By Memorandum Order entered by The Honorable Leonard P. Stark in InterDigital, Inc., et al. v. Wistron Corp., Civil Action No. 15-478-LPS (D.Del., June 18, 2015), the Court granted the emergency motion of Plaintiffs, InterDigital, Inc., InterDigital Technology Corporation, IPR Licensing, Inc., and InterDigital Patent Holding, Inc., to remand the action to the Delaware Chancery Court.

On June 5, 2015, Plaintiffs filed a verified complaint in the Delaware Chancery Court against defendant Wistron Corporation (“Wistron”), a Taiwanese corporation, seeking a temporary restraining order, preliminary injunction and permanent injunction to prevent Wistron from advancing suit filed in the Intellectual Property Court of Taiwan.  Thereafter, Wistron filed a Notice of Removal of the Chancery Court action to the District of Delaware.  Id. at 1.

Plaintiffs’ remand motion asserted that Plaintiffs and Defendants are parties to a Patent Licensing Agreement (“PLA”) which contains a forum selection clause whereby the parties “irrevocably consent to exclusive jurisdiction and venue of the state and federal courts in the State of Delaware” and such language constitutes a waiver of the right to remove to federal court if one party files suit in a Delaware state court.  Id. at 2.  The Court agreed with Plaintiffs that such language “at least arguably constitutes a contractual waiver of the parties’ right to remove should the other party to the PLA choose to file in Delaware state court.  Id.  Given that the Court must resolve all doubts in favor of remand in the context of removal, the Court granted Plaintiffs’ motion to remand the action to Delaware Chancery Court.  Id. at 2-3.

A copy of the Memorandum Order is attached.

The take away from the decision is that, in entering into licensing or other agreements containing forum selection clauses consenting to exclusive jurisdiction and venue of the state and federal courts of Delaware or another particular state, consider whether your client wants to maintain the right to remove an action filed in state court to federal court.  If so, you should make sure there is language included in the forum selection clause specifically maintaining the right of removal to federal court.