797 F. Supp. 2d 472
D. Del.2011Background
- Plaintiff Intellectual Ventures I LLC sued Defendants Check Point, Trend Micro, McAfee, and Symantec in Delaware for patent infringement.
- Defendants seek transfer of venue to the Northern District of California under 28 U.S.C. § 1404(a).
- All accused products are sold in Delaware; Defendants have no Delaware offices or employees.
- IV is a Delaware LLC with principal place of business in Bellevue, Washington;Fund and predecessor entities are Delaware entities.
- Patent-in-suit are four United States patents acquired by the Fund and held by IV prior to these mergers.
- The court must decide whether to transfer considering Jumara private/public factors, given Defendants’ nationwide operations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether transfer under § 1404(a) is appropriate. | IV maintains Delaware is IV's home turf and weighs against transfer. | California forum is convenient due to witnesses, location of events, and counsel. | Transfer denied; IV's choice of forum weighed heavily against transfer. |
| How Jumara private factors affect transfer decision. | IV's home-turf choice and Delaware incorporation weigh in favor of venue in Delaware. | Defendants' forum preference and convenience warrant transfer. | Private factors largely do not overcome IV's forum choice; no transfer. |
| Public interest factors in the Jumara framework. | Delaware has strong local interest; patent cases are federal and national in scope. | California forum offers practical advantages and witnesses. | Public factors weighed against transfer overall; no transfer. |
| Location of witnesses and evidence significance to transfer. | Many inventors and witnesses fall within Delaware subpoena power; discovery can be managed. | Major witnesses and development occur in California; burdens of travel favor transfer. | Weight given to witnesses/evidence is limited; transfer denied. |
Key Cases Cited
- Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) (balancing private and public factors; no definitive formula)
- Shutte v. Armco Steel Corp., 431 F.2d 22 (3d Cir. 1970) (plaintiff's choice of forum should be given deference)
- In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009) (context for considering transfers in patent cases; local connections weigh factors)
- In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (evidence location factor in patent infringement transfer analysis)
- In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008) (patent claims governed by federal law; considerations for transfer)