TQ Delta, LLC v. CommScope Holding Company, Inc.
2:21-cv-00310
E.D. Tex.Mar 28, 2022Background
- TQ Delta, LLC (Delaware LLC; principal place Austin, TX) sued CommScope and related Arris defendants on Aug. 13, 2021, asserting 13 patents (the "Asserted Patents").
- Defendants (several Delaware corporations; two UK entities) moved to transfer venue to the District of Delaware under 28 U.S.C. § 1404(a).
- Delaware had prior litigation and Markman rulings on some (but not all) of the Asserted Patents; Delaware tried three related patents previously.
- TQ Delta identified documentary sources and >30 potential witnesses located in Texas/Eastern District of Texas (including its managing director in Plano and company officials near Austin); CommScope has offices/employees in Texas as well.
- The court applied the Fifth Circuit private/public interest factors (Volkswagen I/II) and found most private factors and several public factors disfavored transfer; only judicial economy/practical problems favored transfer.
- Holding: Motion to transfer to the District of Delaware DENIED (Mar. 28, 2022).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Relative ease of access to sources of proof | Key documents and custodians are in Texas (Plano, Austin); CommScope also has TX records/offices | Delaware has extensive litigation files and prior work on some patents | Disfavors transfer |
| Availability of compulsory process for witnesses | Many non-party and party witnesses are within ED Tex subpoena range (>30) | Relevant third parties participated in Delaware cases; no known third parties in ED Tex | Disfavors transfer |
| Cost of attendance for willing witnesses | Most witnesses (parties and third parties) are closer to ED Tex; CommScope has TX-based employees | Some witnesses live outside TX; Delaware may be more convenient for some unnamed witnesses | Disfavors transfer |
| Other practical problems / judicial economy | Case-specific patents, parties, and discovery differences limit Delaware overlap | Delaware’s prior Markman rulings and trials on several asserted patents favor consolidation/judicial economy | Favors transfer (only factor favoring) |
| Totality (whether Delaware is "clearly more convenient") | Balance of factors shows ED Tex is more convenient | Delaware’s prior experience outweighs inconvenience | Transfer denied — Delaware not clearly more convenient |
Key Cases Cited
- In re Volkswagen AG, 371 F.3d 201 (5th Cir. 2004) (articulates private and public interest factors for § 1404(a) transfers)
- In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008) (movant must show transferee venue is "clearly more convenient")
- In re Vistaprint Ltd., 628 F.3d 1342 (Fed. Cir. 2010) (respect for plaintiff's forum choice and when judicial economy can outweigh convenience)