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IN THE UNITED STATES DISTRICT COURT 

FOR THE NORTHERN DISTRICT OF ILLINOIS 

EASTERN DIVISION 

Script Transform, LLC 

 Plaintiff, 

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 v. ) No. 20-CV-3872 

Motorola Mobility, LLC 

 Defendant. 

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Memorandum Opinion and Order 

 In this action, plaintiff alleges that Motorola Mobility, LLC 

(“Motorola”) “sells, offers to sell, and/or uses products and 

services” that infringe plaintiff’s patent covering video-enabled 

baby monitoring technologies and “introduces infringing products and 

services into the stream of commerce knowing that they would be sold 

and/or used in this judicial district and elsewhere in the United 

States.” Compl. at 2. Motorola seeks to dismiss the action for 

improper venue under Fed. R. Civ. P. 12(b)(3) on the ground that 

Motorola’s only connection to the accused products is that it: 1) 

licenses the MOTOROLA trademark to Binatone Electronics 

International, Limited (“Binatone”), a Hong Kong entity that 

manufactures the accused products outside of the United States and 

provides the products to its U.S. affiliate, the Exclusive Group, 

LLC, an Indiana entity, for marketing and sale throughout the United 

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States; and 2) displays information Binatone provides about accused 

products on a website Motorola owns. Because Motorola’s 

uncontroverted evidence establishes that it does not conduct any 

potentially infringing activity in this judicial district, I grant 

its motion. 

I. 

 The venue analysis in this case is substantively governed by 

the Federal Circuit’s interpretation of 28 U.S.C. § 1400(b), “the 

sole and exclusive provision controlling venue in patent 

infringement actions”). TC Heartland LLC v. Kraft Foods Grp. Brands 

LLC, 137 S. Ct. 1514, 1519 (2017). That section provides that “[a]ny 

civil action for patent infringement may be brought in the judicial 

district where the defendant resides, or where the defendant has 

committed acts of infringement and has a regular and established 

place of business.” In TC Heartland, the Supreme Court reaffirmed 

that “a domestic corporation ‘resides’ only in its State of 

incorporation for purposes of the patent venue statute. Id. at 1517. 

As all agree, Motorola is incorporated in Delaware and has a regular 

and established place of business in this judicial district. The 

only disputed issue, then, is whether Motorola “has committed acts 

of infringement” in this district. 

To resolve that dispute in the context of a Rule 12(b)(3) 

motion, I look to the procedural requirements of the Seventh Circuit. 

RAH Color Techs., LLC v. Quad/Graphics, Inc., No. 17 C 4931, 2018 WL 

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439210, at *1 (N.D. Ill. Jan. 16, 2018). “Under Rule 12(b)(3), which 

allows for dismissal for improper venue, the district court assumes 

the truth of the allegations in the plaintiff’s complaint, unless 

contradicted by the defendant’s affidavits.” Id. (quoting Deb v. 

SIRVA, Inc., 832 F.3d 800, 809 (7th Cir. 2016)). Accordingly, I may 

consider evidence the parties submit on the issue of venue when 

ruling on a 12(b)(3) motion to dismiss without converting the motion 

to one for summary judgment. Faulkenberg v. CB Tax Franchise Sys., 

LP, 637 F.3d 801, 810 (7th Cir. 2011). It is plaintiff’s burden to 

establish that venue is proper, but plaintiff’s evidentiary burden 

is low, as I resolve all factual conflicts in its favor. RAH Color 

Techs., 2018 WL 439210, at *1 (citing cases). 

II. 

Although the complaint pleads that Motorola “sells, offers to 

sell, and/or uses” infringing products and “introduced” such 

products into the stream of commerce knowing they would be sold or 

used in this district, plaintiff offers no response to the testimony 

of Motorola’s witnesses stating that Motorola has never made, used, 

or sold the accused products, nor has it imported them into the 

United States for these purposes. See Murawski Decl. at ¶ 16; Ulusoy 

Decl. at ¶ 8. As these witnesses explain, Binatone manufactures the 

accused products, which are branded MOTOROLA pursuant to Binatone’s 

licensing agreement with Motorola, and the Exclusive Group imports 

the products into the United States and distributes them for sale. 

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Murawski Decl. at ¶¶ 8-10; Ulusoy Decl. at ¶¶ 6-7. Rather than offer 

any contrary evidence, plaintiff zeros in on the narrow theory that 

Motorola “offers to sell” the accused products in this judicial 

district by depicting them on websites it owns alongside a clickable 

button with the words “Buy Now.” But this theory does not survive 

scrutiny because the undisputed evidence of Motorola’s activities 

shows that they do not amount to an “offer to sell” as the Federal 

Circuit construes that phrase for infringement purposes. 

The Federal Circuit defines “liability for an ‘offer to sell’ 

under section 271(a) according to the norms of traditional 

contractual analysis.” MEMC Elec. Materials, Inc. v. Mitsubishi 

Materials Silicon Corp., 420 F.3d 1369, 1376 (Fed. Cir. 2005) 

(internal quotation marks and citation omitted). This means that the 

offeror must “communicate[ ] a manifestation of willingness to enter 

into a bargain, so made as to justify another person in understanding 

that his assent to that bargain is invited and will conclude it.” 

Id. (original alterations, internal quotation marks and citations 

omitted). The evidence to which plaintiff points does not satisfy 

this standard. 

To begin, the Motorola-owned websites contain no pricing 

information, which plaintiff acknowledges is generally required for 

an offer to sell. See, e.g., Indag GmbH & Co. v. IMA S.P.A, 150 F. 

Supp. 3d 946, 966 (N.D. Ill. 2015) (“To constitute an ‘offer to sell’ 

under traditional contract principles, an offer requires a definite 

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price term, otherwise the offeree could make the offer into a binding 

contract by a simple acceptance.”). It is true that there are 

exceptions to this rule, for example, when the offeror expresses an 

unequivocal intent to enter into a bargain at a price that is not 

fixed but is promised to be lower than the patentee’s price. See

Marposs Societa Per Azioni v. Jenoptik Auto. N. Am., LLC, 262 F. 

Supp. 3d 611, 617 (N.D. Ill. 2017) (explaining that under such 

circumstances, “the lack of a fixed price would be attributable to 

the nature of the offer itself and would not betoken a lack of intent 

to enter into a bargain.”). The circumstances here, however, bear no 

resemblance to those in Marposs. 

In Marposs, the defendant made a sales presentation of the 

accused device in an effort to obtain business, and it expressed a 

willingness to sell the device for a price lower than the price the 

patentee offered. Here, by contrast, not only does Motorola provide 

no pricing information on the websites to which plaintiff points, 

but a consumer wanting to learn the price of an accused product must 

leave these websites and navigate to a different platform not owned 

or controlled by Motorola for pricing information and, if desired, 

to complete a purchase. Plaintiff speculates that “a typical consumer 

would have a reasonable apprehension of what the price was for 

purchasing” the products displayed on the Motorola-owned website, 

but this assertion lacks any evidence in the record, and I am not 

persuaded that a reasonable consumer would believe, given the limited 

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information on Motorola’s websites, that by clicking the “Buy Now” 

button, he or she would conclude a bargain with Motorola. 

At most, Motorola’s websites amount to advertisements inviting 

consumers to take further action. Under general contract principles, 

however, “advertisements, catalogs, price lists and other 

promotional materials are generally considered invitations to 

solicit offers, not contractual offers themselves,    unless they 

contain language of commitment or some invitation to take action 

without further communication,” and thus do not amount to “offers to 

sell” for infringement purposes. Engate, Inc. v. Esquire Deposition 

Servs., LLC, No. 01- C 6204, 2003 WL 22117805, at *9 (N.D. Ill. Sept. 

10, 2003), aff’d, 208 F. App'x 946 (Fed. Cir. 2006); see also

Mahurkar v. C.R. Bard, Inc., No. 01 C 8452, 2003 WL 355636, at *7 

(N.D. Ill. Feb. 13, 2003) (website and brochure lacking sufficient 

information to “enable[] a consumer to make an informed choice to 

purchase one of the accused products” did not amount to an “offer to 

sell”). The undisputed evidence here warrants application of the 

general rule that pricing information is required, not the exception. 

 Indeed, the record before me confirms that Motorola’s role in 

the sale and marketing of the accused products is extremely narrow: 

it receives royalties for use of the MOTOROLA mark pursuant to a 

non-exclusive licensing agreement with Binatone, and it advertises 

the products using information that Binatone provides on websites 

that it owns. That is all. It never takes title to the accused 

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products (and so cannot transfer title to a purchaser), and it has 

no access to inventory. Murawski Decl. at ¶ 16; Ulusoy Decl. at ¶ 10. 

Moreover, Motorola informs potential customers through various means 

that Binatone, not Motorola, is the manufacturer of the accused 

products, and that the Exclusive Group, not Motorola, is the seller 

of those products. Ulusoy Decl. at ¶¶ 15-16. These undisputed facts 

cannot be reconciled with plaintiff’s interpretation of Motorola’s 

websites as offering to sell the accused products. 

III. 

For the foregoing reasons, I conclude that plaintiff has not 

carried its burden of establishing that venue is proper in this 

district. Accordingly, Motorola’s motion is granted and the 

complaint is dismissed without prejudice to refiling the action 

against the proper defendant(s) in an appropriate venue. 

 ENTER ORDER:

 

_____________________________ 

 Elaine E. Bucklo

 United States District Judge 

Dated: March 1, 2021 

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