Smart Audio Technologies, LLC v. Apple, Inc.
2012 U.S. Dist. LEXIS 167340
D. Del.2012Background
- Smart Audio filed suit in Delaware on February 3, 2012 alleging Apple infringed the '163 Patent.
- Apple moved to transfer the action to the Northern District of California under 28 U.S.C. § 1404(a) on April 19, 2012.
- Smart Audio is a Texas LLC; Apple is a California corporation with principal places in Tyler? (Note: actually Cupertino, CA).
- Smart Audio claims infringement by Apple products, including the iPod nano.
- The court denies Apple’s § 1404(a) transfer motion, applying the modern approach to Jumara factors.
- The court discusses evolution of transfer analysis and concludes the two main approaches yield similar results.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether § 1404(a) transfer to ND Cal is proper. | Smart Audio prefers Delaware forum; argues transfer not warranted. | Apple contends ND Cal is proper and more convenient. | Transfer denied; Delaware forum remains appropriate. |
| How the plaintiff's forum preference affects the balance of convenience. | Forum preference should weigh heavily in its favor. | Preference is significant but not controlling; must show strong balance favoring transfer. | Plaintiffs forum preference warrants deference but does not compel transfer. |
| Impact of where the claim arose on venue weight. | Infringement occurs nationwide; venue weighs neutrally. | Development of accused products at California site weighs slightly toward transfer. | Location of operative events weighs slightly in favor of transfer; overall factor neutral to slight transfer bias. |
| Private factors: convenience of parties and witnesses and location of records. | Delaware is convenient forSmart Audio's operations despite Texas location; documents largely in California. | California is convenient for Apple; records and witnesses more accessible there. | Overall neutral; slight tilt against transfer due to records location and practical considerations favoring Delaware. |
| Public factors and practical considerations, including related litigation. | Related Delaware cases on the same patent could yield efficiency. | Related actions should not compel consolidation; argue against transfer. | Practical considerations weigh against transfer; public factors neutral to against transfer. |
Key Cases Cited
- Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995) (two-step analysis; private/public Jumara factors; no definitive formula)
- Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192 (D. Del. 1998) (plaintiff's forum choice is paramount; strong burden to transfer)
- Intellectual Ventures I, LLC v. Altera Corp., 842 F.Supp.2d 744 (D. Del. 2012) (modern vs Affymetrix approaches; forum deference considerations)
- In re Link-A-Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011) (home forum deference limits; guidance on transfer analysis)
- In re Hoffmann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009) (location of operative events considered in transfer)
- In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009) (patent case evidence and records location weigh in transfer)