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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Versata Software, Inc., et al. v. Callidus Software Inc., Civil Action  No. 12-931-SLR (D.Del., May 16, 2013), the Court denied the motion to transfer venue to the Northern District of California of defendant Callidus Software Inc. (“Callidus”). The Court also denied Callidus’ motion to dismiss. Id. at *10. 

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Cradle IP, LLC v. Texas Instruments, Inc., Civil Action No. 11-1254-SLR (D.Del., February 13, 2013), the Court denied the motion to transfer venue filed by defendant Texas Instruments, Inc. After analyzing the Jumara factors, the Court found that Texas Instruments had not met its burden of persuading the court by a preponderance of the evidence that the Jumara factors warranted transfer of the patent infringement action to the Northern District of Texas. Id. at 9.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Order entered by Chief Judge Gregory M. Sleet in Woodbolt Distribution, LLC v. Natural Alternatives International, Inc., Civil Action No,. 11-1266-GMS (D.Del., January 23, 2013), the Court granted defendant's motion to dismiss the complaint of plaintiff which sought a declaratory judgment of non-infringement and invalidity of U.S. Patent No. 8,067,381.  Of particular note was the fact that the same day that plaintiff initiated the declaratory judgment action in the District of Delaware, defendant later filed a patent infringement action in the United States District Court for the Southern District of Texas.  Id. at 1.  Through its motion, defendant sought to dismiss the declaratory judgment filed in the District of Delaware and have the case transferred to the Southern District of Texas.  After analyzing the issues, the Court concluded that, under the circumstances, discretionary dismissal was appropriate in this instance and the 'first-filed rule" did not preclude dismissal.  Id. at 2-9.

A complete copy of the Memorandum Order is attached.

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Smart Audio Technologies, LLC v. Apple, Inc., Civil Action No. 12-134-GMS (D.Del., November 16, 2012), the Court denied Apple’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court explained and examined the differences in the two approaches to analyzing the Jumara factors that have developed in the District of Delaware and referred to those approaches as (1) the “Affymetrix approach” and (2) the “modern approach.” Id. at 3-10. Ultimately, the Court found that the two approaches are quite similar and may not result in any practical difference in the outcome, although it did recognize that there appears to be some double-counting of plaintiff’s forum choice under the modern approach. Id. at 10-11. After analyzing the Jumara factors employing the language of the modern approach, the Court concluded that Apple failed to show that the balance of the factors weighed strongly in favor of transfer. Id. at 21.

A copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by The Honorable Richard G. Andrews in Round Rock Research, LLC v. Dell, Inc., Civil Action No. 11-976-RGA (D.Del., November 15, 2012), the Court denied defendant Dell, Inc.’s motion to transfer the action to the Northern District of California. In denying the motion to transfer, the Court carefully analyzed and weigned all of the Jumara factors and distinguished the facts of the case from the facts of In re Link_A_Media by highlighting that both parties are Delaware corporations and neither is principally based in the Northern District of California. Id. at 3-9.

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By Memorandum Opinion entered by The Honorable Sue L. Robinson in Helicos Biosciences Corporation v. Illumina, Inc., Civil Action No. 10-735-SLR (D.Del., May 3, 2012), the Court denied the motion of defendants, Pacific Biosciences of California, Inc. (“PacBio”), Life Technologies Corporation (“Life”) and Illumina, Inc. (“Illumina”) to transfer venue of the patent infringement action filed by plaintiff Helicos Biosciences Corporation to the Northern District of California. In denying the motion to transfer, the Court noted that defendants had the burden of persuading the court, by a preponderance of the evidence, that the Jumara factors warranted transfer. Id. at 14. In weighing the Jumara factors, the Court found that plaintiff’s choice of forum and the convenience of the parties both weighed against transfer. Id. at 9-10. The Court also found that where the claims arose, the convenience of the witnesses, the location of books and records, relative administrative difficulty, local interest in deciding local controversies, the enforceability of a judgment, the public policies of the fora, and the familiarity of the judge with state law were all neutral as to transfer in its weighing of the Jumara factors. Id. at 9-14. Notably, Helicos, PacBio, Life and Illumina are all corporations incorporated in Delaware and it was alleged in the complaint that Illumina and PacBio sold allegedly infringing products in Delaware. Id.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in the consolidated cases of Robocast, Inc. v. Apple, Inc., Civil Action No. 11-235-RGA (D.Del., February 24, 2012) and Robocast, Inc. v. Microsoft Corporation, Civil Action No. 10-1055-RGA (D.Del., February 24, 2012), the Court denied the motions to transfer of defendants Apple and Microsoft seeking to transfer the patent infringement actions asserted against them by plaintiff Robocast to the Northern District of California. Id. at 2 and 11. In analyzing the transfer motions under the Jumara factors, the Court found that factors (1) and (4) (plaintiff’s forum preference as manifested in the original choice and the convenience of the parties as indicated by their relative physical and financial condition) supported plaintiff’s position that the transfer motions should be denied. Id. at 3-4. Significantly, the Court also considered and distinguished the Federal Circuit’s holding in In Re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011) from this action finding that there was a greater connection to Delaware in this action. Id. at 10.  The Court also noted an important difference in the law of the Fifth Circuit and the Third Circuit in how to conduct a transfer analysis. Id. Ultimately, the Court determined that Apple and Microsoft did not show that the balance of convenience tipped strongly enough in their favor to warrant transfer. Id. at 10-11.

A complete copy of the Memorandum Opinion is attached.
 

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By Memorandum Opinion entered by the Honorable Richard G. Andrews in Serverside Group Limited, et al. v. CPI Card Group – Minnesota Inc., et al., Civil Action No. 11-559-RGA (D.Del., February 17, 2012), the Court transferred the patent infringement claims asserted against the T8 Defendants to the Northern District of Iowa after finding that it did not have personal jurisdiction over the T8 Defendants. The Court found that there was no personal jurisdiction over the T8 Defendants in Delaware because no tortious act or injury occurred in Delaware. Id. at 7-8.

A complete copy of the Memorandum Opinion is attached.

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By Memorandum Opinion entered by The Honorable Leonard P. Stark in Human Genome Sciences, Inc. v. Genentech, Inc., et al., C.A. No. 11-082-LPS (D.Del., July 18, 2011), the Court granted the motion of defendants, Genetech, Inc. and City of Hope, to transfer venue of three actions filed against them in the District of Delaware by plaintiff, Human Genome Sciences, Inc. (“HGS”), to the Central District of California. Id. at 1. The transferred actions involve claims asserted by HGS against defendants for declaratory judgment, antitrust and Lanham Act violations, and state tort claims based on two patents co-owned by defendants: U.S. Patent No. 6, 331,415 (the “Cabilly II patent”) and U.S. Patent No. 7,923,221 (the “Cabilly III patent”). Id.

A complete copy of the Memorandum Opinion is attached hereto.
 

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By Memorandum Order entered by The Honorable Leonard P. Stark in Carl Zeiss Meditec, Inc., et al. v. Xoft, Inc., Civil Action No. 10-308-LPS-MPT, the Court affirmed the Report and Recommendation issued by Magistrate Judge Mary Pat Thynge on October 12, 2010 denying defendant Xoft, Inc.’s motion to transfer the action to the Northern District of California. In its objections, Xoft contended that Judge Thynge committed legal error by (1) ignoring the settled position of Delaware courts that when the proposed transferee forum is more convenient and has more substantial connections with the litigation, the sole fact that a defendant is incorporated in Delaware should not prevent transfer; (2) ignoring the fact that Delaware is not the home turf of either party; and (3) improperly requiring Xoft to submit affidavits that third-party witnesses were not only beyond the subpoena power of the Court, but also were unwilling to testify in Delaware. Id. at 2. Plaintiff Zeiss disagreed with all of Xoft’s contentions and urged the Court to adopt Judge Thynge’s Report and Recommendation in full. Id.

After reviewing the Report and Recommendation, the objections thereto, recent Federal Circuit precedent that Xoft brought to the Court’s attention and the record, the Court concluded that Judge Thynge’s Report and Recommendation carefully and properly weighed the relevant public and private interests set forth by the Third Circuit in Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) and found that, on balance, the convenience of the parties and witnesses and the interests of justice did not warrant transferring this case to California. Id. at 4.  Thus, the Court adopted the Report and Recommendation in full.

A complete copy of the Memorandum Order is attached.
 

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By Memorandum Order entered by the Honorable Sue L. Robinson in Myriad Group A.G. v. Oracle America, Inc., Civil Action 10-1087-SLR (D.Del., February 4, 2011), the Court denied the motion to dismiss or transfer of defendant Oracle America, Inc. ("Oracle") without prejudice and explained that Oracle may renew the motion to transfer once the U.S. District Court for the Northern District of California rules on pending motions in the mirror image litigation filed by Oracle on the same day (but earlier in the day) than the instant action which may clarify the issues in dispute. Id. at 5.  The Court also denied plaintiff Myriad Group's motion for a preliminary injunction noting that, through its motion, Myriad sought the ultimate relief requested in the Delaware action even though it waited more than a year to file its action. Id.

A complete copy of the Memorandum Order is attached. 

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By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Apple Inc., et al. v. High Tech Computer Corp., et al., Civil Action Nos. 10-166-GMS and 10-167-GMS (D.Del., January 14, 2011), the Court denied defendant HTC Corp.’s motion seeking to transfer Apple’s patent infringement actions against HTC to the Northern District of California pursuant to 28 U.S.C. § 1404(a). In support of its motion, HTC contended, among other things, that (1) Apple’s choice of venue (i.e. District of Delaware) should be given little deference because Delaware is not Apple’s “home turf” and has no meaningful connection to the facts of the cases; and (2) none of the witnesses or documents relevant to the cases are located in Delaware as opposed to scores of potential witnesses and relevant documents which may be found in the Northern District of California. Id. at 4. In opposition to the motion, Apple asserted, among other things, that transfer would not serve the interests of justice because (1) two related pending actions involving numerous common issues of law and fact remain in the District of Delaware; (2) HTC’s infringing activity took place across the entire country, including Delaware; and (3) HTC failed to show a physical or financial condition of the parties which would cause litigating in Delaware to be burdensome. Id. at 4-5. In denying the motion to transfer, the Court concluded that the balance of convenience did not strongly favor transfer under the facts and, thus, Apple’s choice of forum should prevail. Id. at 5.

The Court specifically noted that, although it previously denied Apple’s motion to consolidate the two related pending actions due to the magnitude of those cases and limited commonalities among them, there are some common issues of law and fact in the cases. Id. Thus, it would better serve the interests of justice and judicial economy if those issues were addressed by the same court. Id.

A complete copy of the Memorandum Opinion is attached.
 

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By Report and Recommendation entered on October 13, 2010, The Honorable Mary Pat Thynge, in Carl Zeiss Meditec, Inc., et al. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT, analyzed the motion of defendant Xoft, Inc. ("Xoft") to transfer the case from the United States District Court for the District of Delaware to the United States District Court for the Northern District of California and recommended that Xoft's motion be denied.  A copy of the Report and Recommendation is attached.

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