We've talked a lot about how the Jumara factors, which govern how courts in the Third Circuit exercise their discretion on motions to transfer, are pretty tough on plaintiffs. Patent cases seems to stick more often than not, but plaintiffs with other claims, such as false advertising, may not be so lucky.
Judge Andrews granted a motion to transfer in a false advertising case on Friday. Here's how the factors broke down:
Plaintiff's Choice of Forum: This always favors plaintiff, and …
Today Chief Judge Connolly addressed a motion to dismiss a combined trade dress, federal unfair competition, copyright infringement, and design patent infringement action.
The parties apparently agreed that the defendant in the action did not meet the TC Heartland venue test for the patent portion of the action:
Argento is a New York corporation with its principal place of business in New York. . . . It is undisputed that Argento does not own, rent, or maintain any offices, physical property, addresses, or bank accounts in Delaware and does not employ any Delaware-based employees, agents, or representatives. It is also undisputed that venue of Globefill's patent claim against Argento does not lie …
Today Judge Andrews issued a memorandum order addressing a motion to dismiss in Metrom Rail, LLC v. Siemens Mobility, Inc., C.A. No. 22-49-RGA (D. Del.). He denied the motion (noting that "Allegations of direct infringement do not require much"), but questioned why the patent action was filed in Delaware at all:
The Court cannot help but note that it appears that the case should be transferred to the Southern District of New York, which would clearly have a much greater interest in a case that is all about the New York MTA [the Metropolitan Transportation Authority], its bid processes, and Plaintiff's allegations of nefariousness in connection with the same. Perhaps there is …
My wife runs a stationery business headquartered right here in the . . . state of Delaware. When she filled out the form to set up her LLC, she listed our address as the headquarters and herself as the person to be served with process.
The filing was rejected. When she called to figure out why, the good people at the division of corporations explained that they constantly have people trying to incorporate in Delaware (for reasons all parties involved would be hard-pressed to explain), but who don't want to pay the corporation trust company to act as a registered agent. So they list a P.O. box or just a random address and call it a …
A few weeks ago, we discussed a case where Judge Noreika transferred a trademark case under 1404, citing court congestion. This week, Chief Judge Connolly made a similar move, transferring a contract claim to Florida based largely on the relative congestion of the two courts.
The plaintiff in Arthrex, Inc. v. Nat'l Union Fire Insurance Co. of Pittsburgh, PA , C.A. No. 22-465 (D. Del. Nov. 8, 2022), was a Delaware entity, headquartered elsewhere and none of the defendants had any particular Delaware connection. As is often the case in a patent action, the facts of the dispute …
Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).
This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.
I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to …
We didn't post about this Judge Connolly opinion when it came out back in October, but on revisiting it, I thought it was worth noting.
In deciding a transfer motion, Judge Connolly suggested in a footnote that, for Delaware LLCs, venue may not be proper in Delaware unless the individual members of the LLC are citizens of Delaware (which often may not be the case):
It's not clear to me that a Delaware LLC "resides" in Delaware for purposes of § 1400(b). Although residency is not synonymous with citizenship, the terms are related; and an LLC's citizenship for purposes of deciding whether diversity jurisdiction exists "is determined by the citizenship of each of its members," Zambelli Fireworks Mfg. Co., Inc. v. Wood, 592 F.3d 412,418 (3d Cir. 2010). In this case, I am unable to determine Den-Mat's state of citizenship because it has not expressly identified the persons and/or corporations who are its members.
The Court held that the analysis proceeds up the chain of ownership to include everyone with an interest in the LLC—so it sounds like simply being a subsidiary of a Delaware corporation may not be sufficient:
Den-Mat certified in its Rule 7.1 disclosure statement that its "parent company" is an LLC. . . . It seems likely to me that the parent LLC is Den-Mat's sole member, but I can't be sure of that. In any event, Den-Mat did not identify the members of its parent LLC, and to determine the citizenship of an LLC, courts proceed up the chain of ownership until they determine the identity and citizenship of every individual and corporation with a direct or indirect interest in the LLC . . . .
It's worth noting that the entity at issue ...
Much has been written recently about the struggle between patentees who want their cases to be heard in Texas, and alleged infringers who want those cases to be heard elsewhere. But what happens when a patentee who has been sued in a declaratory judgment action tries to transfer its case to Texas?
For the two defendants in Roku, Inc. v. AlmondNet, Inc., C.A. No. 21-1035-MN, who asked Judge Noreika to move Roku's DJ case to Texas or dismiss it in favor of a co-pending Texas suit involving the same patents and parties, the answer was straightforward: the case stays in Delaware.
Following unsuccessful licensing discussions, Roku filed suit in Delaware just six hours before the defendants filed their mirror-image case in Texas. The defendants then moved to transfer the Delaware case to the Western District of Texas.
Regarding the transfer motion, Judge Noreika found that the threshold requirement for transfer...
This time last year, we wrote about a decision from Chief Judge Connolly denying a motion to transfer from D. Del. to the Central District of California. We didn't write about the "court congestion" factor because there wasn't much to say—the court simply noted that "[b]oth courts are among the busiest in the country" and concluded that the factor was neutral.
Late last week, however, Chief Judge Connolly granted a motion to transfer from D. Del. to C.D. Cal. Among other reasons, he concluded that "[g]iven the districts' relative caseloads, this factor favors transfer."
After noting that D. Del. has significantly more weighted filings per judge than C.D. Cal. (942 compared to 691), …
Yesterday the Federal Circuit granted a mandamus petition to transfer a case against Apple out of the Western District of Texas to the Northern District of California, ordering that Judge Alan D. Albright had clearly erred in declining to transfer the case.
Patently O has a full summary of the opinion, including the strong dissent.
A couple of additional thoughts:
