Case 5:20-cv-00172-TKW-MJF Document 23 Filed 11/06/20 Page 1 of 8

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF FLORIDA
PANAMA CITY DIVISION

JEFFREY L. EVANS, and

DUVALL & EVANS, INC.,

Plaintiffs,

v. Case No. 5:20cv172-TKW-MJF

BEARBACK, LLC, and

JAMES M. DUVALL,

Defendants.
_________________________________/

ORDER GRANTING MOTION TO DISMISS

This case is before the Court on Defendants’ motion to dismiss (Doc. 10) and

Plaintiffs’ response in opposition (Doc. 15). No hearing is necessary to rule on the

motion, and for the reasons that follow, the Court finds that the motion is due to be

granted.

Facts1 and Procedural Background

Plaintiff Jeffrey Evans and Defendant James Duvall co-owned Plaintiff

Duvall & Evans, Inc. (D&E). In May 2017, Mr. Evans and Mr. Duvall entered into

a post-incorporation agreement in which they agreed, among other things, not to

compete “in any way” with D&E. The agreement explained that D&E’s primary

1
As alleged in the complaint.
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business was to develop and sell patented products, and it stated that “[t]he initial

product developed is known as the ‘BareBack Back Scratcher’ which shall be

patented by the corporation.”

In August 2017, Mr. Duvall assigned the patent rights for the back-scratcher

device he invented—“known as the Bareback Scratcher” [sic]—to D&E, but in

March 2018, Mr. Duvall unilaterally declared the assignment “null and void” based

on Mr. Evans alleged breach of the post-incorporation agreement. Mr. Duvall later

unilaterally dissolved D&E by filing articles of dissolution with the Florida

Department of State.

Mr. Duvall received a patent for the back-scratcher device (described in the

patent as a “back invigorator brush”) in August 2018, and he assigned the patent to

a company that he owned or controlled. In January 2019, that company assigned the

patent to Defendant Bearback, LLC.2 Bearback is selling the device in this District

(and elsewhere) through Amazon.com and other websites.

In June 2020, Plaintiffs sued Defendants in this Court alleging claims of patent

infringement against Bearback (Count I) and inducement of infringement (Count II)

and breach of contract (Count III) against Mr. Duvall. Defendants filed a motion to

2
According to the affidavit filed by Defendants with their motion to dismiss, Bearback is
owned and controlled by Jon Duvall. See Doc. 10-1, at 2 (¶5). The record does not reflect how,
if at all, Jon Duvall and Defendant James Duvall are related, but the affidavit asserts that Defendant
James Duvall has never had any interest in Bearback. Id. (¶6).

2
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dismiss the complaint under Fed. R. Civ. P. 12(b)(1), (2), (3), and (6) for failure to

state a claim, lack of personal jurisdiction, lack of subject matter jurisdiction, and

improper venue. The motion was fully briefed and is ripe for ruling.

Analysis

The Court will begin—and end—its analysis with the argument that venue is

improper in this District because that issue dispositive.3 Venue in a patent

infringement case is governed by 28 U.S.C. §1400(b), not the general venue statute.

See TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514, 1517-18

(2017) (“[T]he patent venue statute ‘alone should control venue in patent

infringement proceedings.’”) (quoting Stonite Products Co. v. Melvin Lloyd Co., 315

U.S. 561, 566 (1942)).

Section 1400(b) provides that a patent infringement action may be brought in

the judicial district (1) “where the defendant resides” or (2) “where the defendant

has committed acts of infringement and has a regular and established place of

business.” Here, neither Defendant resides in this District because, according to the

complaint, Mr. Duvall is a resident of Georgia and Bearback is a Georgia limited

liability company. See id. at 1520-21 (explaining that as applied to domestic

3
The issue of venue was one of the last issues the Court analyzed in its review of the
motion, which explains why the ruling in this Order differs from the prognostication in the Order
Denying Stay of Discovery. See Doc. 21, at 1 (concluding based on the Court’s “preliminary
peek” at the motion to dismiss that the motion would likely not be dispositive). Also, this issue
was not particularly well briefed by either side.

3
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corporations, residence refers only to the state of incorporation). Thus, venue is

proper in this District only if Defendants committed acts of infringement in this

District and they have a regular and established place of business in this District.

This standard “requires more than the minimum contacts necessary for

establishing personal jurisdiction or for satisfying the doing business standard of the

general venue provision.” See In re Cray Inc., 871 F.3d 1355, 1361 (Fed. Cir. 2017)

(citation omitted). Here, although Plaintiffs have adequately alleged that Defendants

committed acts of infringement in this District (through Bearback’s sale of the

patented device in this District), they have not alleged that either Defendant has a

regular and established place of business in this district. See id. at 1360 (explaining

that to have a regular and established business: “(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”). Accordingly, this District is not a proper venue

for the patent infringement claims alleged in the complaint.

Despite this, Plaintiff argues that the Court can (and should) exercise “pendent

venue” over the patent infringement claims because venue for the related breach of

contract claim is proper in this District.4 The Court disagrees.

4
It appears that venue for the breach of contract claim, as pled, would be proper in this
District (albeit likely in the Tallahassee Division, not the Panama City Division) because the
complaint alleges that the post-incorporation agreement was breached when Mr. Duvall
unilaterally filed articles of dissolution for D&E with the Florida Department of State. That said,
it is unclear what specific provision of the post-incorporation agreement Mr. Duvall breached by

4
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This argument is based on the premise that the patent infringement claims and

the breach of contract claim arise out of “a common nucleus of operative fact.” See

Doc. 15, at 12 n.2. Even if that premise is correct,5 it would not justify the exercise

of pendent jurisdiction in this case because that doctrine typically only applies when

the properly-venued claim is a federal claim,6 and the breach of contract claim in

this case is a state law claim over which the Court does not even have original

jurisdiction.7 Moreover, the Court would decline to exercise pendent venue over the

patent infringement claims in any event because doing so would override the clear

the filing of the articles of dissolution or how an alleged violation of §617.1401, Fla. Stat.,
constitutes to a breach of contract.
5
The Court is skeptical of that premise because, as pled in the complaint, the breach of
contract claim was based solely on Mr. Duvall’s “wrongful dissolution” of D&E whereas the
patent infringement claims are based on Bearback’s sale of the back-scratcher device for which
D&E held the patent. However, it appears that Plaintiff may be able to amend the complaint to
bolster that premise. See Doc. 15, at 10 (arguing in response to the motion to dismiss that that Mr.
Duvall also breached the post-incorporation agreement by transferring ownership of the patent to
Bearback, thereby competing with D&E).
6
There are district court decisions holding otherwise (and there is no Supreme Court or
Eleventh Circuit decisions on point), but this appears to be the majority rule. See Nissei ASB Co.
v. R&D Tool & Eng’g Co., 2018 WL 9961069, at *9 (N.D. Ga. Nov. 9, 2018) (collecting cases);
see also Vulcan Mktg., Inc. v. United Furniture Indus. Bolivia, S.A., 2010 WL 11566476, at *5 n.3
(N.D. Ala. Feb. 1, 2010) (“More critically, the pendent venue doctrine applies only when a court's
federal question jurisdiction is invoked; here, the plaintiff has invoked the court's diversity
jurisdiction.”); Basile v. Walt Disney Co., 717 F. Supp. 2d 381, 387-88 (S.D.N.Y. 2010) (declining
to apply pendent venue on the basis of state-law claims and explaining that it is “analytically
problematic [to do so] since the only basis for subject matter jurisdiction of the state law claims is
supplemental jurisdiction—they are themselves appended for jurisdictional purposes to the federal
claim”).
7
The complaint asserts that the court has supplemental jurisdiction over the breach of
contract claims under 28 U.S.C. §1367, Doc. 1, at 3 (¶10), and it does not include any allegations
concerning the amount in controversy that would be necessary to invoke the Court’s original
diversity jurisdiction under 28 U.S.C. §1332(a).

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legislative policy embodied in §1400(b). See Norkol/Fibercore, Inc. v. Gubb, 279

F. Supp. 2d 993, 999 (E.D. Wis. 2003) (“Under the doctrine of pendent venue, claims

governed by a general venue statute may be brought in the same district as a claim

governed by a special venue statute if the claims arise out of the same nucleus of

facts. However, the converse is not true. Where claims are governed by a special

venue statute such as §1400(b), which limits venue to specified districts, such claims

may be brought only in a district specified by the statute. This is so because

congressional intent to limit the available districts is clear and cannot be

circumvented.”) (citations omitted); Nissei ASB Co., 2018 WL 9961069, at *9

(declining to exercise pendent venue over a patent infringement claim because

policy considerations in favor of pendent venue do not override the presumption in

favor of upholding specific patent venue law for patent infringement actions); 14D

Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure §3808 (4th

ed. Oct. 2020 update) (“[C]laims governed by a special venue statute cannot be

appended for venue purposes to claims that are governed by the general venue

statute. For example, courts showed reluctance to exercise pendent venue over

patent infringement claims, which are governed by a special venue statute.”).

Conclusion

In sum, because venue over the patent infringement claims is improper in this

District under 28 U.S.C. §1400(b) and because the Court declines to exercise

6
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pendent venue over those claims, the patent infringement claims are due to be

dismissed. That, in turn, supports dismissal of the supplemental state law breach of

contract claim. See 28 U.S.C. §1367(c)(3); Raney v. Allstate Ins. Co., 370 F.3d 1086,

1089 (11th Cir. 2004) (“We have encouraged district courts to dismiss any remaining

state claims when … the federal claims have been dismissed prior to trial.”)

The Court did not overlook that it has the authority to transfer the case to a

proper venue in lieu of dismissal if it would be “in the interest of justice” to do so.

See 28 U.S.C. §1406(a). However, the Court is not inclined to transfer this case to

another district for two reasons.

First, the parties did not brief this issue and Plaintiff did not ask for the case

to be transferred to another district in the event that the Court found venue to be

improper in this District. Second, although the Court could transfer the case sua

sponte (presumably to the Northern District of Georgia8), doing so would not

necessarily be “in the interest of justice” because the case is still in the early pleading

stages and there does not appear to be any reason (e.g., statute of limitations) that

Plaintiff could not refile its complaint in the proper venue if the case is dismissed by

this Court.

8
According to the complaint, Mr. Duvall is a resident of Suwanee, Georgia, and
Bearback’s principal place of business in Alpharetta, Georgia, see Doc. 1, at 1, 2 (¶¶3, 5), and
according to the affidavit filed with the motion to dismiss, Bearback’s principal office is in Milton,
Georgia, see Doc. 10-1, at 3 (¶13). Those cities are all in the Northern District of Georgia.

7
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Accordingly, for the reasons stated above, it is ORDERED that:

1. Defendant’s motion to dismiss (Doc. 10) is GRANTED, and this case is

DISMISSED without prejudice to refiling in a proper venue.

2. All other motions are DENIED as moot, and the Clerk shall close the file.

DONE and ORDERED this 6th day of November, 2020.

T. Kent Wetherell, II
T. KENT WETHERELL, II
UNITED STATES DISTRICT JUDGE