Mitek Systems, Inc. v. United Services Automobile Association
- Edward Chen
- 3:19-cv-07223
- U.S. District Court · Northern District of California
- 3
In Mitek Systems v. United Services Automobile Association, Judge Chen ordered supplemental briefing on patent-action venue while reserving USAA’s jurisdictional and transfer requests.
Mitek Systems, Inc. and United Services Automobile Association; both parties were required to file supplemental briefing on venue within one week.
What happened
Mitek Systems asked the court to declare that it did not infringe four patents held by United Services Automobile Association. USAA moved to dismiss because it said there was no legal dispute between the parties and alternatively asked the court to transfer the case to Texas.
The court did not decide those requests. Instead, it ordered the parties to file supplemental briefs about whether the Northern District of California was a proper venue for Mitek’s claims.
The court focused on where the alleged direct and indirect infringement occurred, including how venue should be assessed when indirect infringement involves customers in multiple districts. Judge Edward M. Chen ordered the briefs filed within one week of the March 25, 2020 order.
The detailed version
- Mitek Systems, Inc. v. United Services Automobile Association · No. 3:19-cv-07223
- Edward Chen
- Mar. 25, 2020
Background
Mitek Systems, Inc. sought a declaration that it did not infringe four patents—the ‘779, ‘517, ‘090, and ‘571 patents—held by United Services Automobile Association (USAA). USAA filed a motion to dismiss for lack of subject-matter jurisdiction, arguing that there was no case or controversy between the parties. USAA alternatively asked the court to transfer the case to the Eastern District of Texas under 28 U.S.C. § 1404(a).
Court’s Analysis
The court stated that, assuming subject-matter jurisdiction existed and the court did not decline to hear the declaratory-judgment claims, Mitek had to show that the Northern District of California was a proper venue. The court explained that if venue was improper, transfer would be appropriate under 28 U.S.C. § 1406(a).
Mitek appeared to rely on 28 U.S.C. § 1391(b)(2), which allows venue where a substantial part of the events or omissions giving rise to a claim occurred. The court distinguished between the conduct relevant to whether a legal dispute exists—such as USAA’s patent-enforcement activities—and the underlying noninfringement claim. It stated that venue for a patent noninfringement declaratory-judgment action generally concerns where the allegedly infringing conduct occurred, or possibly where the patent is held.
Because the complaint focused mainly on alleged indirect infringement—contributory or induced infringement involving Mitek’s customers—the court directed the parties to address where that alleged indirect infringement substantially occurred, particularly when the customers were located in more than one district. The parties also had to address where the alleged direct infringement substantially occurred.
Order and Effect
The court ordered the parties to file supplemental briefs addressing whether the Northern District of California was a proper venue under § 1391(b)(2). The briefs were due within one week of the order. The opinion did not grant or deny USAA’s motion to dismiss or its alternative transfer request. Judge Edward M. Chen entered the order on March 25, 2020.
Read the full 3-page opinion on CourtListener, the free public archive maintained by the Free Law Project.