A Blog About Intellectual Property Litigation and the District of Delaware

Entries for tag: Transfer

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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 …

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 …

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 …

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 ...

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...

LA Sunset
Cameron Venti, Unsplash

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:

  • It is interesting that the Federal Circuit did not have a problem with Apple filing its mandamus petition before the District Court had even ruled on the motion to transfer. Footnote 1 does limit this practice to the "particular circumstances of the case," but obviously it worked out well for Apple here.
  • The Federal Circuit's opinion applies Fifth Circuit …

Adolfo Félix, Unsplash

The short answer is: it depends on the judge.

These days, most Delaware patent plaintiffs are incorporated in Delaware but not located here. Different District of Delaware judges have gone different ways on the question of whether a plaintiff's location actually matters when considering whether to transfer a case out of Delaware.

Transfer motions are governed by the twelve "Jumara factors," and plaintiff's choice of forum gets "paramount" weight except—some judges have held—when the plaintiff is not actually located in Delaware.

Judge Connolly today answered this question with a resounding "no," holding that the location of plaintiff's principal place of business does not matter to whether it's choice of forum gets paramount weight: …

Wilmington, <a href='#' class='abbreviation' data-bs-toggle='tooltip' data-placement='top' title='Delaware'>DE</a>
Wilmington, DE Andrew Russell, CC BY 2.0

In an opinion today, Judge Andrews laid out his updated thoughts on transfer motions, particularly in light of COVID-19 travel restrictions and the related difficulties.

Here are some interesting points re: his views:

  • In granting transfer, he focused on the fact that the Plaintiff's principal place of business was not Delaware
  • He held that convenience of counsel is irrelevant, because parties can choose their counsel.
  • As far as court congestion, he noted that "[o]ne other Delaware judge and I each individually had more old cases than the entire Western District [of Washington]," and that the Judicial Conference has recommended …

I'm not sure that these are actually Georgia peaches.
I'm not sure that these are actually Georgia peaches. Joanna Stołowicz, Unsplash

Judge Noreika granted a motion to transfer yesterday in a case against an Equifax entity, where 3 of the Third Circuit's Jumara factors favored transfer, and only one (plaintiff's choice of forum) weighed against.

My first thought was—Did the plaintiff really have only one factor in it's favor?

Judge Noreika usually credits the fact that the Defendant is a Delaware corporation, and I thought Equifax was one.

Turns out, so did plaintiff. The complaint lists the defendant as a Delaware corporation. But—as the Court notes—Equifax Information Services is actually a Georgia entity. Plaintiff messed up.

So the transfer makes sense. The plaintiff is Hawaiian, meaning …