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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a 

BRAZOS LICENSING AND 

DEVELOPMENT, 

Plaintiff,

v. 

ZTE CORPORATION, ZTE (USA) 

INC., AND ZTE (TX), INC.

Defendant.

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6-20-CV-00487-ADA

6-20-CV-00488-ADA

6-20-CV-00489-ADA

6-20-CV-00490-ADA

6-20-CV-00491-ADA

6-20-CV-00492-ADA

6-20-CV-00493-ADA

6-20-CV-00494-ADA

6-20-CV-00495-ADA

6-20-CV-00496-ADA

6-20-CV-00497-ADA

ORDER GRANTING DEFENDANT’S MOTION TO 

DISMISS

Before the Court is Defendants ZTE Corporation (“ZTC”), ZTE (USA), Inc. (“ZTA”), and 

ZTE (TX), Inc.’s (“ZTX”) (collectively, “ZTE”) Motion to Dismiss for Improper Venue (the 

“Motion”) pursuant to Rule 12 of the Federal Rules of Civil Procedure (F.R.C.P.). ECF No. 471

. 

The Motion was filed on December 4, 2020. Id. Plaintiff, WSOU Investments, LLC d/b/a Brazos 

Licensing and Development (“WSOU”), filed its Response on June 18, 2020. ECF No. 85. 

ZTE filed its Reply on June 25, 2020. ECF No. 88. After considering all related pleadings 

and the relevant law, the Court is of the opinion that ZTE’s Motion should be GRANTED. 

BACKGROUND

WSOU filed these actions on June 3, 2020, pursuant to the Court’s original jurisdiction 

under 28 U.S.C. §§ 1331 and 1338(a). ECF No. 1. Plaintiff alleges that ZTE infringes on the 

1 Since there are 11 separate cases under which ZTE filed a Motion, each of the following references to ECF will be 

to the docket number from 6:20-CV-00487.

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following patents: (1) U.S. Patent No. 8,451,839, (2) U.S. Patent No. 7,489,929, (3) U.S. Patent 

No. 7,487,240, (4) U.S. Patent No. 8,179,960, (5) U.S. Patent No. 8,730,905, (6) U.S. Patent 

No. 8,147,071, (7) U.S. Patent No. 9,294,060, (8) U.S. Patent No. 9,185,036, (9) U.S. Patent 

No. 9,258,232, (10) U.S. Patent No. 7,742,534, (11) U.S. Patent No. 7,203,505. ECF No. 1. 

On December 4, 2020, ZTE filed an opposed Motion under Rule 12(b)(3). ECF No. 47. 

In its Motion, ZTE argues that WSOU fails to establish proper venue against Defendants. Id. 

at 2–21. On June 18, 2020, WSOU filed a Response to ZTE’s Motion. Pls.’ Resp. in Opp’n to 

Defs.’ Mot. to Dismiss. (hereinafter “Resp.”), ECF No. 85. On June 25, 2020, ZTE filed a 

Reply. Def’s. Reply in Supp. of Def’s. Mot. to Dismiss Under Rule 12(b)(3) (hereinafter 

“Reply”), ECF No. 88. On July 19, 2021, there was a hearing held regarding the pending 

Motion. ECF No. 99.

LEGAL STANDARD 

“Any civil action for patent infringement may be brought in any judicial district where 

the defendant resides, or where the defendant has committed acts of infringement and has 

a regular and established place of business.” 28 U.S.C. § 1400(b). Furthermore, 28 U.S.C. 

§ 1400(b) “is the sole and exclusive provision controlling venue in patent infringement

actions.” TC Heartland v. Kraft Food Groups Brands LLC, 137 S. Ct. 1514, 1519, 197 

L.Ed.2d 816 (2017). Venue must be determined as to each defendant separately.

Magnacoustics, Inc. v. Resonance Tech. Co., No. 97-1247, 1997 WL 592863, at *1 (Fed. 

Cir. Sept. 25, 1997). Venue must be proper for all defendants for an action to be brought. See 

AGIS Software Development, LLC v. ZTE Corp. et al., 2018 WL 4854023, at *4 (E.D. Tex. 

Sept. 28, 2018). 

A party may move to dismiss a claim for improper venue pursuant to Federal Rule of 

Civil Procedure 12(b)(3). Once a defendant challenges venue, “the plaintiffs have the burden to 

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prove that the chosen venue is proper.” Zurich Am. Ins. Co. v. Tejas Concrete & Materials Inc.,

982 F.Supp.2d 714, 719 (W.D. Tex. 2013). On a Rule 12(b)(3) motion to dismiss for improper 

venue, the court must view all the facts in a light most favorable to the plaintiff. Ambraco, Inc. 

v. Bossclip B.V., 570 F.3d 233, 237-38 (5th Cir. 2009). “Thus, a plaintiff may show that the

venue is proper by ‘setting forth facts that taken as true would establish venue.’” Zurich Am. 

Ins. Co., 982 F.Supp.2d at 719; see also Wilson v. Belin, 20 F.3d 644, 648 (5th Cir. 1994). 

DISCUSSION

First and foremost, WSOU makes the argument that 28 U.S.C. 1391(d) creates a residence 

for both ZTA and ZTX. The Court disagrees. This reading of 28 U.S.C. § 1391(d) goes against 

Supreme, Federal, and District Court precedent in applying 28 U.S.C. § 1391(d) to domestic 

defendants. The sole basis for venue in patent actions is 28 U.S.C. § 1400(b) as established by the 

Supreme Court in 2018. TC Heartland, 137 S.Ct. at 1517. 

Second, venue for patent infringement actions against defendants that do not reside within the 

United States is governed by 28 U.S.C. § 1391, not 28 U.S.C. § 1400(b). Slyce Acquisition v. Syte 

– Visual Conception, Ltd., 422 F.Supp.3d 1191, 1197-8. Here, ZTC is a Chinese corporation and

thus its venue is governed by 28 U.S.C. § 1391. Motion at 6. In both its briefing and during the 

hearing, WSOU fails to argue that venue is proper for ZTC under 28 U.S.C. § 1391. Therefore, 

since WSOU is unable to show that venue is proper for ZTC under the applicable venue statute, 

the Court finds that venue is improper for ZTC.

I. Whether Venue is Proper for Defendants Under the First Prong of 28 U.S.C §

1400(b)

a. ZTA Does Not Reside in this Forum

The first way to establish venue in patent infringement cases is to file suit “in the judicial 

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district where the defendant resides.” 28 U.S.C. § 1400(b). “For purpose of determining venue 

under § 1400(b), in a state having multiple judicial districts, a corporate defendant shall be 

considered to ‘reside’ only in the single judicial district within that state where it maintains a 

principal place of business, or failing that, the judicial district in which its registered office is 

located.” In re Bigcommerce, 890 F.3d at 986 (Fed. Cir. 2018). 

Second, a corporation may not be sued under the first prong of the venue statute outside its 

state of incorporation. See TC Heartland LLC, 137 S.Ct. at 1516-17. ZTA is a New Jersey 

corporation. Furthermore, while ZTA does have a principal business in Texas, it is located in the 

Northern District of Texas. Therefore, under 28 U.S.C. § 1400(b)’s first prong, ZTA does not 

reside in this District. 

b. ZTX Does Not Reside in this Forum

While it is true that ZTX is a Texas corporation, it does not have a principal place of 

business anywhere in Texas, including this District. Motion at 15-16. Prior to May 14, 2020 ZTX 

did maintain a registered office in Austin, Texas, but ZTX moved its registered office to Dallas, 

Texas on May 14, 2020. Resp. at 7. Therefore, at the time of the filing of WSOU’s complaint, June 

3, 2020, ZTX did not have a registered agent in this District. Motion at 16. WSOU argues that 

since it voluntarily dismissed its original complaint, filed on March 26, 2020, that date should be 

the date of filing and not the date its current complaint was filed on. Resp. at 7. However, WSOU 

did not incorporate the original complaint and thus the date of filing is June 3, 2020. Therefore, at 

the time of filing, ZTX had no connection to this District and venue for ZTX under the first prong 

of 28 U.S.C. 1400(b) and BigCommerce is only proper in the Northern District of Texas. 890 F.3d 

at 986. 

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 II. Whether Venue is Proper for Defendants Under the Second Prong of 28 U.S.C § 

 1400 (b)

The second way to establish venue in patent infringement cases is to file suit “where the 

defendant has committed acts of infringement and has a regular and established place of business.” 

28 U.S.C. § 1400(b). The Federal Circuit has defined “a regular and established place of business” 

to mean: (1) there must be a physical place in the district; (2) the physical place must be a regular 

and established place of business; and (3) the regular and established place of business must be the 

place “of the defendant.” In re Cray Inc., 871 F.3d 1355, 1362-63 (Fed. Cir. 2017). All three must 

of these requirements must be present for proper venue to exist. Id.

In its briefing, WSOU fails to distinguish between either ZTA or ZTX in 

discussing whether either Defendant has committed acts of infringement and has a regular and 

established place of business in this District, simply referring to them collectively as ZTE. 

The Court, in attempting to clarify WSOU’s argument, will refer to both ZTA and ZTX 

collectively as ZTE in the following discussion. 

WSOU alleges in its amended complaint that there are acts of infringement in this District

through the “selling and offering for sale products that infringe the asserted patent, directly or 

through intermediaries as alleged herein.” ECF No. 1 at 2. Here, ZTE claims this pleading is not 

specific enough to show that acts of infringement occurred in this District. Motion at 17. WSOU, 

in turn, claims that ZTE makes “no serious effort” to dispute WSOU’s allegation concerning acts 

of infringement in this District. Resp. at 8. In its Reply, ZTE addresses the alleged acts of 

infringement but provides no evidence in support of its claim. Reply at 3, fn. 10. Thus, viewing the 

facts in the light most favorable to the Plaintiff, the Court takes as true the claim that ZTE has 

committed acts of infringement in this District. Ambraco, Inc., 570 F.3d at 237-38. The Court now

a. Acts of Infringement

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 turns to the Cray factors. 

b. Regular and Established Place of Business

i. Physical Place

WSOU alleges that there are cell towers and adjacent buildings where ZTE installs and 

services its equipment. Resp. at 9. In furthering its argument, WSOU relies upon In re Google 

LLC, 949 F.3d 1338, 13943 (Fed. Cir. 2020), in which the Court determined Google’s “GGC 

servers” satisfied the first Cray factor since the servers were “physically located in the district 

in a fixed, geographical location.” Id. Like the GGC servers, the structures in question are in a 

fixed, geographical location. Id. However, as ZTE points out in its Response, there is no 

indication that these cell towers and adjacent buildings actually contain ZTE equipment. Reply 

at 4. Indeed, the images of the structures produced by WSOU reveal no ZTE signs, no exposed 

ZTE equipment, and no ZTE personnel on the premises. Id. 

WSOU also points to CEVA warehouses in this District, which ZTE allegedly uses to store 

equipment. Resp. at 12. However, WSOU provides no evidence that these warehouses actually 

contain ZTE equipment. The Court thus fails to see how these CEVA warehouses 

constitute “physical places” of ZTE. Accordingly, the Court finds that ZTE does not have a 

physical place in this District. 

ii. Regular and Established Place of Business

Moreover, even if ZTE had a physical place in this District, WSOU cannot prove that ZTE 

has a regular and established place of business in this District. “The venue statute should be read 

to exclude agents' activities, such as maintenance, that are merely connected to, but do not 

themselves constitute, the defendant's conduct of business in the sense of production, storage, 

transport, and exchange of goods or services.” In re Google LLC, 949 F.3d 1338, 1347 (Fed. Cir. 

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2020).

WSOU argues that the cell towers discussed above are regular and established places of 

business since there is a contract between a third party, Gogo, and ZTE, which requires ZTE 

to service these cell towers for a minimum of three months. Resp. at 10. However, according to 

the Federal Circuit, maintenance is not enough to demonstrate a regular and established 

place of business. In re Google LLC, 949 F.3d at 1347. Therefore, the Court finds that ZTE 

does not have a regular and established place of business in this District. 

iii. “Of the Defendant”

Finally, even if ZTE had a physical, regular and established place of business in this 

District, WSOU cannot prove that any of the cell towers or warehouses in question are owned by 

ZTE. Here, WSOU alleges that these cell towers store ZTE equipment and are serviced by ZTE 

personnel. However, as noted above, WSOU never clearly establishes that these cell towers

contain ZTE equipment as there are no ZTE signs, no exposes ZTE equipment, no ZTE personnel 

on the premise. Reply at 4. Furthermore, ZTE does not own, lease, operate, manage, maintain, or 

otherwise exercise possession or control over offices, warehouses, stores, servers, computers, 

furniture, storage facilities, distribution facilities, post boxes, showrooms, manufacturing facilities, 

or other facilities, or other real or personal proper in this District. Motion at 18. As to the

warehouses, WSOU itself admits that they are owned by CEVA – not ZTE. Resp. at 5-6, 12. The

Court thus finds that there is no place of business “of the defendant” in this District. 

CONCLUSION

Here, WSOU is unable to prove that venue is proper against ZTA nor ZTX. Neither 

company resides in this District and neither company has a regular and established place of 

business within this District. 

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IT IS THEREFORE ORDERED that Defendant’s Motion to Dismiss (ECF No. 47) is 

GRANTED. It is further ORDERED that the case is DISMISSED. 

SIGNED this 6th day of August 2021. 

ALAN D ALBRIGHT

UNITED STATES DISTRICT JUDGE

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