IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

WACO DIVISION

WSOU INVESTMENTS, LLC d/b/a )

BRAZOS LICENSING AND )

DEVELEOPMENT, ) Case No. 6:20-cv-491-ADA

)

Plaintiff, )

v. )

)

ZTE CORPORATION, ZTE (USA), INC., )

AND ZTE (TX), INC., )

)

Defendants )

______________________________________________________________________________

DEFENDANT ZTE (TX)’S MOTION TO DISMISS OR IN THE ALTERNATIVE 

TRANSFER VENUE

______________________________________________________________________________

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Defendant ZTE (TX), Inc. (“ZTE TX”) respectfully requests the Court dismiss Plaintiff 

WSOU Investments, LLC’s (“WSOU’s”) Complaint against it under FED. R. CIV. P. 12(b)(3) for 

improper venue under 28 U.S.C. § 1400(b) because it is a resident of the Northern District of Texas 

(“Northern District”) with no regular and established place of business in the State of Texas; and 

under FED. R. CIV. P. 12(b)(6) for failure to state a claim since ZTE TX is the wrong entity to 

defend this action. In the alternative, for purposes of economy since ZTE TX is the wrong entity, 

if ZTE (USA) Inc. (“ZTE USA”) is transferred under 28 U.S.C. § 1404(a) or § 1406(a) to its 

appropriate venue, which is the Northern District, then ZTE TX should be transferred with it.

BACKGROUND

ZTE USA imports, markets, sells, and offers for sale handsets and network equipment (such 

as the devices accused in this case) in the United States. ZTE TX does not. Ex. 1, Shan Decl. at 

¶¶ 8, 10. Rather, ZTE TX is a research and development entity that conducts research unrelated to

specific handsets or network equipment (such as the devices accused in this case) for its sole 

customer, ZTE Corporation (“ZTE Corp.”), and offers technical marketing support in connection 

with ZTE Corp. devices. Id. at ¶¶ 6-7.

ZTE TX is a Texas company with its registered agent in the Northern District. Id. at 18. It 

has no place of business anywhere in the State of Texas3⁄4let alone the Western District of Texas 

(“Western District”). Id. at ¶¶ 2, 3, 11-13. Nonetheless, since TC Heartland LLC v. Kraft Foods 

Group Brands LLC, 137 S. Ct. 1514, 1516, 197 L. Ed. 2d 816 (2017) was decided, and a series of 

subsequent cases established that venue in Texas against ZTE USA lies in the Northern District,1

1 See, e.g., Am. GNC Corp. v. ZTE Corp., No. 4:17CV620, 2017 WL 5157700, at *1 (E.D. Tex. 

Nov. 7, 2017), mandamus granted, order vacated sub nom. In re ZTE (USA) Inc., 890 F.3d 1008 

(Fed. Cir. 2018); AGIS Software Dev., LLC v. ZTE Corp., No. 2:17-CV-00517-JRG, 2018 WL 

4854023, at *4–5 (E.D. Tex. Sept. 28, 2018); Fractus, S.A. v. ZTE Corporation et al., Order 

Granting Motion to Transfer to the N.D.Tex., No. 2:17-cv-00561-JRG, Dkt. No 104, E.D. Tex.

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plaintiffs such as WSOU bringing cases in other districts of Texas alleging patent infringement 

based on ZTE devices imported, marketed, sold, and offered for sale in the US by ZTE USA often 

name other entities (including ZTE TX) as defendants.

Here WSOU filed 11 separate Complaints, each alleging a single count of patent 

infringement (one patent per Complaint), and each naming three distinct defendants (ZTE 

Corporation, ZTE (USA), Inc., and ZTE (TX), Inc.), on June 3, 2020.2 WSOU asserts venue over 

ZTE TX under 28 U.S.C. §1391 as well as §1400(b). Complaint at ¶ 10. WSOU’s sole factual 

claim as to ZTE TX is an assertion “ZTE (TX) has maintained a place of business at 7000 N MoPac Expressway 200 Austin, TX 7873 [sic].” Id. But ZTE TX has not had a place of business at 

that location in more than two years. Ex. 1, Shan Decl. at ¶ 14.

VENUE IS IMPROPER AS TO ZTE TX ON ALL GROUNDS

1. Applicable Law

“Venue requirements exist for the benefit of defendants,” Hoover Group, Inc. v. Custom 

Metalcraft, Inc., 84 F.3d 1408, 38 USPQ2d 1860 (Fed. Cir. 1996), and they are mandatory. See 28 

U.S. Code § 1406 (“The district court of a district in which is filed a case laying venue in the wrong 

division or district shall dismiss, or... transfer such case to any district or division in which it could 

have been brought.”) (emphasis added). “[T]he Supreme Court has cautioned against a broad 

reading of the venue statute.” In re Google, 949 F.3d 1338 (Fed. Cir. 2020).

2 See 6:20-cv-00487, 6:20-cv-00488, 6:20-cv-00489, 6:20-cv-00490, 6:20-cv-00491, 6:20-cv00492, 6:20-cv-00493, 6:20-cv-00494, 6:20-cv-00495, 6:20-cv-00496, and 6:20-cv-00497. ZTE 

TX is filing effectively identical venue motions in each of these cases. On the same day it filed the 

new cases, without explanation, Plaintiff dismissed 11 previously-filed cases (6:20-cv-00255, 6:20-

cv-00254, 6:20-cv-00242, 6:20-cv-00240, 6:20-cv-00238, 6:20-cv-00231, 6:20-cv-00229, 6:20-cv00228, 6:20-cv-00224, 6:20-cv-00216, and 6:20-cv-211), now closed.

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28 U.S.C. §1400(b) “is the sole and exclusive provision controlling venue in patent 

infringement actions.” TC Heartland, 137 S. Ct. at 1519. 28 U.S.C. § 1400(b) provides that patent 

infringement actions “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.” Id. Under the first prong of § 1400(b), “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 Inc., 890 F.3d 978, 986 (Fed. Cir. 2018). Under the second prong of § 1400(b), a 

“regular and established place of business” has three general requirements: “(1) there must be a 

physical place in the district; (2) it must be a regular and established place of business; and (3) it 

must be the place of the defendant.” In re Cray Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). “If any 

statutory requirement is not satisfied, venue is improper under

§ 1400(b).” Id.

Patent infringement venue is a matter of Federal Circuit law. In re ZTE (USA) Inc., 890 

F.3d 1008, 1012 (Fed. Cir. 2018). “[T]he Plaintiff bears the burden of establishing proper venue.” 

Id. at 1013. In an action involving multiple defendants, venue and jurisdiction requirements must 

be met as to each defendant. Magnacoustics, Inc. v. Resonance Technology Co., No. 97–1247, 1997 

WL 592863, at *1 (Fed. Cir. Sept. 25, 1997).

In assessing venue under § 1400(b), the Court must look at the facts that existed at the time 

the suit was filed. Pers. Audio, LLC v. Google, Inc., 280 F. Supp. 3d 922, 931 (E.D. Tex. 2017). 

Where venue is improper, 28 U.S.C. § 1406(a) provides that the Court “shall dismiss, or if it be in 

the interest of justice, transfer such a case to any district or division in which it could have been 

brought.”

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2. 28 U.S.C. §1391 Is Inapplicable to ZTE TX

Venue must be established against ZTE TX separately. Magnacoustics, Inc., No. 97–1247, 

1997 WL 592863, at *1. Because 28 U.S.C. §1400(b) is the sole basis for venue in patent 

infringement actions against US domestic defendants, TC Heartland, 137 S.Ct. at 1517, and ZTE 

TX is a Texas corporation, Complaint at ¶ 5, 28 U.S.C. §1391 is inapplicable and does not provide 

a basis for venue against ZTE TX in the Western District or any other district.

3. ZTE TX Has No Regular and Established Place of Business in This District

28 U.S.C. §1400(b) offers two alternative bases for venue in patent infringement cases: a 

judicial district “where the defendant has committed acts of infringement and has a regular and 

established place of business,” or “the judicial district where the defendant resides.” Id. 

The place-of-business prong of § 1400(b) requires a plaintiff to prove two separate elements 

to establish venue: that “the defendant has committed acts of infringement” and “has a regular and 

established place of business” in the district. 

To show ZTE TX has a “regular and established place of business” in the Western District, 

WSO must identify a place of business meeting three independent requirements: “(1) there must be 

a physical place in the district; (2) it must be a regular and established place of business; and (3) it 

must be the place of the defendant.” Cray, 871 F.3d at 1360. A “‘regular and established place of 

business’ requires the regular, physical presence of an employee or other agent of the defendant 

conducting the defendant’s business at the alleged ‘place of business.’” Google, 949 F.3d at 1345. 

“If any statutory requirement is not satisfied, venue is improper under § 1400(b).” Cray, 871 F.3d 

at 1360.

Plaintiff’s venue allegations fail to meet all three of these requirements. First, because 

venue is measured at the time suit is filed, Pers. Audio, 280 F. Supp. at 931, and the 6500 River 

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Place location closed more than two years ago, see Ex. 1, Shan Decl. at ¶ 14, it is irrelevant to the 

venue analysis in this case. There is no physical location of ZTE TX in the Western District. 

Second, because the identified location closed long before suit was filed, it is not “regular and 

established,” and Plaintiff does not suggest that it is. Complaint at ¶ 10. Third, to the extent 

Plaintiff is trying to blur distinctions between locations of different ZTE entities, Plaintiff cannot 

show venue as to any of those entities because it cannot show any physical location belongs to a 

specific entity.

ZTE TX has no place of business in the Western District. Ex. 1, Shan Decl. at ¶¶ 11-12. 

ZTE TX does not market or advertise as having a place of business in the Western District of 

Texas. Id. at ¶ 13. ZTE TX does not conduct any business (including any banking activities) out of 

any location in the Western District of Texas. Id. at ¶ 14. And ZTE TX does not advertise or 

represent that it has any place of business, address, or telephone listing in the Western District of 

Texas. Id. at ¶ 15. Furthermore, no employees of ZTE TX live or work at any location within the 

Western District of Texas. Id. at ¶ 16.

Because ZTE TX does not have a “physical, geographical location in the district,” it does 

not have a regular and established place of business in the Western District as a matter of law, and 

venue is improper under Rule 12(b)(3). Google, 949 F.3d at 1343.

4. ZTE TX Has Not Committed Infringement in This District

35 U.S.C. § 271(a) requires, inter alia, that a patent infringement plaintiff show an alleged 

infringer “makes, uses, offers to sell, [] sells... or imports” a patented invention. ZTE TX does not 

“make, offer[] to sell, or sell[]” any products at all (and therefore cannot make, offer to sell, or sell 

any device accused by WSOU). Shan Decl. at ¶ 8. ZTE TX’s only use of any handsets or network 

devices is for internal purposes. Id.at ¶¶ 9-10. Thus, any importation is only for the purpose of 

such internal use. Id. at ¶¶ 9-10. Since ZTE TX has no place of business in the Western District, 

Case 6:20-cv-00491-ADA Document 23 Filed 10/09/20 Page 6 of 12
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any nonincidental use (or importation for such use) by ZTE TX occurs outside of the Western 

District. Id. at ¶ 10. Consequently, venue against ZTE TX is improper here.

5. ZTE TX’s Texas Residence Is in the Northern District

Under the residence prong of § 1400(b), patent infringement cases may be brought only “in 

the judicial district where the defendant resides.” 28 U.S.C. §1400(b). “[F]or purposes 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.” BigCommerce, 890 F.3d at 986.

Because ZTE TX does not maintain any place of business within the State of Texas, Ex. 1, 

Shan Decl. at ¶ 11, its district for infringement venue purposes is determined by its registered 

office. BigCommerce, 890 F.3d at 986. ZTE TX’s registered office is located at CT Systems, 1999 

Bryan St. Suite 900, Dallas, TX, 75201. Id. at ¶ 18. This is in Dallas County, which is in the 

Northern District. See https://www.usmarshals.gov/district/navigation/tx.htm. Consequently ZTE 

TX is solely a resident of the Northern District for purposes of residency-based patent venue and 

venue against ZTE TX in the Western District is improper under Rule 12(b)(3).

6. Dismissal or Transfer is Mandatory under 28 U.S.C. § 1406

In contrast with 28 U.S.C. § 1404(a) discussed below, the language of 28 U.S.C. § 1406 is 

mandatory: “The district court of a district in which is filed a case laying venue in the wrong 

division or district shall dismiss, or... transfer such case to any district or division in which it could 

have been brought.”) (emphasis added). See, e.g., Patent Holder LLC v. Lone Wolf Distributors, 

Inc., No. 17-23060-CIV, 2017 WL 5032989, at *8 (S.D. Fla. Nov. 1, 2017), citing Patent Holder, 

LLC v. Magill, et al., No. 1:17-22826-Civ, Dkt. No. 32, at *5 (S.D. Fla. Oct. 10, 2017) (Ungaro, 

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J.)(“[in] a patent case [] venue is governed by § 1400(b), which is not discretionary ... the Court 

must transfer venue”).

Accordingly, ZTE TX respectfully requests that the case against it be dismissed; or in the 

alternative, transferred to the Northern District.

THE NORTHERN DISTRICT OF TEXAS IS A CLEARLY MORE CONVENIENT VENUE

28 U.S.C. § 1404(a) permits a matter to be transferred “[f]or the convenience of parties and 

witnesses, in the interest of justice.” Id. Under this statute, the matter may be moved “to any other 

district or division where it might have been brought or to any district or division to which all 

parties have consented.” Id. Thus, the first issue to be determined is whether the proposed judicial 

district is one in which the claim could have been filed. In re Volkswagen AG, 371 F.3d 201, 203 

(5th Cir. 2004). Venue as to ZTE TX under 28 U.S.C. § 1400(b) would be proper in the district 

where it resides (the Northern District).3

The onus is on the party seeking transfer to demonstrate that the transferee venue is clearly 

more convenient than the venue in which the action was filed. Tricon Precast, Ltd. v. Easi Set 

Industries, Inc., 395 F.Supp.3d 871, 878 (S.D. Tex. 2019). If the moving party meets this burden, 

good cause exists for the transfer to occur. In re Volkswagen of America, Inc., 545 F.3d 304, 315 

(5th Cir. 2008). In determining whether the requisite convenience is present, the court weighs four 

private interest factors and four public interest factors. Id. 4 

3 Because ZTE TX has regular and established places of business in Morristown, N.J. and San 

Diego, CA, venue would also be proper (but not as convenient) in the District of New Jersey or the 

Southern District of California.

4 “The private interest factors are: (1) the relative ease of access to sources of proof; (2) the 

availability of compulsory process to secure the attendance of witnesses; (3) the cost of attendance 

for willing witnesses; and (4) all other practical problems that make trial of a case easy, expeditious 

and inexpensive . . . The public interest factors are: (1) the administrative difficulties flowing from 

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None of these factors are exhaustive or exclusive, neither is any factor dispositive, Tricon 

Precast, Ltd. v. Easi Set Industries, Inc. 395 F.Supp.3d at 878. In this case, because ZTE TX is an 

incorrect party, the factors have little bearing on venue except the various “practical problems that 

make trial of a case easy, expeditious and inexpensive.” Volkswagen, 545 F.3d at 315. Practical 

problems associated with judicial economy are a significant consideration. Garrett v. Hanson, 429 

F.Supp.3d 311, 319 (E.D. Tex. 2019). “Particularly, the existence of duplicative suits involving the 

same or similar issues may create practical difficulties that will weigh heavily in favor or against 

transfer.” Id. 

Since ZTE TX is an incorrect party, it is clearly most convenient for its case to follow the 

companion case against ZTE USA, which imports, offers for sale, and sells in the United States the 

products accused by WSOU of infringing its U.S. Patents and which is represented by the same 

counsel as ZTE TX.5 Keeping the cases together will avoid duplication of effort for the parties and 

the Court alike. By contrast, since the Plaintiff is the same as to all three Defendants, and the 

claims are identical as to all three Defendants (indeed, although improper, plaintiff’s claims make 

no distinction among the different defendants), splitting the cases by severing the 11 cases against 

ZTE TX from the 11 cases against ZTE USA would be “inappropriate in this situation, as doing so 

would require the same case to be litigated twice in two different forums.” AGIS Software Dev., 

LLC v. ZTE Corp., No. 2:17-CV-00517-JRG (ECF. No. 85), 2018 WL 4854023, at *2 (E.D. Tex. 

Sept. 28, 2018), citing In re Rolls Royce Corp., 775 F.3d 671, 680 (5th Cir. 2014) (A court “should 

court congestion; (2) the local interest in having localized interests decided at home; (3) the 

familiarity of the forum with the law that will govern the case; and (4) the avoidance of unnecessary 

problems of conflict of laws [or in] the application of foreign law.” Id. (internal citations and 

quotations omitted).

5 ZTE TX’s position here complements that of ZTE Corp., which is similarly situated to ZTE TX in 

relation to transfer under Section 1404(a).

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not sever [a case] if the defendant over whom jurisdiction is retained is so involved in the 

controversy to be transferred that partial transfer would require the same issue to be litigated in two 

cases.”) (quoting Liaw Su Teng v. Skaarup Shipping Corp., 743 F.2d 1140, 1148 (5th Cir. 1984)); 

see also B/E Aerospace, Inc. v. Zodiac Aerospace et al., 2018 U.S. Dist. LEXIS 220294, at *18 

(E.D. Tex., 2:16-cv-01417-JRG-RSP at ECF No. 207, Nov. 29, 2018) (Payne, Mag. J.) 

(recommending transfer of entire case when venue was found to be improper as to certain 

defendants because “there is no legitimate reason to retain the action against [a single defendant] in 

this district. Such an outcome would result in needless inefficiencies, particularly for a defendant 

that appears to have little direct involvement in the manufacture and sale of the accused 

[products].”) (adopted by 2019 U.S. Dist. LEXIS 13495, at *3 (E.D. Tex. 2:16-cv-01417-JRG-RSP 

at ECF No. 208, Jan. 28, 2019) (Gilstrap, J.)). Accordingly, even if venue were proper as to any of 

the defendants in this case, it would be clearly more convenient to transfer them all together to the 

Northern District. 

PRAYER

For the reasons given above, ZTE TX prays the Court dismiss this case for improper venue; 

or in the alternative, transfer it to the Northern District.

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Dated: October 9, 2020 Respectfully submitted,

/s/ Erick Robinson

Dunlap, Bennett & Ludwig PLLC 

Erick Robinson

State Bar No. 24039142 

7215 Bosque Blvd., Waco, TX 76710

Telephone: (254) 870-7302

Facsimile: (713)583-9737

Email: erobinson@dbllawyers.com

David R. Keesling, OK Bar No. 17881

Timothy S. Kittle, OK Bar No. 21979

6660 South Sheridan Road, Suite 250

Tulsa, Oklahoma 74133

(918) 998-9350 – Telephone

(918) 998-9360 – Facsimile

dkeesling@dbllawyers.com 

tkittle@dbllawyers.com 

Attorneys for Defendants

Case 6:20-cv-00491-ADA Document 23 Filed 10/09/20 Page 11 of 12
CERTIFICATE OF SERVICE

The undersigned hereby certifies that counsel of record who are deemed to have consented to 

electronic service are being served today, October 9, 2020, with a copy of this document via 

the Court’s CM/ECF system per Local Rule CV-5(b)(1).

/s/ Erick Robinson

Erick Robinson

Waco, TX 76710

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