Intellectual Property – Transfer

May 27, 2011

Publication| Intellectual Property

Chief Judge Sleet Denies Defendants’ Motion to Transfer Venue

In Apple Inc. v. High Tech Computer Corp., et al., C.A. No. 10-544-GMS (D. Del. Jan. 18, 2011), Apple Inc. filed a patent infringement action against High Tech Computer Corp., a/k/a HTC Corp., HTC (B.V.I.) Corp., HTC America, Inc. and Exedea, Inc. (collectively, “HTC”) alleging that HTC’s smart phone technology infringes four Apple patents.  HTC moved to transfer venue to the Northern District of California.  After considering the Jumara factors, the Court concluded that the balance of convenience did not strongly favor transfer and that Apple’s choice of forum should therefore be upheld.  In so holding, Judge Sleet found that HTC failed to demonstrate a specific physical or financial condition that would make litigating in Delaware burdensome or to point to any specific witnesses or documents that would be unavailable if the litigation proceeded in Delaware.  Accordingly, the Court denied HTC’s motion to transfer.

Judge Robinson Grants Motion to Transfer

In Jennifer L. Brinkmeier & Tecnimed SRI v. Exergen Corp., C.A. No. 10-176-SLR (D. Del. Jan. 3, 2011), Judge Robinson granted defendant Exergen Corp.’s motion to transfer.  Plaintiffs Jennifer L. Brinkmeier and Tecnimed SRI had sued Exergen for false marking and violations of the Lanham Act and the Delaware Deceptive Trade Practices Act for allegedly labeling thermometers with expired patent numbers.  Plaintiffs chose to bring suit in the District of Delaware because of the Court’s experience with patent litigation and proximity to Brinkmeier’s residence.  Exergen is located in and manufactures its products in Massachusetts, where it has a pending suit against Tecnimed and other companies for allegedly infringing its thermometer patents.  Considering these facts in light of the public and private interests as set forth in Jumara, Judge Robinson found that, though not first filed, the Massachusetts litigation (which involves half of the patents in this suit) and Exergen’s slight ties to Delaware warranted a transfer.

Judge Robinson Transfers Case

In Medicis Pharmaceutical Corp. v. Nycomed U.S. Inc. & Nycomed GmbH, C.A. No. 10-419-SLR (D. Del. Mar. 31, 2011), Judge Robinson granted defendant Nycomed US Inc.’s motion to transfer the case to the Southern District of New York.  Plaintiff Medicis Pharmaceutical Corp. had sued defendants for the submission of an ANDA to sell .1 percent fluocinonide cream, which Medicis sells under the brand name Vanos.  Applying the factors outlined by the Third Circuit in Jumara, Judge Robinson granted the motion to transfer.  Though the Court gave due consideration to Medicis’s choice of forum, Medicis had filed identical suits simultaneously in the Southern District of New York and the District of Delaware, the New York suit had progressed faster than the Delaware action, and New York was the center of the dispute between the parties.  For these reasons, the Court determined that the balance of the factors weighed in Nycomed’s favor, and ordered that the case be transferred to the Southern District of New York.

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