Intellectual Ventures I LLC v. Altera Corp.
842 F. Supp. 2d 744
D. Del.2012Background
- Plaintiffs Intellectual Ventures I LLC and Intellectual Ventures II LLC are Delaware LLCs with principal offices in Bellevue, WA and an office in the Northern District of California.
- Defendants Xilinx, Altera, Microsemi, and Lattice are Delaware corporations with principal places of business in CA or Irvine, CA; Lattice has a CA engineering facility while others have R&D in CA.
- Plaintiffs allege infringement of five patents related to programmable logic devices by Defendants’ products.
- Plaintiffs filed this patent action on Dec 8, 2010 against Altera, Microsemi, and Lattice; IVI/IVII own the asserted patents.
- Xilinx filed a separate declaratory-judgment action in the N.D. Cal on Feb 14, 2011 for noninfringement/invalidity of IV-owned patents; IV amended to add Xilinx on Feb 15, 2011.
- Motions to transfer were filed (Xilinx: Apr 1, 2011; Original Defendants: Apr 26, 2011); portions of Xilinx California Action were transferred to this court on Jul 27, 2011; mandamus related discussion followed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether transfer under 1404(a) is proper | IV emphasizes plaintiffs’ Delaware forum choice should be given substantial weight | Xilinx/Original Defendants argue Northern District is convenient | Transfer denied; venue not strongly favored by factors |
| Weight of forum preferences | IV’s Delaware choice is paramount as home turf | Defendants prefer Northern District; IV is Delaware entity | Plaintiff’s forum choice given substantial weight; transfer denied |
| Private/public Jumara factors under Link-A-Media | Court should balance all Jumara factors including private interests | Factors weigh in favor of transfer but not strongly | Overall balance not strongly in favor of transfer; maintained in Delaware |
| Consolidation with Xilinx California Action | Consolidation prevents duplication | Not essential to transfer decision | Consolidation granted; dismissal denied |
| Impact of Link-A-Media mandamus on decision | N/A | Link-A-Media provides guidance on balancing factors | Decision adheres to balanced 1404(a) analysis; not compelled by mandamus to transfer |
Key Cases Cited
- Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) (balancing factors under 1404(a))
- Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22 (1988) (broad discretion to weigh convenience and fairness)
- Shutte v. Armco Steel Corp., 431 F.2d 22 (3d Cir.1970) (plaintiff’s forum choice is heavily weighed against transfer)
- Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192 (D.Del. 1998) (case on venue transfer considerations in this district)
- Genentech, Inc. v. Genentech, 566 F.3d 1338 (Fed.Cir.2009) (importance of evidence location and transfer factors in patent cases)
- TS Tech USA Corp. v. TS Tech Corp., 551 F.3d 1315 (Fed.Cir.2008) (federal patent venue analysis guidance)
- Micron Technology, Inc. v. Rambus, Inc., 645 F.3d 1311 (Fed.Cir.2011) (party incorporation weight in venue decisions; convenience of parties)