U.S. Gypsum Co. v. 3M Innovative Props. Co., No. 07 C 6381, 2008 WL 514976 (N.D. Ill. Feb. 20, 2008) (Darrah, J.).
Judge Darrah granted defendants’ (collectively “3M”) Fed. R. Civ. P. 12(b)(3) motion to dismiss for lack of venue. Plaintiff United States Gypsum (“Gypsum”) filed this action asserting its own patent and seeking declaratory judgments regarding 3M’s patents, all to low dust construction compounds. Shortly thereafter, 3M filed a corresponding suit in the District of Minnesota. Prior to filing their suits, the parties were in extended negotiations regarding cross-licensing of their patents. Pursuant to those negotiations, the parties entered a confidentiality agreement (“Agreement”) requiring that all disputes “arising from the subject matter of this Agreement shall be brought . . . exclusively in [D. Minn.]” Because the express subject matter of the Agreement was the patents in suit and because the Agreement, negotiated by sophisticated parties, set D. Minn. as the exclusive jurisdiction, the Court dismissed the case in favor of 3M’s action filed in the D. Minn.