United States District Court, D. Colorado
DAVID L. HILDEBRAND, Plaintiff,
WILMAR CORPORATION, Defendant.
RECOMMENDATION OF UNITED STATES MAGISTRATE
Michael E. Hegarty, United States Magistrate Judge.
Wilmar Corporation seeks to dismiss this patent infringement
case pursuant to Federal Rule of Civil Procedure 12(b)(3).
Although Wilmar requests oral argument, I find that further
argument would not assist in the adjudication of this motion.
recommend granting Wilmar's Motion to Dismiss. I first
find that, under 28 U.S.C. § 1400(b), venue is not
proper in the United States District Court for the District
of Colorado. Additionally, I recommend dismissing this case
without prejudice, because Plaintiff David L. Hildebrand has
not shown that the interests of justice favor transferring
the case to a different district. Accordingly, I decline to
reach Wilmar's argument that dismissal with prejudice is
appropriate pursuant to Federal Rule of Civil Procedure
following are factual allegations Mr. Hildebrand makes in his
Complaint. Between 2007 and 2009 Mr. Hildebrand learned that
Wilmar was importing and distributing goods that duplicated
his patented product. Compl. 2, ECF No. 1. As a result, in
February 2009 Mr. Hildebrand filed a complaint in this
District for patent infringement against Wilmar and several
other infringing corporations. Id. Wilmar and Mr.
Hildebrand ultimately settled that case. Id. at 3.
Pursuant to the settlement agreement, Wilmar paid Mr.
Hildebrand a fixed amount to compensate him for Wilmar's
past and current sales of the allegedly infringing product.
Id. at 3-4; Settlement Agreement 1-2, ECF No. 8-1.
Additionally, Wilmar agreed to pay Mr. Hildebrand a royalty
for any future sales of products covered by Mr.
Hildebrand's patent. Settlement Agreement 2. According to
Mr. Hildebrand, Wilmar has manufactured, sold, and used
products that infringe his patent without paying the required
royalty. Compl. 4.
on the above allegations, Mr. Hildebrand filed his Complaint
on November 22, 2017. Compl., ECF No. 1. Mr. Hildebrand
asserts two claims for relief: (1) infringement of his patent
in violation of 35 U.S.C. § 271(a), and (2) an
accounting of all income Wilmar realized as a result of its
infringing acts. Id. at 4-6.
December 21, 2017, Wilmar responded to the Complaint by
filing the present Motion to Dismiss and Alternative Motion
to Transfer, ECF No. 7. Wilmar contends the Court should
dismiss this case, because venue is improper in the District
of Colorado pursuant to 28 U.S.C. § 1400(b).
Id. at 4-8. Specifically, Wilmar asserts it neither
resides nor has a regular and established place of business
in Colorado. Id. at 6. Wilmar further argues the
interests of justice do not favor transferring this case.
Id. at 8. Alternatively, Wilmar asserts that Mr.
Hildebrand fails to state a claim pursuant to Federal Rule of
Civil Procedure 12(b)(6). Id. at 8-13.
response, Mr. Hildebrand first argues the District of
Colorado is a proper venue. Resp. to Mot. to Dismiss 12, ECF
No. 21. According to Mr. Hildebrand, the stores through which
Wilmar sells its goods (including in Colorado) constitute
established places of business of Wilmar. Id.
Furthermore, Mr. Hildebrand contends that he states a patent
infringement claim. Id. at 13-14. Wilmar
subsequently filed a Reply in Support of its Motion, ECF No.
Dismissal under Fed.R.Civ.P. 12(b)(3)
standard under 12(b)(3) is generally the same as a motion to
dismiss for lack of personal jurisdiction.” H &
H Transformer, Inc. v. Battelle Energy All., LLC, No.
09-cv-00442-WYD-BNB, 2009 WL 3530370, at *3 (D. Colo. Oct.
23, 2009). Thus, the plaintiff bears the burden of making a
prima facie showing that venue is proper. Behegen v.
Amateur Basketball Ass'n, 744 F.2d 731, 733 (10th
Cir. 1984); Nagim v. Jackson, No.
10-cv-00328-PAB-KLM, 2010 WL 4318896, at *2 (D. Colo. Aug.
10, 2010). In evaluating the sufficiency of the
plaintiff's showing, courts must accept the
plaintiff's allegations as true. Wenz v. Memery
Crystal, 55 F.3d 1503, 1505 (10th Cir. 1995).
U.S.C. § 1400(b) governs venue determinations in patent
infringement cases. See TC Heartland, LLC v. Kraft Foods
Grp. Brands, LLC, 137 S.Ct. 1514, 1519 (2017)
(“§1400(b) ‘is the sole and exclusive
provision controlling venue in patent infringement actions,
and . . . is not to be supplemented by . . . §
1391(c).'” (quoting Fourco Glass Co. v.
Transmirra Prods. Corp., 353 U.S. 222, 229 (1957),
superseded by statute on other grounds)). Section
1400(b) provides that venue is proper “in the judicial
district where the defendant ...