Round Rock Research, LLC v. Dell, Inc.
Round Rock Research, LLC v. Dell, Inc.
Opinion of the Court
MEMORANDUM OPINION
Before the Court is a motion to transfer this case to the Northern District of California. (D.I. 34).
Plaintiff sued Dell alleging infringement of ten patents relating to what appears to be nine different computer-related topics. (D.I. 12). Dell duly answered, and a scheduling order was entered providing for a trial in June 2014. (D.I. 24). Dell subsequently filed the instant motion. It has been fully briefed and orally argued. (D.I. 60).
The statutory authority for transferring the case is § 1404(a) of Title 28, which provides: “For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.”
“[I]n ruling on defendants’ motion the plaintiffs choice of venue should not be lightly disturbed.”
In ruling on § 1404(a) motions, courts have not limited their consideration to the three enumerated factors in § 1404(a) (convenience of parties, convenience of witnesses, or interests of justice), and, indeed, commentators have called on the courts to “consider all relevant factors to determine whether on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum.” While there is no definitive formula or list of the factors to consider, courts have considered many variants of the private and public interests protected by the language of § 1404(a).
The private interests have included: (1) plaintiffs forum preference as manifested in the original choice; (2) the defendant’s preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses-but only to the extent that the witnesses*376 may actually be unavailable for trial in one of the fora; and (6) the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).
The public interests have included: (7) the enforceability of the judgment; (8) practical considerations that could make the trial easy, expeditious, or inexpensive; (9) the relative administrative difficulty in the two fora resulting from court congestion; (10) the local interest in deciding local controversies at home; (11) the public policies of the fora; and (12) the familiarity of the trial judge with the applicable state law in diversity cases.
Id. at 879-80 (citations omitted and numbering added).
Round Rock Research LLC is a Delaware limited liability company with its principal place of business in Mt. Kisco, New York. (D.I. 12, ¶ 1). Dell, Inc. is a Delaware corporation with its principal place of business in Round Rock, Texas. (Id., ¶ 2). Round Rock is near Austin in the Western District of Texas.
There is no dispute that this case could have been brought against the defendant in the Northern District of California, as among other things, it has a significant place of business in Sunnyvale, California. (D.I. 36, ¶¶ 2-4; D.I. 60, pp. 25-26 [conceding case could have been brought in Northern District of California]).
In my view, interest (1) supports Plaintiffs position that the case should not be transferred. Interest (2), and to a significantly lesser extent (5) and (6), support the defendant’s request to transfer the case. The other interests do not add much to the balancing. The twelve interests are not exclusive, and in this case there are other considerations that I take into account.
Plaintiff has chosen Delaware as a forum. That choice weighs strongly in Plaintiffs favor, although not as strongly as it would if Plaintiff had its principal places of business (or, indeed, any place of business) in Delaware. See Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970) (“plaintiffs choice of a proper forum is a paramount consideration in any determination of a transfer request”); Pennwalt Corp. v. Purex Industries, Inc., 659 F.Supp. 287, 289 (D.Del. 1986) (plaintiffs choice of forum not as compelling if it is not plaintiffs “home turf’).
Defendant’s preference is the Northern District of California. It is not the Defendant’s home turf, but the Defendant does have business operations there and its lawyers are from San Francisco. Defendant’s choice has a legitimate basis, and therefore this factor weighs in favor of transfer.
The Defendant has not argued in its briefing that the claim arose in the Northern District of California. No one argues that the claim arose in Delaware. Dell computers are sold throughout the United States, and I would view the claim of infringement as being one that arises wherever the computers are sold. See In re Acer America Corp., 626 F.3d 1252, 1256 (Fed.Cir. 2010). Thus, this factor has no weight in the balancing.
Plaintiff is a small corporation, but it has high-powered lawyers and has sued an array of prominent defendants in this and related cases. The defendant is a substantial corporation and can litigate anywhere. It too has high-powered lawyers. Other than size, there is nothing in the record relating to “physical and financial condition.” I do not think this factor significantly favors either side, and therefore I will treat it as neutral.
At this juncture, it is hard to tell who the witnesses might be. Much of the dispute on this motion concerns third party witnesses. The ten asserted patents ap
Similarly, it is hard to tell where most of the books and records would be. The only identified holders of records are the parties,
Enforceability of the judgment is not an issue.
Practical considerations that could make the trial easy, expeditious, or inexpensive are evenly balanced. A trial in Delaware is likely to be less easy and more expensive for Dell than a trial in the Northern District of California, because of travel considerations and expenses for witnesses.
The relative administrative difficulty due to court congestion, to the extent that is different than the time to trial concern addressed above, is not argued, and is therefore neutral.
The “local controversy” consideration is also inapplicable here. See Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d 192, 207 (D.Del. 1998).
The public policy of Delaware encourages the use by Delaware corporations— such as Round Rock and Dell — of Delaware as a forum for the resolution of business disputes.
This is not a diversity case, and thus knowledge of state law is irrelevant here.
Other than Dell’s Delaware incorporation and Plaintiffs Delaware incorporation and its choice to sue in Delaware (which, as noted, makes the litigation more economical and convenient for the Plaintiff), there is another factor that ought to be considered. The Plaintiff has sued three other computer manufacturers (Lenovo, Acer, ASUS) in pending Delaware cases (Nos. 11-977-RGA, 11-978-RGA, and 11-1011-RGA), and there is also litigation relating to at least one of the patents in the Northern District of California.
Under Third Circuit law, considerable deference is given to the plaintiffs choice of forum. In considering all the transfer factors identified in Jumara, as well as the pending litigation against the codefendants, I do not think Dell has shown that the balance of convenience tips strongly enough in its favor so that transfer should be ordered. I will therefore deny its motion to transfer.
I have considered In re Link-A-Media Devices Corp., 662 F.3d 1221 (Fed.Cir. 2011).
An appropriate order will be entered.
ORDER
This 15th day of November 2012, for the reasons stated in the accompanying Memorandum Opinion, IT IS HEREBY ORDERED:
1. Defendant Dell’s Motion to Transfer to the Northern District of California (D.I. 34) is DENIED.
. The amendment to § 1404 does not apply to this cáse, which was filed before the effective date of the amendment.
. Dell has identified ten third party suppliers, all with substantial business operations in California. (D.I. 35, pp. 8-9). The parties have not begun third party discovery. The only notice of any third-party discovery to date was on an unrelated issue. (D.I. 47). The Court is not persuaded that the records of these suppliers will be important to the litigation.
. Indeed, from the careful way that Dell states that some evidence relating to some of the patents is in California (D.I. 35, p. 9), it seems apparent that the bulk of the evidence is probably in Texas.
. While there is a paragraph in In re Link-A-Media Devices Corp., 662 F.3d 1221, 1224 (Fed.Cir. 2011), about “the convenience of the witnesses and the location of the books and records,” I do not understand the Federal Circuit to have altered the Third Circuit’s focus on the issue being not so much where the witnesses and evidence are, but whether they can be produced in court.
. The Court gave a later trial date than the Plaintiff requested, but an earlier trial date than Dell requested. (See D.I. 21, p. 12).
. The State of Delaware Division of Corporations, on its website, prominently asks, "Why Choose Delaware as Your Corporate Home?” The answer follows: "More than 900,000 business entities have their legal home in Delaware including more than 50% of all U.S. publicly-traded companies and 63% of the Fortune 500. Businesses choose Delaware because we provide a complete package of incorporation services including modern and flexible corporate laws, our highly-respected Court of Chancery, a business-friendly State Government, and the customer service-oriented Staff of the Delaware Division of Corporations.”
. There is litigation between ASUS and Round Rock in No. 11-6636-CW, with essentially the same issues as in Round Rock v. ASUS in Delaware. There is also an ASUS and Round Rock litigation in No. 12-2099-PSG, which appears to involve six patents, one of which is asserted against Dell in the litigation in this District. There is also litigation between SanDisk and Round Rock in No. 11-5243-RS, which involves eleven patents, at least two of which are also at issue in the No. 12-2099 litigation. SanDisk is not a party in Delaware. The California ASUS litiga
. The Federal Circuit’s numerous transfer cases arising from the Fifth Circuit are not controlling as the Federal Circuit interprets the law of the Circuit in which the District Court sits. See In re Link-A-Media, 662 F.3d at 1223. The law of the two Circuits in regard to how to conduct a transfer analysis is different in a number of regards. Of greatest relevance, "Fifth Circuit precedent clearly forbids treating the plaintiff’s choice of venue as a distinct factor in the [transfer] analysis.” In re TS Tech USA Corp., 551 F.3d 1315, 1320 (Fed.Cir. 2008). As noted earlier, the Third Circuit treats the plaintiff’s choice as a factor of "paramount importance.”
Reference
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- ROUND ROCK RESEARCH, LLC v. DELL, INC.
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- Published