Peregrine Semiconductor Corporation v. RF Micro Devices, Inc. et al

Filing 38

ORDER: (1) Denying 13 Defendants' Motion to Transfer Case to the Middle District of North Carolina; (2) Denying Plaintiff's 37 Ex Parte Motion for Leave to File a Surreply; Signed by Judge Irma E. Gonzalez on 6/8/2012.(jah)(jrd)

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UNITED STATES DISTRICT COURT

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SOUTHERN DISTRICT OF CALIFORNIA

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PEREGRINE SEMICONDUCTOR
CORPORATION, a Delaware corporation,

CASE NO. 12cv911 - IEG (WMC)
ORDER:

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Plaintiff,

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(1) DENYING DEFENDANTS’
MOTION TO TRANSFER

vs.

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[Doc. No. 13]
(2) DENYING PLAINTIFF’S EX
PARTE MOTION FOR LEAVE TO
FILE A SURREPLY

RF MICRO DEVICES, INC., a North
Carolina corporation, MOTOROLA
MOBILITY, INC., and JOHN DOES 1-10,

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[Doc. No. 37]

Defendants.

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Presently before the Court is Defendants RF Micro Devices, Inc. (“RFMD”) and Motorola

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Mobility, Inc. (“Motorola”) (collectively “Defendants”)’s motion to transfer the action to the

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Middle District of North Carolina. [Doc. No. 13.] For the reasons below, the Court DENIES the

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motion.1

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BACKGROUND
This is a patent infringement action. On April 13, 2012, Plaintiff Peregrine Semiconductor

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Corporation (“Peregrine”) filed the present action against RFMD and Motorola alleging

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infringement of U.S. Patent No. 7,910,993 (the “‘993 Patent”), U.S. Patent No. 7,123,898 (the

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On May 31, 2012, Plaintiff filed an ex parte motion for leave to file a surreply. [Doc. No.
37.] After considering Plaintiff’s ex parte motion, the Court declines to grant Plaintiff leave to file
its surreply and DENIES Plaintiff’s ex parte motion.
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“‘898 Patent”), U.S. Patent No. 7,460,852 (the “‘852 Patent”), U.S. Patent No. 7,796,969 (the

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“‘969 Patent”), and U.S. Patent No. 7,860,499 (the “‘499 Patent”) (collectively “the patents-in-

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suit”). [Doc. No. 1, Compl.] In the complaint, Peregrine accuses both integrated circuits, which

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are marketed and sold by RFMD, and devices that use those circuits, which are marketed and sold

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by Motorola, of infringing the patents-in-suit. [Id. ¶¶ 12, 18, 24, 30, 36.]

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Peregrine is a Delaware corporation with its principal place of business in San Diego

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California. [Doc. No. 32-1, Declaration of Joel Keller (“Keller Decl.”) ¶ 2.] Peregrine

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manufactures semiconductors and is the owner of the patents-in-suit. [Id. ¶ 4, 6.] Four of the

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inventors of the patents-in-suit–Jim Cable, Mark Burgener, Dylan Kelly, and George Imthurn–are

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Peregrine employees. [Id. ¶ 5.] The other remaining four inventors–Christopher Brindle, Michael

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Stuber, Clint Kemerling, and Robert Welstand–are not Peregrine employees but are located in the

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Southern District of California. [Id.]

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RFMD is a North Carolina corporation with its principal place of business in Greensboro,

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North Carolina. [Doc. No. 13-2, Declaration of Eric Creviston (“Creviston Decl.”) ¶ 4.] More

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than twenty of the RFMD engineers involved in the design, development, and testing of the

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accused circuits and the related documents are located in Greensboro. [Id. ¶¶ 9-10.] Substantially

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all of the RFMD employees who market and sell the accused circuits in the United States and the

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documents relating to marketing are located in Greensboro. [Id. ¶¶ 13-14.] Substantially all of the

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RFMD employees knowledgeable about financial data and documents relating to financial data are

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located in Greensboro. [Id. ¶¶ 15-16.] The accused circuits are manufactured primarily in

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Burlington, Vermont. [Id. ¶ 26.]

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Motorola is a Delaware Corporation with its principal place of business in Libertyville,

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Illinois. [Doc. No. 13-3, Declaration of Robert Pluta (“Pluta Decl.”) ¶ 4.] Motorola does not

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design, manufacture, or separately sell or offer for sale the accused circuits. [Id. ¶¶ 6-8.]

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Motorola purchases the accused circuits from RFMD for use in its smartphones. [Id. ¶ 5.] The

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Motorola engineers who communicate with RFMD regarding the acquisition and integration of the

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accused circuits in Motorola’s smartphones are located in Lowell, Massachusetts. [Id. ¶ 9.] The

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Motorola employees and documents relevant to the sale and marketing of the accused smartphones
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are primarily located in Libertyville, Illinois. [Id. ¶ 10.]

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DISCUSSION
I.

Legal Standards for a Motion to Transfer

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Under 28 U.S.C. § 1404, a district court “may transfer any civil action to any other district

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or division where it might have been brought” “for the convenience of parties and witnesses” and

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“in the interest of justice.” 28 U.S.C. § 1404(a). This statute “is intended to place discretion in the

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district court to adjudicate motions for transfer according to an ‘individualized, case-by-case

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consideration of convenience and fairness.’” Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29

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(1988) (quoting Van Dusen v. Barrack, 376 U.S. 612, 622 (1964)). Because a motion to transfer

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does not involve substantive issues of patent law, Defendants’ motion is governed by regional

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circuit law. See In re TS Tech United States Corp., 551 F.3d 1315, 1319 (Fed. Cir. 2008); Storage

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Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823, 836 (Fed. Cir. 2003).

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Determining whether an action should be transferred pursuant to § 1404(a) is a two-step

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process in which the burden of proof is on the defendant. Commodity Futures Trading Comm’n v.

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Savage, 611 F.2d 270, 279 (9th Cir. 1979). The district court must first determine whether the

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action “might have been brought” in the transferee court, and then the court must determine

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whether the “convenience of the parties and witnesses in the interest of justice” favor transfer.

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Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985). The second determination requires

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the district court “to weigh multiple factors.” Jones v. GNC Franchising, Inc., 211 F.3d 495, 498

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(9th Cir. 2000). The factors may include: (1) the plaintiff’s choice of forum; (2) the contacts

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relating to the plaintiff’s cause of action in the chosen forum; (3) the respective parties’ contacts

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with the forum; (4) the availability of compulsory process to compel attendance of unwilling

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non-party witnesses; (5) the differences in the costs of litigation in the two forums; (6) the ease of

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access to sources of proof; (7) the location where the relevant agreements were negotiated and

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executed; (8) the state that is most familiar with the governing law; (9) the feasibility of

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consolidation with a pending case in the transferee forum; (10) the speed to trial in two forums;

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(11) the local interest in having localized controversies decided at home; and (12) the unfairness of

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burdening citizens in an unrelated forum with jury duty. See id. at 498-99; Decker Coal Co. v.
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Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986).

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The “[w]eighing of factors for and against transfer involves subtle considerations and is

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best left to the discretion of the trial judge.” Sparling v. Hoffman Constr. Co., Inc., 864 F.2d 635,

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639 (9th Cir. 1988) (quotation marks omitted). Therefore, the decision of whether to transfer an

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action under § 1404(a) is reviewed for abuse of discretion. Id.

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II.

Whether the Action Could Have Been Brought In The Middle District of North

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Carolina

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Defendants argue that Peregrine’s action could have been brought in the Middle District of

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North Carolina. [Doc. No. 13-1 at 8-9.] The phrase where an action “could have been brought” is

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interpreted to mean that the proposed transferee court would have subject matter jurisdiction,

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proper venue, and personal jurisdiction. See A. J. Industries, Inc. v. U.S. District Court for Central

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Dist. of Cal., 503 F.2d 384, 386-88 (9th Cir. 1974); Shapiro v. Bonanza Hotel Co., 185 F.2d 777,

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779-81 (9th Cir. 1950).

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A.

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Under 28 U.S.C. § 1338(a), district courts have subject matter jurisdiction over claims for

Subject Matter Jurisdiction

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patent infringement. AstraZeneca Pharms. LP v. Apotex Corp., 669 F.3d 1370, 1377 (Fed. Cir.

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2012) (“The district courts have original jurisdiction over any civil action arising under any Act of

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Congress relating to patents.”). Therefore, a district court in the Middle District of North Carolina

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would have subject matter jurisdiction over Peregrine’s action.
Venue and Personal Jurisdiction over Defendants

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B.

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Venue in a patent infringement action is proper in any judicial district “where the

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defendant resides or where the defendant has committed acts of infringement and has a regular and

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established place of business.” 28 U.S.C. § 1400(b). For venue purposes, the residence of a

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corporate defendant is governed by 28 U.S.C. § 1391(c), which provides that the defendant shall

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be determined to reside in any judicial district where the defendant is subject to personal

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jurisdiction. See Hoover Group v. Custom Metalcraft, 84 F.3d 1408, 1410 (Fed. Cir. 1996);

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Timeline, Inc. v. Proclarity Corp., 2006 U.S. Dist. LEXIS 50056, at *15 (W.D. Wash. Jul. 20,

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2006).
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Federal Circuit law governs the determination of personal jurisdiction in an action for

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patent infringement. Avocent Huntsville Corp. v. Aten Int’l Co., 552 F.3d 1324, 1328 (Fed. Cir.

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2008). To establish specific jurisdiction, a plaintiff must demonstrate that the defendant has

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“purposefully directed” his activities at residents of the forum, and the litigation results from

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alleged injuries that arise out of or relate to those activities. Id. at 1330. Thus, in an ordinary

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patent infringement suit, “for purposes of specific jurisdiction, the jurisdictional inquiry is

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relatively easily discerned from the nature and extent of the commercialization of the accused

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products or services by the defendant in the forum.” Id. at 1332.

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Defendants argue that the Middle District of North Carolina would have specific personal

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jurisdiction over both Defendants because they have conducted business, sold accused products,

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and employed personnel in that district. [Doc. No. 13-1 at 8-9.] In addition, Defendants states that

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they are subject to service of process in that district. [Id. at 9.] Peregrine does not appear to

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dispute these facts or contest that the Middle District of North Carolina would have specific

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personal jurisdiction over the Defendants. [See generally Doc. No. 32.] Therefore, Defendants

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have met their burden of showing that the Middle District of North Carolina would have personal

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jurisdiction over them and venue would be proper.

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C.

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In its opposition, Peregrine argues that Defendants have failed to meet their burden of

Personal Jurisdiction over Plaintiff

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showing that the action could have been brought in the Middle District of North Carolina because

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the Defendants have not shown that the district would have personal jurisdiction over Peregrine.

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[Doc. No. 32 at 4-6.] In support of its position, Peregrine cites to several district court cases where

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the courts considered whether the transferee court would have personal jurisdiction over the

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plaintiff. [Id. (citing Sanofi-Aventis Deutschland GmbH v. Novo Nordisk, Inc., 614 F. Supp. 2d

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772, 780 (E.D. Tex. 2009); Tape & Techs. v. Davlyn Mfg. Co., 2005 U.S. Dist. LEXIS 8291, at

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*10-11 (W.D. Tex. May 6, 2005); Aerotel, Ltd. v. Sprint Corp., 100 F. Supp. 2d 189, 198

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(S.D.N.Y. 2000)).] However, the Federal Circuit and several district courts in the Ninth Circuit

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have expressly rejected this argument and held that “[t]here is no requirement under § 1404(a) that

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a transferee court have jurisdiction over the plaintiff or that there be sufficient minimum contacts
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with the plaintiff.” In re Genentech, Inc., 566 F.3d 1338, 1346 (Fed. Cir. 2009); accord. Pac.

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Coast Trailers, LLC v. Cozad Trailer Sales, LLC, 2010 U.S. Dist. LEXIS 90615, at *5 n.1 (E.D.

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Wash. Jul. 21, 2010); FTC v. Watson Pharms., Inc., 611 F. Supp. 2d 1081, 1090 (C.D. Cal. 2009);

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see also Hoffman v. Blaski, 363 U.S. 335, 343-44 (1960) (holding that the power to transfer an

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action under § 1404 is dependant “upon whether the transferee district was one in which the action

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‘might have been brought’ by the plaintiff”). The Court finds the reasoning from these cases more

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persuasive than the cases cited by Peregrine. Therefore, Defendants are not required to show that

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the Middle District of North Carolina would have personal jurisdiction over Peregrine.

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D.

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Conclusion

In sum, Defendants have met their burden of showing that Peregrine could have brought

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the present action in the Middle District of North Carolina.

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III.

Analysis of the 1404(a) Factors

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A.

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Generally, a defendant “must make a strong showing of inconvenience to warrant upsetting

Plaintiff’s Choice of Forum

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the plaintiff’s choice of forum.” Decker Coal, 805 F.2d at 843. Moreover, “[a] plaintiff’s choice

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of forum is entitled to greater deference when the plaintiff has chosen its ‘home forum.’” In re

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Ferrero Litig., 768 F. Supp. 2d 1074, 1078 (S.D. Cal. 2011) (quoting Piper Aircraft Co. v. Reyno,

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454 U.S. 235, 256 (1981)). Peregrine is headquartered in the Southern District of California.

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[Doc. No. 32-1, Keller Decl. ¶ 2.] Therefore, its choice to bring suit in this district is entitled to

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great deference. See id.

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Defendants argue that Peregrine’s choice of forum should be given no deference because

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Peregrine previously filed an identical complaint in the Central District of California. [Doc. No.

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13-1 at 10-11.] Defendants further argue that none of the parties, likely witnesses, or documents

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bore any connection to the Central District. [Id. at 10.] Defendants’ arguments might have been

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persuasive if the action was still located in the Central District of California. However, Peregrine

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voluntarily withdrew its action from the Central District and filed it in the Southern District, where

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Peregrine is headquartered. Defendants have failed to provide the Court with any authority

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supporting their contention that Peregrine’s decision to previously file its complaint in the Central
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District of California weakens the deference to which Peregrine is entitled for now having filed the

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action in its home forum. Defendants accuse Peregrine of engaging of forum shopping. [Id. at 9-

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11.] However, concerns about forum shopping are low when the plaintiff brings an action in its

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home forum, see, e.g., Carijano v. Occidental Petroleum Corp., 643 F.3d 1216, 1229 (9th Cir.

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2011); Cardoza v. T-Mobile USA Inc., 2009 U.S. Dist. LEXIS 25895, at *9 (N.D. Cal. Mar. 18,

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2009) (“A plaintiff’s decision to sue in the forum where its company is based does not amount to

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impermissible forum shopping.”), and when the plaintiff’s action involves claims for patent

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infringement. See Heartland Payment Sys. v. VeriFone Isr., Ltd., 2010 U.S. Dist. LEXIS 41226,

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at *10 (N.D. Cal. Apr. 22, 2010).

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Defendants also argue that Peregrine’s choice of forum is entitled to little deference

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because the Southern District of California has no connection to the operative facts of this case.

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[Doc. No. 11-13.] The Court finds that it is more appropriate to address this argument in the next

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factor below, the contacts in the forum relating to Plaintiff’s cause of action. Cf. Mentor Graphics

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Corp. v. EVE-USA, Inc., 2011 U.S. Dist. LEXIS 57181, at *3-4 (D. Or. Apr. 8, 2011) (explaining

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that even if the hub of infringing activity occurred elsewhere, the plaintiff’s choice to bring the

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action in its home forum was still entitled to substantial deference). Accordingly, because

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Peregrine has chosen to file the present action in its home forum, this factor weighs heavily against

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transfer. See Decker Coal, 805 F.2d at 843; Piper Aircraft, 454 U.S. at 256.

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B.

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Defendants argue that Peregrine’s choice of forum is entitled to little deference because the

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Southern District of California has no connection to the alleged infringing activities. [Doc. No. 11-

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13.] In response, Peregrine argues that some operative facts have occurred in this district. [Doc.

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No. 32 at 8-9.]

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The Contacts Relating to the Plaintiff’s Cause of Action

Courts may consider the facts of the case in determining how much deference to give the

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plaintiff’s choice of forum. Ferrero, 768 F. Supp. 2d at 1079; see, e.g., Pacific Car & Foundry Co.

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v. Pence, 403 F.2d 949, 954 (9th Cir. 1968) (considering whether “the operative facts” “occurred

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within the forum of original selection” and whether that forum had any “particular interest in the

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parties or the subject matter”). However, “[a] plaintiff’s choice of forum receives minimal
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consideration only if ‘operative facts have not occurred within the forum and the forum has no

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interest in the parties or subject matter[.]’” Brighton Collectibles, Inc. v. RK Tex. Leather Mfg.,

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2012 U.S. Dist. LEXIS 29434, at *11 (S.D. Cal. Mar. 6, 2012) (quoting Lou v. Belzberg, 834 F.2d

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730, 739 (9th Cir. 1987)); see also Forest Guardians v. Kempthorne, 2007 U.S. Dist. LEXIS

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65537, at *13 (S.D. Cal. Sept. 5, 2007) (“[V]enue is not limited to the district where the most

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substantial events occurred.”).

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Defendants argue that the Southern District of California has no connection to the alleged

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infringing activities. [Doc. No. 13-1 at 11-13.] In support of its argument, Defendants state that

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nearly all the relevant witnesses and documents regarding the design, manufacture, marketing, and

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sale of the accused products are located in Greensboro, North Carolina. [Id. at 12.] However, this

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argument only addresses the sources of proof in the case, which is relevant to a different factor. It

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does not address whether the alleged infringing activities have occurred in District. Under 35

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U.S.C. § 271, “whoever without authority makes, uses, offers to sell, or sells any patented

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invention, within the United States or imports into the United States any patented invention during

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the term of the patent therefor, infringes the patent.” Therefore, the alleged infringing activity

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occurs wherever the Defendants make, use, offer to sell, or sell the accused products. Defendants

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only state that none of the accused products are manufactured in the Southern District of

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California. [Doc. No. 13-1 at 13.] Defendants do not state whether they have sold the accused

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products or offered the accused products for sale in this District. Peregrine has produced evidence

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showing that the accused products are sold in several stores in the Southern District of California.

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[Doc. No. 32-4, Declaration of Monica Kapuscinska (“Kapuscinska Decl.”) ¶ 2.] Therefore, at

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least some of the operative facts of the complaint have occurred in this District. See Tessenderlo

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Kerley, Inc. v. D & M Chem, Inc., 2011 U.S. Dist. LEXIS 129945, *5 (N.D. Cal. Nov. 7, 2011)

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(explaining that the operative facts in a patent infringement action occur where the patent is

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actually infringed).

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Defendants also argue that Greensboro, North Carolina is the center of the alleged

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infringing activity. [Doc. No. 13-1 at 3-5.] Several district courts in the Ninth Circuit have held

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that “[i]n patent infringement actions, the preferred forum is ‘that which is the center of gravity of
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the accused activity.’” Amazon.com v. Cendant Corp., 404 F. Supp. 2d 1256, 1260 (W.D. Wash.

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2005); see, e.g., Tessenderlo Kerley, Inc. v. D & M Chem, Inc., 2011 U.S. Dist. LEXIS 129945, at

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*8-9 (N.D. Cal. Nov. 7, 2011); Google, Inc. v. Traffic Info., LLC, 2010 U.S. Dist. LEXIS 27017,

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at *14-15 (D. Or. Feb. 2, 2010). Therefore, “[t]he district court ‘ought to be as close as possible to

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the milieu of the infringing device and the hub of activity centered around its production.’”

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Amazon, 404 F. Supp. 2d at 1260. Defendants have produced evidence showing that the accused

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circuits were designed, developed, and tested in Greensboro, North Carolina and witnesses and

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documents relevant to the production of the accused products are located in Greensboro. [Doc.

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No. 13-2, Creviston Decl. ¶¶ 3, 9-24.] Peregrine does not dispute these facts. Peregrine simply

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argues that it is unclear Greensboro is the center of gravity because the accused circuits are

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manufactured in Vermont, the Motorola engineers involved in the integration of the accused

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circuits into Motorola smartphones are located in Lowell, Massachusetts, and the Motorola

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employees and documents relevant to the sales and marketing of the accused phones are located in

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Libertyville, Illinois. [Doc. No. 32 at 10.] However, although the accused circuits are

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manufactured in Vermont, they are designed in Greensboro. In addition, although Motorola uses

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the accused circuits in its smartphones, Motorola is not involved in the design or manufacture of

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the accused circuits. Therefore, the center of the alleged infringing activity appears to be

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Greensboro, North Carolina. Accordingly, this factor weighs in favor of transfer although its

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weight is diminished because some operative facts have occurred in this District.
The Respective Parties’ Contacts with the Forum

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C.

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Peregrine has substantial contacts with this district because it is headquartered in San

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Diego. [Doc. No. 32-1, Keller Decl. ¶ 2.] Peregrine has produced evidence showing that RFMD

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has a design, support, and sales center in Carlsbad, California and lists California as a “material

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jurisdiction,” and Motorola has an office in San Diego, California, where it maintains

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manufacturing, sales and administrative facilities. [Doc. No. 32-5, Declaration of Alan H.

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Blankenheimer (“Blankenheimer Decl.”) ¶¶ 2-16, Exs. A-G.] Defendants do not dispute these

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facts. Therefore, the Defendants in addition to Peregrine have significant contacts with this

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District. Accordingly, this factor weighs against transfer.
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D.

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Convenience of Third Parties and Availability of Compulsory Process for
Non-Party Witnesses

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A party may compel the testimony of its employees at trial. STX, Inc. v. Trik Stik, Inc.,

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708 F. Supp. 1551, 1556 (N.D. Cal. 1988). However, for non-employee witnesses, the Court’s

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subpoena power only extends to within the district and one hundred miles of the place of trial.

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Fed. R. Civ. P. 45(b)(2). Therefore, “the convenience of third party witnesses is more important

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than that of party witnesses.” Ferrero, 768 F. Supp. 2d at 1080; see, e.g., HollyAnne Corp. v. TFT,

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Inc., 199 F.3d 1304, 1307 n.2 (Fed. Cir. 1999) (stating that the location of employees “is not as

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important a factor as it would be if they were not under the [party’s] control”). “In support of a

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motion to transfer, a party must identify potential witnesses by name and describe their

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testimony.” Clark v. Sprint Spectrum L.P., 2010 U.S. Dist. LEXIS 136510, at *11 (N.D. Cal.

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2010).

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In their original motion, Defendants did not specifically identify any potential non-party

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witnesses by name or describe their testimony. In their reply, Defendants attached a declaration

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identifying three potential non-party witness who reside in Greensboro, North Carolina and could

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provide testimony about the design of the accused RFMD circuits and prior art to the patents-in-

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suit. [Doc. No. 33-3, Declaration of Eric Creviston (“Creviston Decl.”) ¶ 4.] First, it is not proper

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for a party to submit new evidence in a reply brief. See Docusign, Inc. v. Sertifi, Inc., 468 F.

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Supp. 2d 1305, 1307 (W.D. Wash. 2006) (“It is well established that new arguments and evidence

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presented for the first time in Reply are waived.”). Second, even if the Court were to consider this

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evidence, Peregrine has identified four non-party witnesses, four of the inventors of the ’993

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Patent, who reside in the Southern District of California and could provide testimony about the

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technology claimed by the ’993 Patent and the validity of that patent. [Doc. No. 32 at 14; Doc.

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No. 32-1, Keller Decl. ¶ 5.] See Voice Techs. Group, Inc. v. VMC Sys., Inc., 164 F.3d 605, 615

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(Fed. Cir. 1999) (“An inventor is a competent witness to explain the invention and what was

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intended to be conveyed by the specification and covered by the claims. The testimony of the

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inventor may also provide background information, including explanation of the problems that

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existed at the time the invention was made and the inventor’s solution to these problems.”).
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Accordingly, this factor is at best neutral.

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E.

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Neither of the parties addressed this factor. Accordingly, this factor is neutral and the

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Cost of Litigation in Either Forum

Court gives it little weight.

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F.

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Defendants argue that this factor weighs in favor of transfer because all of the relevant

Access to Sources of Proof

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documents and witnesses related to the design, development, testing, marketing, and sales of the

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accused circuits and potential prior art are located in Greensboro, North Carolina. [Doc. No. 13-1

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at 13-15.] Defendants also argue that any potential Motorola witnesses and documents would be

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closer to Greensboro than the Southern District of California. [Id. at 14-15.] In response,

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Peregrine argues evidence related to the patents-in-suit is located in this District. [Doc. No. 32 at

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14-15.]

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“‘In patent infringement cases, the bulk of the relevant evidence usually comes from the

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accused infringer. Consequently, the place where the defendant’s documents are kept weighs in

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favor of transfer to that location.” Genentech, 566 F.3d at 1345; accord. Barnes & Noble, Inc. v.

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LSI Corp., 823 F. Supp. 2d 980, 994 (N.D. Cal. 2011). Therefore, this factor weighs in favor of

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transfer. However, the Court gives this factor little weight. Given the advances in electronic

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discovery and because the parties are large technology companies, they should have little difficulty

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conducting discovery regardless of document location. See Multimedia Patent Trust v. Tandberg,

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Inc., 2009 U.S. Dist. LEXIS 105652, at *13 (S.D. Cal. Nov. 12, 2009); Brackett v. Hilton Hotels

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Corp., 619 F. Supp. 2d 810, 820 (N.D. Cal. 2008).2

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2

The Court acknowledges that the Federal Circuit in Genentech rejected the district court’s
determination that this factor should be considered neutral given advances in electronic storage and
transmission. 566 F.3d at 1346. However, the Court does not find that this factor is neutral. The
Court recognizes that this factor weighs in favor of transfer but that its weight should be reduced given
the advances in electronic discovery. In addition, the Federal Circuit’s opinion in Genentech is a case
interpreting Fifth Circuit transfer law and, therefore, is not binding on this Court. See, e.g., In re
Affymetrix, Inc., 2010 U.S. App. LEXIS 7968, at *9-10 & n.3 (Fed. Cir. Apr. 13, 2010); GPNE Corp.
v. Amazon.com, Inc., 2012 U.S. Dist. LEXIS 65026, at *18 n.1 (D. Haw. May 9, 2012).
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G.

Location of Relevant Agreements

2

The record before the Court does not indicate the existence of any agreement between the

3

parties relevant to this litigation. Accordingly, this factor is neutral and the Court gives it little

4

weight.

5

H.

Familiarity With Governing Law

6

Peregrine’s patent infringement claims are all based on and governed by federal law. [See

7

Compl.] “[W]here federal law governs all claims raised, either forum is equally capable of hearing

8

and deciding those questions.” Forest Guardians, 2007 U.S. Dist. LEXIS 65537, at *12 (quotation

9

marks omitted) (quoting Italian Colors Rest. v. Am. Express Co., 2003 U.S. Dist. LEXIS 20338, at

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*9 (N.D. Cal. Nov. 10, 2003)); see also PacTool, 2010 U.S. Dist. LEXIS 65105, at *9 (“A district

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court in Ohio is equally capable of applying the patent laws that govern this case.”). Accordingly,

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this factor is neutral.

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I.

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Defendants argue that the pendency of RFMD’s declaratory judgment action against

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Peregrine on the same asserted patents in the Middle District of North Carolina weighs in favor of

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transfer. [Doc. No. 13-1 at 18-19.] In response, Peregrine argues that because RFMD filed their

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declaratory action after Peregrine initiated this action, under the first-to-file rule, this factor weighs

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against transfer. [Doc. No. 32 at 18-20.]

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Feasability of Consolidation

The pendency of a related case in the transferee forum can be an important consideration in

20

determining whether the interests of justice warrant a transfer because “‘of the positive effects it

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might have in possible consolidation of discovery and convenience to witnesses and parties.’”

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Ferrero, 768 F. Supp. 2d at 1081 (quoting A.J. Indus., 503 F.2d at 389). However, Defendants fail

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to note that the declaratory action in North Carolina could be consolidated with this case. See

24

Applied Elastomerics, Inc. v. Z-Man Fishing Prods., 2006 U.S. Dist. LEXIS 75339, at *17-18

25

(N.D. Cal. Oct. 6, 2006).

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Furthermore, Defendants fail to recognize that the declaratory judgment action was filed

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three days after the complaint in this case was filed. [Compare Doc. No. 1, Compl. (filed Apr. 13,

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2012) with Doc. No. 13-14, Dunne Decl. Ex. 10 (filed Apr. 16, 2012).] “There is a generally
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recognized doctrine of federal comity which permits a district court to decline jurisdiction over an

2

action when a complaint involving the same parties and issues has already been filed in another

3

district.” Pacesetter Systems, Inc. v. Medtronic, Inc., 678 F.2d 93, 94-95 (9th Cir. 1982); accord.

4

Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1161 (9th Cir. 2011). “This doctrine, known as the

5

first-to-file rule, gives priority, for purposes of choosing among possible venues when parallel

6

litigation has been instituted in separate courts, to the party who first establishes jurisdiction.”

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Ferrero, 768 F. Supp. 2d at 1082 (quotation marks omitted) (quoting Callaway Golf Co. v.

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Corporate Trade, Inc., 2010 U.S. Dist. LEXIS 17906, at *6-7 (N.D. Cal. Mar. 1, 2010)); see also

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Genentech v. Eli Lilly & Co., 998 F.2d 931, 937 (Fed. Cir. 1993), overruled on other grounds by

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Wilton v. Seven Falls Co., 515 U.S. 277 (1995) (“We prefer to apply in patent cases the general

11

rule whereby the forum of the first-filed case is favored, unless considerations of judicial and

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litigant economy, and the just and effective disposition of disputes, require otherwise.”); Tegic

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Commc’ns Corp. v. Bd. of Regents of Univ. of Tex. Sys., 458 F.3d 1335, 1343 (Fed. Cir. 2006)

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(recognizing “the general rule that favors the forum of the first-filed action”).3

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In their reply, Defendants argue that their case should be given priority under the first-to-

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file rule because they filed a motion to transfer the action to the Middle District of North Carolina

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prior to Peregrine filing the present action in this District. [Doc. No. 33 at 10.] However,

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Defendants provide no authority for their contention that the first-to-file rule applies to an earlier

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filed motion to transfer. In discussing the first-to-file rule, the Ninth Circuit and the Federal

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Circuit have referred to the filing of complaints not the filing of motions to transfer. See, e.g.,

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Pacesetter Systems, 678 F.2d at 94-95; Genentech , 998 F.2d at 937; see also Barnes & Noble, Inc.

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v. LSI Corp., 823 F. Supp. 2d 980, 987 (N.D. Cal. 2011) (“A number of courts have held that the

23

filing of a complaint triggers the first-filed rule . . . .”). Therefore, this argument is unpersuasive.

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Under the first-to-file rule, the earlier filing date of this action likely gives the case priority over

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the declaratory judgment action filed in North Carolina. See, e.g., Ferrero, 768 F. Supp. 2d at

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3

In their reply, Defendants accuse Peregrine of repeatedly citing in its opposition brief Federal
Circuit cases on the first-to-file rule that represent an outdated standard. [Doc. No. 33 at 3.] However,
Defendants never explain in their reply brief why these cases represent an outdated standard or
provide the Court with what they consider to be the correct standard.
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1082. Accordingly, this factor weighs against transfer.

2

J.

3

Defendants argue that administrative difficulties flowing from court congestion weigh in

Court Congestion and Speed to Trial in the Two Forums

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favor of transfer to the Middle District of North Carolina. [Doc. No. 13-1 at 17-18.] Specifically,

5

Defendants cite to a report showing that in a one year period 10,337 filings were made in the

6

Southern District of California while only 1,550 filings were made in the Middle District of North

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Carolina during that same time period. [Id.] However, the Ninth Circuit has explained that “[t]he

8

real issue is not whether a dismissal will reduce a court’s congestion but whether a trial may be

9

speedier in another court because of its less crowded docket.” Gates Learjet Corp. v. Jensen, 743

10

F.2d 1325, 1337 (9th Cir. 1984). Defendants admit in their motion that they do not have any

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statistics showing the median time to trial in the Middle District of North Carolina. [Doc. No. 13-

12

1 at 18 n.3.] Therefore, Defendants cannot show that a trial may be speedier in the Middle District

13

of North Carolina than the Southern District of California.

14

In addition, even if court congestion by itself should weigh in favor of transfer, Defendants

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have not sufficiently shown that the Southern District is significantly more congested than the

16

Middle District. Defendants’ statistical evidence only shows the total amount of filings in each

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district over a one year period. It does not account for the different number of judges in each

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district4 or separate the civil filings from the criminal ones.5 Accordingly, this factor does not

19

weigh in favor of transfer.
The Local Interest in Having Localized Controversies Decided At Home

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K.

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Defendants argue that the local interest in having localized controversies decided at home

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weighs in favor of transfer because Peregrine’s allegations represent a controversy that is localized

23

in Greensboro, North Carolina. [Doc. No. 13-1 at 17.] In response, Peregrine argues that

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California has a strong interest in protecting companies within its borders that hold valid patents.

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4

26
27

There are currently twelve active district judges, six senior district judges, and eleven
magistrate judges in the Southern District of California as compared to four active district judges, one
senior district judge, and two magistrate judges in the Middle District of North Carolina.
5

28

The Southern District of California is one of the busiest districts in terms of criminal
defendants. United States v. Minero-Rojas, 2011 U.S. Dist. LEXIS 127193, at *2 (S.D. Cal. Nov. 3,
2011).
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[Doc. No. 32 at 16-17.]

2

Peregrine is headquartered in California, RFMD is headquartered in North Carolina, and

3

Motorola is headquartered in Illinois. The harm from Defendants’ alleged infringing activity is

4

felt in California. See SKF Condition Monitoring, Inc. v. SAT Corp., 2008 U.S. Dist. LEXIS

5

24310, at *10 (S.D. Cal. Feb. 26, 2008). In addition, although Greensboro may be the center of

6

the allegedly infringing activity, the accused products are sold in this district, the manufacturing of

7

the accused products occurs primarily in Vermont, the Motorola engineers involved in the

8

integration of the accused circuits into Motorola phones are located in Lowell, Massachusetts, and

9

the Motorola employees and documents relevant to the sales and marketing of the accused phones

10

are located in Libertyville, Illinois. [Doc. No. 13-2, Creviston Decl. ¶ 26; Doc. No. 13-3, Pluta

11

Decl. ¶¶ 9-10; Doc. No. 32-4, Kapuscinska Decl. ¶ 2.] Therefore, the present action does not

12

involve a controversy that is localized in North Carolina. Furthermore, although North Carolina

13

may have an interest in adjudicating claims brought against its residents, “California also has a

14

compelling interest in providing redress for its corporate citizen who claims that its patent is being

15

infringed in the state of California.” SKF Condition Monitoring, 2008 U.S. Dist. LEXIS 24310, at

16

*17. Accordingly, this factor does not weigh in favor of transfer.

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L.

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Defendants argue that it is unfair to burden citizens in an unrelated forum with jury duty.

The Unfairness of Burdening Citizens in an Unrelated Forum with Jury Duty

19

[Doc. No. 13-1 at 17.] However, the Southern District of California is not an unrelated forum.

20

The Plaintiff is headquartered in this district, the accused products are sold in this district, the

21

harm from infringement is felt in this district, both Defendants have contacts with this district, and

22

the inventors of the patents-in-suit are located in this district. Therefore, it is fair to burden

23

citizens of this district with jury duty in this action. Accordingly, this factor weighs against

24

transfer.

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M.

Conclusion

26

In sum, only two of the factors weigh in favor of transfer while four of the factors weigh

27

against transfer and six of the factors are neutral. The Court gives less weight to the two factors

28

favoring transfer for the reasons discussed above. See supra sections III.B, III.F. Therefore,
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Defendants have failed to make the strong showing of inconvenience necessary to warrant

2

upsetting Peregrine’s choice of its home forum. See Decker Coal, 805 F.2d at 843; Ferrero, 768 F.

3

Supp. 2d at 1078. Accordingly, exercising its discretion, the Court declines to transfer the action

4

to the Middle District of North Carolina.

5

CONCLUSIONS

6

For the reasons above, the Court DENIES Defendants’ motion to transfer.

7

IT IS SO ORDERED.

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DATED: June 8, 2012

______________________________
IRMA E. GONZALEZ
United States District Judge

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