Surprise! A branded BMW dealership isn’t enough for venue even if they are infringing your patents there.

 

Jake Mace Profile Picture by: Jake Mace | February 7, 2018

In patent infringement cases, venue can be established either: a) where a defendant resides (e.g., where it is incorporated), or b) where a defendant has committed acts of infringement AND has a regular and established place of business.

In West View Research, LLC v. BMW of North America, LLC et al., the Southern District of California granted a motion to transfer due to improper venue. West View Research filed this patent infringement case basing venue on the presence of BMW dealerships in the district, such as the one located in San Diego and pictured above. The court held BMW of North America did not have a regular and established place of business because these dealerships “are separate corporate entities” and that BMW of North America is not a “parent corporation” and does not “own any interest in the dealerships.”

This is a case of missing the forest for the trees. It’s not like the plaintiff was trying to establish venue through a “Ron’s Import Cars” dealership that happened to sell beamers. This is a BMW-branded dealership exclusively selling BMW cars that they acquired directly from BMW of North of America.

How is this not a regular and established place of business for BMW?

Well the court goes into details about how there is a lack of control over the dealerships and how they shouldn’t collapse the corporate forms… blah blah blah. The court is missing the point. This isn’t about being liable in a certain venue simply because your products are being sold there. No. BMW of North America authorized this dealership to sell their cars using their name knowing full well where it was located and if BMW’s cars are infringing someone’s patents there, then the patent owner should be able to sue them in that forum.

**For more information, see: West View Research, LLC v. BMW of North America, LLC et al, 3-16-cv-02590 (CASD February 5, 2018, Order) (Sammartino, USDJ)

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