Judge Burke Denies Motion to Transfer

March 6, 2018

Publication| Intellectual Property

In Genedics, LLC v. Meta Company, No. 17-1062-CJB (D. Del. Jan. 8, 2018), Magistrate Judge Burke denied Meta Company’s motion to transfer this case to the Northern District of California on grounds of convenience. Genedics, LLC (a Massachusetts company with its principal place of business in that state) accused Meta (a Delaware corporation with offices only in San Mateo, California) of infringing patents directed to augmented reality headset displays. There was no dispute that venue would be proper in either district.

Among the private-interest transfer factors, Judge Burke found that rational reasons supported Genedics’ choice of forum and Meta’s forum preference (ability to secure personal jurisdiction and distance to Massachusetts for Genedics; sole location of its business and employees for Meta). That the claim arose in the Northern District of California (where the design and development of the accused products took place) was found to favor transfer, even though the accused products were sold nationwide. Taking into account the parties’ sizes, financial condition, and alleged travel burdens, Judge Burke found that the convenience-of-the-parties factor favored neither litigant. Nor did either party persuade the Court that the unavailability-of-witnesses factor, which requires the identification of a specific witness with specific relevance to the case as well as a showing of such witness’ actual unavailability for trial, favored or disfavored transfer. According to the Court, the location of books and records only slightly favored transfer, as this factor was said to be “commonly given little weight” in light of advances in technology.

Turning to the public-interest transfer factors, the Court found no particular reason to think that the Northern District of California was any more likely than the District of Delaware to allow early dispositive motion practice, if warranted; the practical considerations were thus neutral. Nor did Judge Burke agree that judicial vacancies in the District of Delaware favored transfer, since the parties had consented to his jurisdiction to handle all matters, and Judge Burke stated that the parties could select a trial date “in whatever time frame.” Judge Burke found that no local interest of the Northern District of California having an “outsized resonance” (such as the involvement of a government agency or interpretation of California law) was identified; as a result, this factor favored transfer only slightly.

Thus, although more factors favored transfer, Judge Burke concluded that on balance they did not strongly do so, and taking into consideration Meta’s incorporation in Delaware and Delaware’s distance to Massachusetts, the Court denied the motion to transfer.

Key Point: The Court noted that the Supreme Court’s TC Heartland decision strengthened the rationale for giving weight to “plaintiff’s choice of forum” as a transfer factor when the plaintiff chooses to sue in the defendant’s state of incorporation, particularly when the plaintiff’s only other option is to sue the defendant where its principal place of business is located. 

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