Litigation

On September 3, 2021, the Firm obtained a rare ruling in the United States District Court for the Eastern District of Texas that the venue was improper for patent infringement claims brought against our client, American Express Travel Related Services Company, Inc. (“AmEx”).  After the plaintiff AlexSam, Inc. (“AlexSam”) filed suit for patent infringement in the Eastern District of Texas  against defendant Simon Property Group, L.P. (“Simon”) in October of 2019, and Simon filed claims for indemnification against three third-party defendants including AmEx in September 2020, AlexSam amended its complaint to also assert patent infringement by AmEx.  The products accused of infringement were certain AmEx gift card and AmEx Serve prepaid card products that were sold and activated using a retail point-of-sale system.  AmEx moved to dismiss or transfer the AlexSam’s infringement claims for improper venue and to compel arbitration of the indemnification claims brought by Simon.  On August 26, 2021 and September 3, 2021, Chief District Judge Rodney Gilstrap granted AmEx’s motions.  With respect to Simon’s arbitration claims, the Court found that an agreement entered into by AmEx and Simon included a mandatory clause requiring that “‘[a]ll claims, disputes or controversies between the Parties under this Agreement’ be submitted to binding arbitration.”  And with respect to venue for the patent infringement claims, the Court rejected AlexSam’s arguments that AmEx “travel agency partners” and “retailers who sell accused AmEx products in this District” were “regular and established places of business” of AmEx as “not consistent with current venue law in patent cases.”  As a result of the Court’s rulings, the claims will be heard not in the Eastern District of Texas venue selected by the patentee AlexSam, but instead in proceedings in AmEx’s home court of the Southern District of New York.

To read the Motion to Dismiss, please click here.