Intellectual Property – Transfer

June 6, 2012

Publication| Intellectual Property

Judge Andrews Grants Severance And Denies Motion to Transfer

In Investpic, LLC, v. SAS Institute, Inc., C.A. No. 10-1028-RGA (D. Del. May 15, 2012), Judge Andrews denied a motion to transfer and granted a motion to sever. Plaintiff had originally filed a complaint against 15 defendants for patent infringement. First, Judge Andrews concluded that the movant had been improperly joined. In so holding, Judge Andrews found that the complaint did not allege any connection between the moving defendant and any other defendant, or between defendant’s products and any other defendant’s products. Second, Judge Andrews concluded that transfer was inappropriate. Although Judge Andrews found that the case could have been brought in the Eastern District of North Carolina, Judge Andrews examined the Jumara factors and gave weight to plaintiff’s choice of forum, stating that “when the plaintiff is a small corporation with Delaware as its long-standing corporate home . . . and the defendant is a national company of the defendant’s size . . . there ought to be a compelling reason to overcome plaintiff’s choice of forum.” Ultimately, Judge Andrews found that defendant had failed to offer a compelling reason to warrant transfer.

Judge Robinson Denies Motion to Transfer

In Helicos Biosciences Corp. v. Illumina, Inc., et al., C.A. No. 10-735-SLR (D. Del. May 3, 2012), Judge Robinson denied defendants’ motion to transfer the case to the Northern District of California. Most of the Jumara factors were neutral, but two factors weighed against transfer: all three defendants were Delaware corporations (plaintiffs’ choice of forum) with larger operations than those of plaintiffs (convenience of the parties). Only one factor—practical considerations that could make trial inexpensive—weighed in favor of transfer, since defendants all had principal places of business in California. Thus, the Court ruled that defendants did not “tip[] the scales in favor of transfer” and denied the motion.

Judge Robinson Denies Motion to Transfer

In Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR (D. Del. May 3, 2012), Judge Robinson denied defendant Precision Biosciences, Inc.’s motion to transfer the case to the Eastern District of North Carolina. Precision is a Delaware corporation, a fact that weighed against transfer, and Cellectis is incorporated in France. Though Precision argued that the case arose in North Carolina because the research, design, and manufacture of the allegedly infringing products took place there, the Court held that a claim for patent infringement arises where a defendant is alleged to have committed acts of infringement, not where the product is manufactured; as there was nothing in the record suggesting that Precision does not sell its products in Delaware, this fact also weighed against transfer. Weighing in favor of transfer were the convenience of the parties and practical considerations that could make trial inexpensive. All other factors were neutral. With two factors in favor of transfer and two factors against, the Court concluded that each factor had equal weight and denied the motion to transfer.

The Court granted Cellectis’ motion to enjoin Precision from prosecuting a second-filed, mirror-image declaratory judgment action in the Eastern District of North Carolina, since none of the exceptions to the first-filed rule applied. The Court rejected Precision’s argument that an earlier lawsuit between the parties still pending in the Eastern District of North Carolina was first-filed as to this lawsuit, since it involved different patents.

Judge Andrews Grants Motion to Transfer

In Signal Tech, LLC v. Analog Devices, Inc., C.A. No. 11-1073-RGA (D. Del. Apr. 3, 2012), Judge Andrews granted defendant’s request to transfer the case to the District of Massachusetts. Plaintiff, a recently incorporated Delaware company, had filed suit against three defendants in three separate lawsuits. Defendant, a Massachusetts corporation with a principal place of business in Massachusetts, filed a motion to transfer to the District of Massachusetts and argued that the case had little connection to Delaware. Judge Andrews agreed and found that plaintiff was the equivalent of a non-Delaware corporation because it had no employees or principal place of business there. Judge Andrews held that under Link_A_Media, “when a plaintiff sues a defendant in District A and the plaintiff, the defendant, and all potential witnesses and evidence are located in District B, and there is no other valid reason for denying the request for transfer to District B, it is an abuse of discretion not to grant the transfer.”

Chief Judge Sleet Denies Motion to Transfer

In GlaxoSmithKline LLC v. Roche Holding Ltd., C.A. No. 10-799-GMS (D. Del. Mar. 29, 2012), Chief Judge Sleet denied defendant’s motion to transfer. The Court denied the motion because both parties were incorporated in Delaware, and therefore Delaware was both parties’ “home turf.” Additionally, plaintiff’s key facilities, where three out of four of the patents’ inventors worked, were located 25 miles from Wilmington.

Judge Andrews Denies Transfer

In Robocast, Inc. v. Apple, Inc. and Robocast, Inc. v. Microsoft Corp., C.A. Nos. 11-235-RGA and 10-1055-RGA (D. Del. Feb 24, 2012), Judge Andrews denied defendants’ motion to transfer the cases to the Northern District of California. Plaintiff, a Delaware corporation, sued defendants Apple and Microsoft for patent infringement. Defendants filed motions to transfer. In denying defendants’ motions, Judge Andrews concluded that the Jumara factors did not weigh in favor of transfer. Judge Andrews found that Apple is “omnipresent in everyday life.” The Court also concluded that transfer would be more costly to plaintiff and noted that defendants failed to identify any books or records that could not be produced in Delaware. Judge Andrews distinguished the case from the Federal Circuit case of Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011), and concluded that the facts indicated a much greater connection to Delaware than the facts presented in Link_A_Media.

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