A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: Transfer

Court Transfers Competitor Patent Action to Plaintiff's Home Jurisdiction, Citing Congestion, Cost of Local Counsel, and Other Factors

Andrew E. Russell, Aug. 20, 2025
Jumara Transfer

If the Wikipedia photo is correct, it looks like the E.D. Wis. courthouse wins the interesting-exterior-lighting battle.
If the Wikipedia photo is correct, it looks like the E.D. Wis. courthouse wins the interesting-exterior-lighting battle. Chris Phan, CC BY 2.0

Yesterday, visiting Judge Barker granted a motion to transfer in MCP IP, LLC v. Velocity Outdoor Inc., C.A. No. 24-683-JCB (D. Del.). The Court's opinion is lengthy and thorough, and it looks like the kind of analysis that is going to be cited quite a bit in future transfer motions.

I won't summarize the whole opinion, but a couple of points stood out to me as worth noting for those who may face (or file) transfer motions in patent cases.

The case was filed in Delaware by a company headquartered in Wisconsin, against a Delaware corporation headquartered in New York. The defendant moved to transfer the case to Wisconsin based (in part) on the fact that the accused products are manufactured there by a subsidiary of the defendant.

The Court applied the Third Circuit's Jumara factors, which—as we've observed in the past)—can be tough to apply consistently, and can tend to favor transfer in IP cases.

Plaintiff's Forum Preference - This is the factor that consistently favors plaintiff. As the Court here noted, different judges have given this factor differing amounts of weight depending on the defendant's connection to Delaware. Judge Barker decided to give it its full weight despite the fact that the plaintiff here had no connection to Delaware:

[T]he District of Delaware has given the plaintiff’s choice different weight in different cases. In some, it discounted the weight of the plaintiff’s choice where the plaintiff lacked any connection to the forum state. . . . In others, it reasoned that the plaintiff’s connection to the forum has no bearing on the factor. . . . To ensure that plaintiff’s choice of forum is not lightly disturbed and to avoid double counting factors, this court will assume that this factor remains paramount and is not dampened by plaintiff’s lack of connection to Delaware. Cf. Rampart, 2025 WL 227287, at *2 (“Many of the reasons for lessening the importance of a plaintiff ’s choice in forum are subsumed and given weight under [other] Jumara factors . . . .”). Accordingly, this factor weighs strongly against transfer.

MCP IP, LLC v. Velocity Outdoor Inc., C.A. No. 24-683-JCB, at 11 (D. Del. Aug. 19, 2025).

Here are notes from some of the more interesting Jumara factor analyses here:

Whether the Claim Arose Elsewhere - The Court declined to hold that a patent case like this arises everywhere the defendant sells infringing products. It noted that the products are ...

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Rules For Guests

Nathan R. Hoeschen, Jan. 21, 2025
Visiting Judges Transfer

As a child, I was frequently frustrated by the differing rules that governed different houses. My house was a shoes-on place, while most of my friends houses were strict shoes in the bucket at the door affairs (this was the early 90s so carpet was the rule).

It usually also had a splotchy brown pattern so that a spilled root beer might pass without notice. The midwest is a practical place.
It usually also had a splotchy brown pattern so that a spilled root beer might pass without notice. The midwest is a practical place. Jon Tyson, Unsplash

I was instructed to remove my shoes at their doors and respect the primacy of house rules. In other realms, a visiting child brought their own rules with them -- perhaps they would be allowed a later bedtime, additional snack, or the high privilege of a PG-13 movie -- indulgences normally forbidden in my house.

This is one of the many reasons I have always hated choice of laws, and will not write about it in the blog. I will also stealthily delete any Andrew posts on it and assume he won't notice.

Today's post deals with a different sort of visitor, and an interesting wrinkle that I had not considered before.

Rampart IC, LLC v. Egg Medical, Inc., C.A. No. 24-643-JCG (D. Del. Jan. 17, 2025) was assigned to visiting judge Choe-Groves from the Court of International Trade. The defendant, Egg, was a Delaware corporation with its principal place of business in Minnesota (probably carpeted). They moved to transfer the case back to balmy Minneapolis.

One of the Jumara factors that govern transfer in the Third Circuit is the relative congestion in each fora. Typically, this factor favors transfer because Delaware Judges have among the highest (or often the highest) weighted caseloads in the nation.

In denying the motion, however, Judge Choe-Groves ...

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The Jumara Factors Strike Again

Andrew E. Russell, Aug. 26, 2024
Motion to Transfer Transfer

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>. Who wouldn't want to litigate here? These guys, obviously.
Wilmington, DE. Who wouldn't want to litigate here? These guys, obviously. Andrew Russell, CC BY 2.0

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 …

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No Pendent Venue for Patent Claims

Andrew E. Russell, May 17, 2023
Venue Transfer

Visualization of pendent venue
Visualization of pendent venue Chris Linnett, Unsplash

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 …
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Court Sua Sponte Suggests Transfer of Patent Action, Directs Parties Opposing Transfer to File Briefs

Andrew E. Russell, March 22, 2023
Transfer

Subway platform
Eddi Aguirre, Unsplash

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 …
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Nobody Lives In Texas Either

Nathan R. Hoeschen, Nov. 15, 2022
Transfer

#Texas Troll
AI-Generated, displayed with permission

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 …

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Chief Judge Connolly Transfers Case Citing Court Congestion

Nathan R. Hoeschen, Nov. 13, 2022
Transfer

We're sad to see it go, but honestly the case is probably happier in Florida
We're sad to see it go, but honestly the case is probably happier in Florida Joël de Vriend, Unsplash

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 …

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Judge Noreika Transfers Trademark and False Advertising Case Out of Delaware. Are Patent Case Transfers Coming?

Andrew E. Russell, Oct. 28, 2022
28 U.S.C. § 1404(a) Jumara

Artist's depiction of the <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Jumara v. State Farm Ins. Co., 55 F.3d 873 (3d Cir. 1995)'>Jumara</a> factors in action
Artist's depiction of the Jumara factors in action Nick Fewings, Unsplash

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 …

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No Venue in Delaware for Delaware LLCs?

Andrew E. Russell, Jan. 9, 2022
Jumara Transfer

Delaware Memorial Bridge
Chintan Jani, Unsplash

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 ...

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Patentees' Bid for Transfer to Texas Fails

Jeff Castellano, Nov. 16, 2021
First-filed MTD

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?

Maybe next time.
Maybe next time. Threes Company, Vivian Arcidiacono, Unsplash

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...

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