobo discussed patenting the fax-to-email system. ( Id. ¶ 14.) Huster prepared hand-sketched drawings of the system and provided them to a law firm recommended to her by a friend. ( Id. ) On January 4, 1995, Huster and Bobo attended a meeting at the firm where they agreed that the patent application would name Huster and Bobo as co-inventors. ( Id. ) When the application was filed, however, it omitted Huster's name as co-inventor without any notice to her. ( Id. ) This application led to one of the patents in suit. ( Id. )
Bobo and the patent attorney filed subsequent patent applications for Huster's system but did not tell Huster when the patents were issued or that she was not listed as an inventor. ( Id. ¶¶ 14, 17.) Eventually Huster moved to Washington State and Bobo stopped communicating with her. ( Id. ¶ 15.) Huster learned that she was omitted as a co-inventor of the patents in suit in 2010 in connection with a patent infringement suit in California. ( Id. ¶ 21.)
After Bobo patented the fax-to-email system, he assigned the patents to NetOffice Solutions, LLC, which was not the entity in which Huster owned stock. ( Id. ¶ 16.) Although the exact chain of ownership is unclear from the face of the complaint, the patents in suit were ultimately assigned to "j2 and its affiliates and/or Acacia." ( Id. ¶ 18.) In 2010, j2 assigned the patents to AMT, which has offices at the same address as j2. ( Id. ¶¶ 3, 5.)
On August 3, 2012, the United States Judicial Panel on Multidistrict Litigation centralized related patent infringement actions filed by UMS in this court. In re Unified Messaging Solutions LLC Patent Litig., MDL No. 2371, No. 12 C 6286 (N.D. Ill. filed Aug. 3, 2012) ("the MDL"). The MDL related to five of the patents in suit. The parties stipulated to a judgment of non-infringement and judgment was entered for the defendants on June 13, 2014. See Judgment, id. (N.D. Ill. June 13, 2014), ECF. No. 715. Although this case was assigned to the court because it was presiding over the MDL, it does not involve the same claims of infringement that are the subject of the MDL.
Defendants have moved to dismiss on several grounds, but the court will only address defendants' motion to dismiss for improper venue as venue is improper in this district and the case should be transferred to an appropriate forum in the interest of justice. In doing so, the court notes that it need not have personal jurisdiction over a defendant to transfer venue. See Spherion Corp. v. Cincinnati Fin. Corp., 183 F.Supp.2d 1052, 1057 (N.D. Ill. 2002) (citing Cote v. Wadel, 796 F.2d 981, 985 (7th Cir. 1986)).
I. Whether Venue Is Proper in the Northern District of Illinois
Defendants move to dismiss for improper venue under Federal Rule of Civil Procedure 12(b)(3). When a defendant challenges venue under Rule 12(b)(3), the plaintiff bears the burden of establishing that venue is proper. See, e.g., Hanyuan Dong v. Garcia, 553 F.Supp.2d 962, 964 (N.D. Ill. 2008). In ruling on a motion to dismiss for improper venue, the court must take all of the allegations in the complaint as true and draw all reasonable inferences in favor of the plaintiff. Id.
In a civil action, venue is proper in:
(1) a judicial district in which any defendant resides, if all defendants are residents of the State in ...