IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF TEXAS

TYLER DIVISION

AMERICAN VEHICULAR SCIENCES,

LLC

vs.

HYUNDAI MOTOR COMPANY, et al.,

§

§

§ CASE NO. 6:13cv270

§ CASE NO. 6:12cv774 (LEAD) 

§

§

AMERICAN VEHICULAR SCIENCES,

LLC

vs.

AMERICAN HONDA MOTOR CO., 

INC., et al.,

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§

§

§ CASE NO. 6:13cv226 (LEAD)

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§

§

AMERICAN VEHICULAR SCIENCES,

LLC

vs.

KIA MOTORS CORPORATION, et al.

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§

§

§ CASE NO. 6:13cv147 (LEAD) 

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§

ORDER

Before the Court is Hyundai Motor Company, Hyundai Motor America, Hyundai Motor 

Manufacturing Alabama, LLC’s (“Hyundai”) Objections (Doc. No. 121) to Order Denying 

Hyundai’s Motion to Transfer (Doc. No. 118)1 which the Court will construe as a Motion to 

Reconsider. Additionally before the Court is Defendants Hyundai Motor Company, Hyundai 

Motor America, Hyundai Motor Manufacturing Alabama, LLC, Kia Motors America, Inc., and 

Kia Motors Manufacturing Georgia, Inc.’s (“Hyundai and Kia”) Motion to Stay Pending 

Reconsideration of the Court’s Decision on Hyundai’s Motion to Transfer in View of the Federal 

Circuit’s Ruling (Doc. No. 119) (“Motion to Stay”). Plaintiff American Vehicular Sciences LLC 

(“AVS” or “Plaintiff”) responded (Doc. No. 125). The Motion to Stay referred to a pending 

 1 Unless otherwise indicated, all citations herein will be to those in Case No. 6:12cv774.

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Motion to Transfer Venue jointly filed by Hyundai and Kia. Case No. 6:13cv147, Doc. No. 43; 

Case No. 6:13cv148, Doc. No. 25; Case No. 6:13cv150, Doc. No. 25; and Case No. 6:13cv270,

Doc. No. 36. AVS responded (Case No. 6:13cv147, Doc. No. 64; Case No. 6:13cv270, Doc. No. 

56) and Hyundai and Kia jointly replied (Case No. 6:13cv147, Doc. No. 67; Case No. 

6:13cv148, Doc. No. 38; Case No. 6:13cv150, Doc. No. 38; and Case No. 6:13cv270, Doc. No.

59). Additionally pending is Honda’s2 Motion to Transfer Venue (Case No. 6:13cv226, Doc. 

No. 37; Case No. 6:13cv 227, Doc. No. 23; Case No. 6:13cv228, Doc. No. 23). AVS responded 

(Case No. 6:13cv226, Doc. No. 42). Having considered the parties’ arguments and for the 

reasons set forth herein, Hyundai and Kia Defendants’ Motion to Reconsider is GRANTED and 

the Motion to Stay is DENIED AS MOOT. Further, both Honda and Hyundai and Kia’s 

motions to transfer venue are GRANTED; therefore, all cases are TRANSFERRED to the 

Eastern District of Michigan. 

BACKGROUND

On October 15, 2012, AVS simultaneously filed three separate lawsuits3 alleging 

infringement of 12 patents against Hyundai. AVS filed an additional lawsuit4 against Hyundai 

on March 22, 2013, alleging infringement of three additional patents.5

 In total, AVS has filed 27

cases against Hyundai, Toyota, Kia, Honda, Subaru, BMW,6 and Mercedes alleging 

infringement of twenty-four patents.

7

 Each suit alleges infringement of various patents, all of 

 2 The Honda Defendants include American Honda Motor Co., Inc. and Honda of America Manufacturing, Inc.

3 6:12cv774, 6:12cv775, 6:12cv776

4 6:13cv270

5 The Court notes Plaintiff’s voluntary dismissal of Hyundai Motor Company from the 6:13cv270 action (Doc. No. 

14).

6 The actions against BMW have since been dismissed. See American Vehicular Sciences LLC v. BMW Group, 

a/k/a BMW AG, et al., No. 6:12cv411. 7 See American Vehicular Sciences LLC v. Toyota Motor Company, et al., No. 6:12cv404; American Vehicular 

Sciences LLC v. Kia Motors Corporation, et al., No. 6:12cv147; American Vehicular Sciences LLC v. American 

Honda Motor Co., Inc., et al., No. 6:13cv226; American Vehicular Sciences LLC v. Subaru of America, Inc., No. 

6:13cv229; and American Vehicular Sciences LLC v. Mercedes-Benz U.S. International, Inc., et al., No. 6:13cv307.

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which are a part of a common patent portfolio directed to electronic sensors for automotive 

safety and telematics systems.

On February 20, 2013, Hyundai filed a Motion to Transfer Venue (Doc. No. 29) arguing 

that the Eastern District of Michigan (“EDMI”) is clearly the more convenient forum, that an 

alleged forum-selection clause in a prior settlement agreement requires all disputes be 

adjudicated in EDMI, and that the majority of the asserted patents are related to patents that have

already been litigated in EDMI.

8

 

The Court denied that Motion on March 31, 2014 (Doc. No. 118). Hyundai and Kia then 

jointly filed their Motion to Stay (Doc. No. 119) in light of the Federal Circuit’s Order granting 

Toyota’s petition for a writ of mandamus (In re Toyota Motor Corp., Case No. 6:12cv404

(“Toyota Case”), Doc. No. 235). Hyundai then filed Objections9 to the Court’s Order denying 

transfer on April 14, 2014. Doc. No. 121. On May 1, 2014, the Court sua sponte stayed all 

captioned cases until the conclusion of the mandamus proceedings in the Toyota case. Doc. No. 

128. On June 6, 2014, the Court of Appeals for the Federal Circuit denied AVS’ Petition for 

Rehearing En Banc (Toyota Case, Doc. No. 247). The Court subsequently severed and stayed all 

claims against Gulf States, and transferred all remaining claims and actions against Toyota to 

EDMI. Case No. 6:12cv404, Doc. No. 252. The Court now reconsiders its previous denial of 

the Order denying Hyundai’s venue transfer to EDMI in light of the Federal Circuit’s Order to 

transfer Toyota to EDMI along with the remaining pending venue transfer and stay motions

(Case Nos. 6:13cv147 and 270, Doc. Nos. 43 & 36; Case No. 6:13cv226, Doc. No. 37; Case Nos. 

6:12cv774 and 147, Doc. Nos. 119 & 100). 

 8 Hyundai and Kia later jointly filed a second motion to transfer three later cases filed by AVS against Kia (Case 

Nos. 6:13-cv-00147-MHS-JDL, -00148, and -00150) (“147 Case”) and one later case filed against Hyundai. (Case 

No. 6:13-cv-00270-MHS-JDL). (147 Case, Doc. No. 42.) While that motion is still pending, both motions rely on 

very similar grounds for transfer to EDMI as Hyundai and Kia are affiliates and rely on similar Hyundai-Kia and 

third-party witnesses in EDMI and a forum selection clause in a prior settlement agreement. Therefore, the analysis 

conducted below applies to both motions.

9 As indicated above, the Court will construe the Objections as a Motion to Reconsider.

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ANALYSIS

In Toyota, the Federal Circuit directed the Court to transfer the Toyota cases to EDMI

because no non-party witnesses had been identified in the Eastern District of Texas and there 

appeared to be witnesses in EDMI with knowledge “potentially relevant to infringement and 

validity issues,” even if the materiality of their testimony was not fully developed. In re Toyota 

Motor Corp., 747 F.3d 1338, 1340 (Fed. Cir. 2014). Importantly, a “comparison between the 

transferor and transferee forums is not altered by the presence of other witnesses and documents 

in places outside both forums.” Id. From the venue briefing in the instant cases, it appears that 

all captioned Defendants are similarly situated to the Toyota Defendants as discussed below. 

As to Hyundai, the Court previously found the sources of proof factor neutral because (1) 

Hyundai’s identification of witnesses and documents lacked sufficient detail and (2) the sources 

of proof were spread among Korea, California, Michigan, Texas, Florida, New Jersey, and the 

New York. Doc. No. 118 at 13. The Court additionally found the availability of compulsory 

process to secure attendance of witnesses and the cost of attendance for willing witnesses factors 

neutral for the same reasons. Id. The Federal Circuit, however, has found this analysis incorrect 

in two respects. In re Toyota, 747 F.3d at 1340. First, based on Toyota, this Court required a 

level of detail regarding documents and witnesses that is too stringent. Id. Second, this Court 

improperly considered fora other than EDMI or the Eastern District of Texas in considering these 

three factors. Id. In looking at these factors through the prism of the Federal Circuit’s opinion, 

there are more witnesses and documents in EDMI than in the Eastern District of Texas and thus 

these factors favor transfer. The Court also notes that it found judicial economy and court 

congestion weighed against transfer. Doc. No. 118 at 17. However, these factors do not merit 

keeping these cases in the Eastern District of Texas. See In re Morgan Stanley, 417 Fed Appx. 

947, 949 (Fed. Cir. 2011) (“the proper administration of justice may be to transfer to the far more 

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convenient venue” despite the considerations of judicial efficiency); see also GeoTag v. 

Starbucks Corp., 2013 WL 890484 (E.D. Tex. Jan. 14, 2013) (citing In re Genentech, 566 F.3d 

1338, 1347 (Fed. Cir. 2009) (holding court congestion as the most speculative of venue factors)). 

Thus, applying the Federal Circuit’s rationale in Toyota, it appears that no meaningful factors 

favor retaining Hyundai in the Eastern District of Texas. As referenced above, the analysis for 

Hyundai also applies to Kia. Therefore, on reconsideration, the Court finds that the Hyundai and 

Kia actions should be transferred to EDMI.10

In its Motion to Transfer Venue, Honda specifically points to several non-party witnesses

in Michigan and several others in Ohio which borders EDMI. Case No. 6:13cv226, Doc. No. 36 

at 6-7. AVS’ argument that Honda’s additional sources of proof are dispersed among other 

states including California, Ohio, Indiana, and Alabama (Case No. 6:13cv226, Doc. No. 42 at 3-

5) is essentially moot in light of the Federal Circuit’s holding that “[t]he comparison between the 

transferor and transferee forums is not altered by the presence of other witnesses and documents 

in places outside both forums.” In re Toyota, 747 F.3d at 1340. On the other hand, AVS has not 

pointed to witnesses located in EDTX with the exception of Marvin Key, AVS’ CEO located in 

Plano, Texas. Case No. 6:13cv226, Doc. No. 42 at 4. Therefore, in light of the Federal Circuit’s 

ruling in Toyota, the claims against Honda should also be transferred to the Eastern District of 

Michigan.

CONCLUSION

For the foregoing reasons stated herein and pursuant to the Federal Circuit’s decision in 

Toyota, the 6:12cv774, 6:12cv775, 6:12cv776, 6:13cv147, 6:13cv148, 6:13cv150, 6:13cv226, 

6:13cv2276:13cv228, and 6:13cv270 actions against Hyundai, Kia, and Honda are 

TRANSFERRED to the Eastern District of Michigan. Hyundai and Kia Defendants’ Motion to 

 10 In light of the Court’s reconsidered finding that the 1404 factors favor transfer, the Court declines to reconsider 

Hyundai’s argument that the forum selection clause in the parties’ prior settlement dictates transfer.

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Reconsider is GRANTED and the Motion to Stay is DENIED AS MOOT. Both Hyundai and 

Kia and Honda’s motions to transfer venue are GRANTED. Otherwise all pending motions are 

deferred to the transferee court. The clerk of court shall effect the transfer in accordance with the 

usual procedure.

.

 

 

SIGNED this 19th day of December, 2011.

So ORDERED and SIGNED this 29th day of July, 2014.

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