Intellectual Property – Motions to Transfer
November 8, 2013
Publication| Intellectual Property
Magistrate Judge Burke Recommends Transfer to the Northern District of Illinois
In Alan J. Ross, et al. v. Institutional Longevity Assets LLC, C.A. No. 12-102-LPS-CJB (D. Del. Sept. 20, 2013), Magistrate Judge Burke recommended granting defendant’s motion to transfer to the Northern District of Illinois. Plaintiff Alan J. Ross was an individual residing in Newton, Massachusetts. Plaintiff SAVE Associates was a sole proprietorship located in Needham, Massachusetts. Defendant Institutional Longevity Assets LLC was a Delaware limited liability corporation with its principal place of business in Chicago, Illinois. The Delaware action arose from a breach of contract dispute between the parties over the transfer of patent rights. Weighing the Jumara factors, the Court found that they weighed strongly in favor of transfer. Of note, the Court found that plaintiffs’ filing in Delaware was motivated by an “improper forum shopping motive” and thus their forum choice weighed strongly in favor of transfer. Amidst other evidence, plaintiffs had received adverse previous rulings in the Northern District of Illinois where a related case was ongoing. The only two Jumara factors that weighed slightly against transfer were the convenience of the parties and familiarity of the trial judge with applicable state law in diversity cases.
Chief Judge Sleet Grants Transfer to the Southern District of Ohio
In Verint Systems Inc., et al. v. CallCopy Inc., C.A. No. 13-562-GMS (D. Del. Sept. 23, 2013), Chief Judge Sleet granted defendant CallCopy Inc.’s motion to transfer to the Southern District of Ohio. Both plaintiffs were Delaware corporations with principal places of business elsewhere. Defendant was a Delaware corporation with a principal place of business in Columbus, Ohio. The Court found that the only factor that weighed against transfer was plaintiffs’ forum preference, which was not afforded maximum deference in this case because it was not its “home turf.” The factors that weighed in favor of transfer were the location where the claim arose, the location of relevant books and records, and practical considerations that might make trial easier and less expensive.
Magistrate Judge Burke Recommends Denial of a Motion to Transfer to the Northern District of California
In Pragmatus AV, LLC v. Yahoo! Inc., C.A. No. 11-902-LPS-CJB (D. Del. Aug. 28, 2013), Magistrate Judge Burke recommended that the Court deny Yahoo! Inc.’s (“Yahoo”) renewed motion to transfer to the Northern District of California or to enjoin Pragmatus AV, LLC (“Pragmatus”) from prosecuting a lawsuit against it in California. Pragmatus, a Virginia limited liability company with its principal place of business in Alexandria, Virginia, filed its Delaware patent infringement action on October 4, 2011, against Yahoo, a Delaware corporation with its principal place of business in Sunnyvale, California. Pragmatus previously had filed an action against Facebook and other defendants in Virginia, which was transferred to the Northern District of California and stayed pending reexamination. On March 15, 2013, Pragmatus filed a separate lawsuit against Yahoo in the Northern District of California. Judge Burke noted that the law remains unclear as to whether the Court could take into account the later-filed suit in California, since the transfer analysis is based on the facts at the time of filing suit. Nonetheless, Judge Burke found that Pragmatus’s actions were not indicative of a bad-faith attempt to shop for a favorable forum or to force Yahoo to engage in duplicative litigation. Judge Burke also found that Yahoo’s incorporation in Delaware would have provided a more than ample basis for the first private interest factor to weigh against transfer. Overall, because the filing of the California action did not alter the calculus as to any of the cited Jumara factors in favor of transfer, the Court recommended denial of the renewed motion to transfer. The Court also denied the motion to enjoin prosecution because the case in Delaware was sufficiently different from that in California that the first-filed rule did not apply.
Judge Sleet Grants Motion to Transfer to Eastern District of Michigan
In Joao Control & Monitoring Systems, LLC v. Ford Motor Co., C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013), Chief Judge Sleet granted defendant Ford Motor Company’s (“Ford”) motion to transfer to the Eastern District of Michigan. Plaintiff Joao Control & Monitoring Systems, LLC (“Joao”) is a limited liability company organized and existing under the laws of the State of Delaware with its principal place of business in Yonkers, New York. Ford is a Delaware corporation with its principal place of business in Dearborn, Michigan. Under Jumara, the Court accorded heightened, but not maximum, deference to Joao’s forum choice, as it did not physically reside in Delaware. Weighing in favor of transfer were Ford’s choice of forum, the fact that the infringement claims arose from allegedly infringing products designed and manufactured in Michigan, the inconvenience of litigating in Delaware, the location of books and records in Michigan, and the practical considerations of efficiency, expense, and ease of litigating in the Eastern District of Michigan where the parties were already litigating another tangentially related case. The Court found that these factors met the burden of demonstrating that the interests of justice and convenience strongly favored transfer. Only Joao’s forum preference weighed against transfer, and the Court did not grant that preference maximum deference.
Judge Andrews Affirms Magistrate Judge Fallon’s Denial of Transfer to the Northern District of California
In Agincourt Gaming, LLC v. Zynga, Inc., C.A. No. 11-720-RGA-SRF (D. Del. June 18, 2013), Magistrate Judge Fallon denied defendant’s motion to transfer and also denied plaintiff’s motion to strike portions of a declaration at issue. Defendant is a Delaware corporation headquartered in San Francisco, California. Plaintiff is a limited liability company incorporated in Delaware and headquartered in Dallas, Texas. The Court found plaintiff’s choice of forum weighed strongly against transfer, “although not as strongly as it would if [plaintiff] had its principal place of business in Delaware.” Weighing the remaining Jumara factors, the Court found defendant had not shown that the balance of convenience tipped strongly in its favor to warrant transfer. In doing so, the Court distinguished the case from In re Link_A_Media by noting that both parties in this case were Delaware corporations.
In Agincourt Gaming, LLC v. Zynga, Inc., C.A. No. 11-720-RGA (D. Del. July 29, 2013), Judge Andrews overruled defendant’s objections and affirmed Magistrate Judge Fallon’s decision under the deferential standard of review of Section 636(b)(1)(A). The Court concluded that the magistrate judge reasonably balanced the Jumara factors. The Court found that although the magistrate judge had found that more of the factors favored transfer, the deference she placed in plaintiff’s choice of forum, which was also the state of incorporation of both parties, was reasonable and not legal error.