motion to transfer venue

By Memorandum Opinion entered by The Honorable Maryellen Noreika in ANI Pharmaceuticals, Inc. v. Method Pharmaceuticals, LLC et al., Civil Action No. 17-1097-MN (D.Del. January 11, 2019), the Court granted-in-part Defendants’ Motion to Dismiss under Federal Rule of Civil Procedure 12(b)(2) or, in the Alternative, Transfer Venue to the extent that it sought to transfer the action from the District of Delaware to the Northern District of Texas. The Court denied the portion of Defendants’ Motion that sought dismissal under Federal Rule of Civil Procedure 12(b)(2) finding that the question of personal jurisdiction over defendant Method presented a close call but the Court lacked personal jurisdiction over defendant Tucker. Id. at *12. The Court explained that it would exercise its discretion in transferring the case regardless of the existence of personal jurisdiction over defendant Method because “judicial economy favors the prosecution of a case in its entirety, and that weighs in favor of transferring the case to the Northern District of Texas where there is no question of jurisdiction.” Id.

Ultimately, in analyzing the twelve Jumara factors, the Court found that eight factors weighed in favor of transfer while the remaining four factors were neutral. Id. at *12-19. The Court noted that, although “a plaintiff’s choice of venue is generally provided paramount consideration under Jumara, the Court’s inability to assert personal jurisdiction over one of the defendants undermine[d] that deference here. Id. at *19.

A copy of the Memorandum Opinion is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Genentech, Inc. et al. v. Amgen Inc., Civil Action No. 17-1407-GMS (D.Del. January 22, 2018), the Court denied defendant Amgen Inc.’s motion to transfer two patent infringement actions from the United States District Court for the District of Delaware to the United States District Court for the Central District of California where Amgen has a declaratory judgment action pending. Both Plaintiff and Amgen are incorporated in Delaware with their principal places of business in California. Id. at *1.

In support of its motion, Amgen argued that the Jumara factors weighed heavily in favor of transfer and that transfer was warranted under the first-to-file rule. Id. at *4. In weighing the Jumara factors, the Court found that Amgen’s choice of forum weighed in favor of transfer, but not as strongly as Plaintiff’s choice of forum weighed against transfer. Id. Two factors weighed slightly in favor of transfer: where the claims arose and the convenience of the witnesses. Id. The remaining factors weighed against transfer or were neutral. Id. Thus, because the balance of the Jumara factors did not strongly weigh in favor of transfer, the Court found that Amgen did not carry its burden of demonstrating the transfer was warranted under those factors. Id.

With respect to the first-to-file rule, the Court found that the California action was anticipatory in nature, and there are convenience factors that weigh against transfer in addition to the Jumara factors weighing against transfer. Id. at *13-15. Therefore, the Court refused to apply the first-to-file rule in favor of transfer. Id. at *15.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Javelin Pharmaceuticals, Inc. et al. v. Mylan Laboratories Limited et al., Civil Action No. 16-224-LPS (D.Del., December 1, 2017), the Court denied without prejudice the motion to dismiss for improper venue or, in the alternative, to transfer venue to the Northern District of West Virginia of Defendant Mylan Laboratories Limited, Mylan, Inc. and Mylan Pharmaceutical Inc. (collectively, the “Mylan Defendants”). In doing so, the Court granted Plaintiffs’ request for venue-related discovery to proceed contemporaneously with the remainder of the case as it proceeds on the merits and ruled that the Mylan Defendants could renew the motion after a period of venue-related discovery. Id. at *1 and 12. The Court also held that Mylan’s venue challenge was not untimely and Mylan did not waive its challenge to venue by failing to press it until after the U.S. Supreme Court decided TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017) because the venue objection was not available until after that decision was rendered. Id. at *2.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Koniklijke Philips N.V. v. HTC Corp., Civil Action No. 15-1125-GMS (D.Del. July 18, 2017), the Court denied Defendants’ Joint Motion to Transfer Venue which sought to transfer venue of the patent infringement action to either the Northern District of California, the Western District of Washington, or the Eastern District of New York pursuant to 28 U.S.C. § 1406, or alternatively to transfer all actions to the Northern District of California pursuant to 28 U.S.C. § 1404(a). In denying the motion, the Court found that, through their conduct in actively litigating the suit in the District of Delaware since December 2015 coupled with their withdrawal of their original motion to dismiss for improper venue following the Federal Circuit’s decision in TC Heartland, 821 F.3d 1338(Fed. Cir. 2016), defendants waived any right to challenge venue in the District of Delaware. Id.at *5-8. The Court also found that, although defendants pleaded the affirmative defense of improper venue in their answer to the second amended complaints, the affirmative defense of improper venue may be waived by a defendant’s subsequent actions through the course of litigation and the totality of defendants’ actions made it clear that they submitted to venue in the District of Delaware. Id.at *9-10.

A copy of the Memorandum Opinion is attached.

The general take away is that, if you are a party asserting the affirmative defense of improper venue, you need to assert and preserve the affirmative defense in a timely manner in your responsive pleading or motion and be mindful that your subsequent actions in litigating the case do not provide grounds for a finding of waiver.

By Memorandum Order entered by The Honorable Gregory M. Sleet in Blackbird Tech LLC d/b/a Blackbird Technologies v. TuffStuff Fitness et al., Civil Action No. 16-733-GMS (D.Del. April 27, 2017), the Court granted the motion to transfer venue to the United States District Court for the Central District of California of defendant TuffStuff Fitness International Inc. After analyzing the Jumara factors, the Court found that TuffStuff met its burden of demonstrating that the interests of justice and convenience strongly favor transfer. Id. at *3-12. Although plaintiff’s forum preference weighed against transfer, the Court explained that plaintiff’s preference did not warrant maximum deference in this case, particularly because Delaware is not its “home turf” or principal place of business. Id. On the other hand, several factors weighed in favor of transfer: defendant’s choice of forum, convenience of the parties, location where the claim arose, the location of relevant books and records, and difference in court congestion. Id.

A copy of the Court’s Memorandum Order is attached.

By Memorandum Order entered by The Honorable Sue L. Robinson in Par Pharmaceutical, Inc., et al. v. Breckenridge Pharmaceutical, Inc., et al., Civil Action No. 15-486-SLR (D.Del., September 10, 2015), the Court denied the motion to transfer venue filed by defendants Twi Pharmaceuticals, Inc. and Twi Pharmaceuticals USA, Inc. after expressly disagreeing with defendants reasoning that the Court should transfer venue to the District of Maryland based on the fact that the Maryland court had previously rendered a decision on a related patent and after finding that neither the private nor the public factors identified in Jumara supported defendants’ request for venue transfer.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in AT&T Intellectual Property I, L.P. v. Cox Communications, Inc., et al., Civil Action No. 14-1106-GMS (D.Del., July 9, 2015), the Court denied the motion to transfer of defendants after finding that defendant parent company had made prior inconsistent representations to the Court about the principal places of business for its regional entities in prior actions before the Court where they were the parties seeking to transfer venue to the District of Delaware.  The Court found that defendants were “playing fast and loose with the court” and that such conducted constituted sufficient bad faith to justify application of judicial estoppel.  Id. at 3.  The Court found that denying defendants’ pending motion was a narrowly tailored remedy to address the harm.  Id.

The Court went on to explain that, even if it did not apply judicial estoppel, it would reach the same result and deny defendants’ motion to transfer venue because the Court did not find credible the affidavit of defendants’ in-house intellectual property counsel stating that the principal place of business of all defendants was at the parent company’s headquarters in Atlanta, given the inconsistent representations made to the Court about the principal places of business for the same regional entities in prior actions.  Accordingly, the Court denied defendants’ motion.

A copy of the Memorandum Order is attached.

The take away from the decision is that parties should be careful about taking contrary positions and should avoid making what could be found to be inconsistent representations to the Court, unless there is a sound and justifiable reason to explain the change in position.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Memory Integrity, LLC v. Intel Corporation, Civil Action No. 13-1804-GMS (D.Del., February 13, 2015), the Court granted the motion of Defendant Intel Corporation (‘Intel”) to transfer venue of the patent infringement action to the District of Oregon pursuant to 28 U.S.C. § 1404(a).  The Court considered the Jumara factors as a whole and concluded that Intel had met its burden of demonstrating that the interests of justice and convenience favored transfer.  Id. at 3-11.

Several factors were found by the Court to favor transfer including (1) the location where the claim arose; (2) the location of relevant books and records; and (3) practical considerations that might make trial easier and less expensive.  Id.  On the other hand, only plaintiff’s forum preference weighed against transfer and that preference was not afforded maximum deference in this action because of plaintiff’s minimal connection to Delaware.  Id. at 4.

A copy of the Memorandum Opinion is attached.

By Memorandum Order entered by The Honorable Leonard P. Stark in Selene Communication Technologies, LLC v. Trend Micro Inc., et al., Civil Action No. 14-435-LPS (D.Del., January 16, 2015), the Court granted defendants’ motion to transfer the action to the United States District Court for the Northern District of California (“Northern District”), pursuant to 28 U.S.C. § 1404(a). After evaluating and weighing the Jumara factors, the Court found that the factors, in total, weighed strongly in favor of transfer.

In so ruling, the Court concluded that Plaintiff’s choice of forum in the District of Delaware was entitled to less deference because Plaintiff’s principal place of business was in Ohio. Id. at 1-2. The Court also concluded that Defendants’ choice of forum was entitled to some weight because Defendants maintained their principal place of businesses in the Northern District. Id. at 2. The Court also concluded that the location where the claim arose and the convenience of the witnesses weighed in favor of transfer. Id. at 2-3. Of particular note was the fact that three of the four inventors, who are third-party witnesses, reside in the Northern District. Id. at 3.

A copy of the Memorandum Order is attached.

By Memorandum Opinion entered by The Honorable Gregory M. Sleet in Ithaca Ventures k.s., et al. v. Nintendo of America Inc., et al., C.A. No. 13-824-GMS (D.Del., September 25, 2014), the Court granted Nintendo’s motion to transfer the patent infringement action to the Western District of Washington pursuant to 28 U.S.C. § 1404(a). In doing so, the Court found that plaintiff Ithaca’s forum choice was not entitled to maximum deference because, although Itahca Development was organized under Delaware law, its principal place of business being in Texas diminished its argument that Delaware was its “home turf.” See id. at 4. The Court also found significant the fact that Ithaca Development was only organized under Delaware law a few weeks before filing the patent infringement action, which suggested to the Court that Ithaca Development’s organization in Delaware was motivated significantly by the subject litigation. See id. Ultimately, the Court concluded that Nintendo met their burden of demonstrating that the interests of justice and convenience strongly favor transfer under the Jumara factors. See id. at 14.

A copy of the Memorandum Opinion is attached.