Judge Robinson Denies Motion for Transfer

November 3, 2016

Publication| Intellectual Property

In Smith International, Inc. v. Baker Hughes Inc., Civ. No. 16-56-SLR/SRF (D. Del. Oct. 19, 2016), Judge Robinson affirmed Magistrate Judge Fallon’s recommendation to deny the motion to transfer filed by the defendant, Baker Hughes, Inc. (“Baker”). The parties had been involved in litigation in the Southern District of Texas regarding, among other issues, infringement of the two patents-in-suit in the Delaware action; the plaintiff, Smith International, Inc. (“Smith”), voluntarily dismissed that case and filed the present suit in Delaware.

Baker argued that transfer was merited because, despite both parties’ being Delaware corporations, (1) the parties have litigated in the Southern District of Texas, and (2) Baker never made, used, or sold its products in Delaware. Regarding the first point, the Court found that the Texas litigation included multiple parties and claims, which “compelled suit in that district.” Judge Robinson declined to address the second point, as there was no indication it had been raised before the magistrate judge. Because the other Jumara transfer factors did not weigh in Baker’s favor, Judge Robinson overruled its objections and denied its motion to transfer.

Key Points:  Incorporation in Delaware continues to weigh heavily in the transfer analysis for Judge Robinson.

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