Tessera Inc. v. Sony Electronics Inc. et al
Filing
133
OPINION. Signed by Judge Renee Marie Bumb on 3/30/2012. (lih)
[Docket No. 40]
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
TESSERA, INC.,
Civil No. 10-838 (RMB)(KW)
Plaintiff,
v.
OPINION
SONY ELECTRONICS INC., SONY
CORPORATION, SONY MOBILE
COMMUNICATIONS AB, SONY MOBILE
COMMUNICATIONS (USA), AND
RENESAS ELECTRONICS
CORPORTATION,
Defendants.
Appearances:
Philip A. Rovner
Jonathan A. Choa
Potter Anderson & Corroon, LLP
1313 N. Market St., Herclues Plaza, 6th Floor
P.O. Box 951
Wilmington, Delaware 19899
Morgan Chu
Benjamin W. Hattenbach
Melissa R. McCormick
Lisa N. Partain
Irell & Manella LLP
1800 Avenue of the Stars, Suite 900
Los Angeles, California 90067
Attorneys for Plaintiff
Karen Jacobs Louden
Melissa L. Troutner
Morris, Nichols, Arsht & Tunnell LLP
1201 N. Market Street, P.O. Box 1347
Wilimgton, Delaware 19899
Mark G. Davis
Ronald J. Pabis
Michael Franzinger
Patrick J. McCarthy
Weil Gotshal & Manges
1300 Eye Street N.W.
Washington, D.C. 20005
Attorneys for Defendant Renesas Electronics Corporation
BUMB, United States District Judge, Sitting by Designation:
Defendant Renesas Electronics Corporation (“Renesas”) has
moved pursuant to 28 U.S.C. § 1404(a) to transfer this case to
the Northern District of California.
For the reasons that
follow, that motion is DENIED without prejudice.
I.
Background
Plaintiff Tessera Inc. (“Plaintiff” or “Tessera”) claims
that Renesas and its co-defendants Sony Electronics Inc., Sony
Corporation, Sony Ericsson Mobile Communications AB, and Sony
Ericsson Mobile Communications (USA) Inc. (collectively, the
“Defendants”) are engaged in widespread infringement of two of
Plaintiff's patents.
Specifically, Plaintiff claims the
Defendants are infringing: (1) United States Patent No.
6,885,106 (the “106 Patent”); and (2) United States Patent No.
6,054,337 (the “337 Patent”).
In general, the patents involve
semiconductor packaging technology.
A.
Location of the Parties
Tessera is a Delaware corporation with its principal place
of business in San Jose, California.
2
Two of the other
defendants are also Delaware corporations.
Sony Electronics,
Inc., is a Delaware corporation with its principal place of
business in San Diego, California.
Sony Ericsson Mobile
Communications (USA) Inc. is a Delaware corporation with its
principal place of business in Atlanta, Georgia. The remaining
defendants, including Renesas, are foreign corporations.
Sony
Corporation and Renesas are Japanese corporations with their
principal places of business in Japan.
Sony Ericsson Mobile
Communications AB is a Swedish corporation with its principal
place of business in London, United Kingdom.1
B.
Location of Relevant Non-Party Witnesses
There are five named inventors of the '106 Patent.
are non-party witnesses and two are party witnesses.
Three
Tessera
has submitted declarations from two of the three non-party
witnesses stating that they would be willing to testify at trial
in Delaware.
The location of the third non-party witness
inventor is unknown to Tessera, but Renesas believes he is
located in the Northern District of California.
There is no
indication, however, that he would refuse to appear voluntarily
if asked to appear at trial in this District.
As for the ‘337 Patent, there is only one named inventor
and he is a non-party witness.
1
Tessera has submitted a
There is some dispute as to the proper identification of Sony Ericsson
Mobile Communications AB and Sony Ericsson Mobile Communications (USA)
Inc. It is immaterial to the resolution of this motion.
3
declaration that he also would be willing to travel to Delaware
to testify at trial.
There are seven prosecuting attorneys identified in the
initial disclosures by Renesas.
All of these witnesses reside
in the Northeast United States.
Although it is not clear from
the parties’ submissions if any of these attorneys are subject
to the Court’s subpoena power, there is no indication that they
would be unwilling to appear in either the District of Delaware
or the Northern District of California if called to appear at
trial.
Renesas has also identified several third party witnesses
who are present in the Northern District of California.
Tessera
has noted that it has more than forty licensees dispersed
throughout the world.
Like the prosecuting attorneys, there is
no indication by any of the parties that these witnesses would
be unwilling to appear in either the District of Delaware or the
Northern District of California if called to appear at trial.
C.
Location of Relevant Party Witnesses
According to Renesas, any of its potential witnesses likely
reside in Japan and, to the extent any are outside of Japan,
they would likely reside in the Northern District of California.
Any potential witnesses from Sony Corporation reside in Japan
and any potential witnesses from Sony Electronics are located in
California, where its headquarters are maintained.
4
Renesas even
speaks for Tessera and claims that the Northern District of
California is a more convenient forum for Tessera’s witnesses
than Delaware.
D.
Other Actions in the Northern District of California
and Tessera's Forum Selection Clauses
According to Renesas, Tessera has litigated at least seven
suits, including three suits involving similar technology to the
technology at issue in this litigation, in the Northern District
of California.
It also filed an action against Sony Corporation
in state court in California related to this action. Renesas
also asserts that Tessera routinely enters into agreements
calling for California as the choice of forum.
Tessera vigorously disputes Renesas’ characterizations of
the California lawsuits and counters that, in five of those
seven lawsuits, Tessera was the defendant and the Northern
District of California was the plaintiff's, not Tessera’s,
choice of forum.
Moreover, Tessera contends that it has filed
only one patent infringement suit in the Northern District of
California in the last ten years and that it has filed more
patent infringement suits outside of California than in it.
Tessera further argues that the patents in this suit have not
been the subject of a patent infringement claim in California
and that that the Northern District of California Court is not
familiar with any of the Defendants in this matter or their
5
products because those cases involved different parties and
different products.
II.
Standard
Against this background, Renesas asks this Court to transfer
this case to the Northern District of California pursuant to 28
U.S.C. § 1404(a).
Section 1404(a) 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.”2 28
U.S.C. § 1404(a).
The burden of establishing the need for
transfer rests with the movant and it is a high burden.
Jumara
v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995).
A
“plaintiff's choice of venue should not be lightly disturbed.”
Id. (quotation and citation omitted).
And, “unless the balance
of convenience of the parties is strongly in favor of defendant,
the plaintiff’s choice of forum should prevail.” In re Xoft,
Inc., 435 F. App’x 948, 949-50 (Fed.Cir. 2011)(quotation and
citation omitted).
Stated another way, if the factors are
evenly balanced or weigh only slightly in favor of the transfer,
a transfer will be denied.
Intellectual Ventures I LLC v.
Altera Corp., No. 10-1065, 2012 WL 297720, at *3 (D.Del. Jan.
24, 2012)(citations omitted).
2
There is no dispute here that this action could have been brought in
the Northern District of California.
6
In assessing whether a transfer is appropriate, courts
consider both private and public interest factors.
F.3d at 879.
Jumara, 55
The private interest factors include:
(1)
the plaintiff's forum preference;
(2)
the defendant's forum preference;
(3)
where the claim arose;
(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 they may be unavailable for trial in one
of the fora; and
(6)
the location of books and records (similarly
limited to the extent that they could not be
produced in the alternative forum). Id.
The public interest factors include:
(1)
the enforceability of the judgment;
(2)
practical considerations that could make the trial
easy, expeditious, or inexpensive;
(3)
the relative administrative difficulty in the two
fora resulting from court congestion;
(4)
the local interest in deciding local controversies
at home;
(5)
the public policies of the fora; and
(6)
the familiarity of the trial judge with the
applicable state law in diversity cases. Id.
There is, however, “no definitive formula or list of the
factors to consider” and, ultimately, courts must “consider all
relevant factors to determine whether on balance the litigation
7
would more conveniently proceed and the interests of justice be
better served by transfer to a different forum.”
and citation omitted).
Id. (quotation
As the Third Circuit has explained,
section 1404(a) was “intended to vest district courts with broad
discretion to determine on an individualized, case-by-case
basis, whether convenience and fairness considerations weigh in
favor of transfer.” Jumara, 545 F.3d at 883.
III. Analysis
The Court addresses the applicable private and public
interest factors below.
A.
Private Interest Factors
1.
Plaintiff’s Forum Preference
As set forth above, the Third Circuit has held that a
plaintiff’s choice of forum, the first private interest factor,
is a factor to be weighed heavily in a section 1404(a) analysis.
Generally, that choice is a “paramount concern in deciding a
motion to transfer venue,” Circuport v. Dlesk, No. 11-00369,
2011 WL 2214654, at *3 (D.N.J. June 6, 2011)(quotation omitted),
and deference applies so “long as plaintiff has selected the
forum for some legitimate reason.”
Intellectual Ventures, 2012
WL 297720, at *6.3
3
When a plaintiff chooses his home forum, the choice is entitled to even
“greater deference.” Circuport v. Dlesk, 2011 WL 2214654, at *3
(D.N.J. 2011)(quotation and citation omitted). Courts have come to
different conclusions as to whether incorporation in a state, without
more, qualifies that state as the plaintiff’s home state. See
8
The dispute here centers on the fact that Plaintiff does not
appear to have a meaningful connection with Delaware beyond its
incorporation there.
Nonetheless, Plaintiff’s incorporation in
Delaware represents a rational and legitimate reason to choose
to litigate in the state.
297720, at *3.
Intellectual Ventures, 2012 WL
Tessera has “chosen to avail [itself] of the
rights, benefits, and obligations that Delaware law affords.”
Id.
Accordingly, Plaintiff’s choice of forum is entitled to
paramount consideration and weighs against transfer.
Continental Casualty Co., 61 F. Supp. 2d at 131.4
2.
Defendants’ Forum Preferences
Intellectual Ventures, 2012 WL 297720, at *3 (finding that
incorporation alone was sufficient but recognizing the split in
authority and comparing In re TCW/Camil Holding L.L.C., No. 03-10717,
2004 WL 1043193, at *2 (D.Del. April 30, 2004) and Waste Distillation
Tech., Inc. v. Pan Am. Res., Inc., 775 F. Supp. 759, 764 (D.Del. 1991)
with Praxair, Inc. v. ATMI, Inc., No. 03-1158, 2004 WL 883395, at *1-2
(D.Del. April 20, 2004)). The parties dispute what level of deference
should be given to Plaintiff in this case. The Court need not resolve
this dispute. Regardless of whether Delaware is considered Tessera’s
home state or not, its forum choice is still considered a paramount
consideration and Renesas has not met its burden to disturb that
choice. See, e.g., Continental Casualty Co. v. Am. Home Assur. Co., 61
F. Supp. 2d 128, 131 (D.Del. 1999)(“Where, as the Defendants maintain
here, the Plaintiff's choice of forum is not its [home forum,] the
Plaintiff's choice is still given paramount consideration.”).
4
Renesas argued in a supplemental submission that the Federal Circuit’s
recent decision in In re Link_A_Media Devices Corp., 662 F.3d 1221
(Fed.Cir. 2011) supports the propriety of transfer here. It does not.
There, the Federal Circuit acknowledged the significance the Third
Circuit affords the plaintiff’s choice of forum, but found that the
District Court had placed undue weight on the plaintiff’s choice of
forum where the plaintiff filed suit in Delaware and the only
meaningful connection with Delaware was the defendant’s incorporation
in Delaware. Link_A_Media, 662 F.3d at 1323. Here, in contrast, as
discussed above, the deference afforded Plaintiff’s choice of forum is
appropriately grounded in Plaintiff’s own incorporation in Delaware.
Intellectual Ventures, 2012 WL 297720, at *3 (coming to the same
conclusion).
9
As for the Defendants’ forum preferences, only Renesas has
moved to transfer this matter in the Northern District of
California.
The remaining defendants have neither joined in the
motion nor opposed it.5
Renesas has indicated, as described in
more detail below, that the Northern District of California is a
more convenient forum for it.
This is a legitimate and rational
basis for Renesas’ forum preference, but under Third Circuit
law, it is not given the same weight as Plaintiff’s preference.
Intellectual Ventures, 2012 WL 297720, at *8; EVCO Tech. & Dev.
Co. v. Precision Shooting Equip., Inc., 379 F. Supp. 2d 728, 730
(E.D.Pa. 2005)(holding that the defendant’s choice of forum
merits “considerably less weight” than plaintiff’s choice).
3.
Where The Claim Arose
Plaintiff argues, and Renesas does not dispute, that,
because the infringement took place in many districts, including
Delaware, this factor is neutral and does not weigh either in
favor or against transfer.
4.
The Court agrees.
The Convenience Of The Parties As Indicated By
Their Relative Physical And Financial Condition
In addressing the convenience of the parties factor,
Renesas argues at length why the Northern District of California
would not only be a convenient forum for Tessera to litigate
5
Sony Electronics, Inc. and Sony Corporation agreed at a status
conference that the Northern District of California would be “a more
appropriate and convenient venue.” However, the Court has no similar
statement from the other two Sony defendants who were not parties to
the action at the time the statement was made.
10
this matter, but a more convenient forum for Tessera.
It cites
to, inter alia, Tessera’s operations there, the frequency with
which Tessera has litigated there, and Tessera’s use of forum
selection clauses selecting California as an appropriate forum
for litigation.
These facts, to varying degrees, would appear
to support the convenience of the Northern District of
California for Tessera, but they do not establish that it would
be more convenient for Tessera to litigate in the Northern
District of California.
That is because the best indicator of a
plaintiff’s own convenience is the plaintiff’s own choice of
forum.
See ICG Am., Inc. v. Wine of the Month Club, Inc., No.
3:09-cv-133, 2009 WL 2843261, at *9 (D.Conn. Aug. 28, 2009)(
recognizing, in the personal jurisdiction context, that the
“plaintiff's choice of forum is the best indicator of his own
convenience.”)(quotation and citation omitted).
Tessera has
chosen to litigate this matter in Delaware and that choice
signals its belief that litigation here is most convenient for
it, for whatever its reasons.6
press its choice of forum here.
6
Indeed, Tessera continues to
As such, this Court will not
That Tessera has only filed one patent infringement suit in the
Northern District of California in the past 10 years, was the defendant
in most of the litigation cited by Renesas, and has filed more patent
suits outside of California than in it, all support the notion that,
for whatever reason, Tessera finds litigation outside the Northern
District of California to be most convenient. While Renesas has cited
to a prior submission from Tessera in favor of transfer to the Northern
District of California, that submission establishes little here. It is
a 12-year old submission, submitted to support the notion that, in that
particular case, litigation in the Northern District was more
convenient than in the plaintiff’s choice of forum.
11
presume to dictate what is most convenient, in this case, for
Tessera.
Neither should Renesas.
Therefore, Tessera’s own
convenience does not weigh in favor of transfer.
With respect to Renesas, it has argued that its convenience
favors transfer.
Renesas notes that travel to California, from
its home base in Japan, is more convenient for its employees
than travel to Delaware.
This interest in convenience, though
legitimate, is not significant for three reasons.
First,
maintaining the proceeding here would only create greater
inconvenience to Renesas to the limited extent its employees are
required to travel to Delaware for trial (or to New Jersey,
where this Court ordinarily sits and where non-jury proceedings
would be held).
Depositions, in contrast, could be conducted in
California, Japan, or other locations of mutual convenience to
the parties. Van Slyke v. Capital One Bank, 503 F. Supp. 2d
1353, 1363 (N.D.Cal. 2007)(“Now we turn to convenience to
potential witnesses. Depositions are not a factor since they
usually occur where witnesses reside anyway. Trial convenience
is what matters.”).
Second, that burden may be entirely
speculative given the infrequency with which matters are
litigated to trial.
Intellectual Ventures, 2012 WL 297720, at
*10 (recognizing the infrequency with which matters go to
trial).
Third, whatever inconvenience a lawsuit in Delaware
would impose, Renesas’ financial resources further diminish its
12
significance. Renesas is a large international corporation with
billions in revenue and over 46,000 employees.
There is nothing
in the record that would support a finding that litigating in
Delaware would impose more than a minimal burden on them, let
alone a materially greater burden than doing so in California,
given California’s already significant distance from Japan,
where Renesas’ witnesses are likely to be.
Affymetrix, Inc. v.
Synteni, Inc., 28 F. Supp. 2d 192, 202 (D.Del. 1998)(finding
that defendants were capable of shouldering the financial burden
imposed by the plaintiff’s choice of forum since they were
“multi-million dollar corporations with interests and activities
spanning the globe.”); Crystal Semiconductor Corp. v. OPTi Inc.,
44 U.S.P.Q.2d 1497, 1504 (W.D.Tex. 1997)(noting that the
relevant inconvenience is the extra inconvenience imposed by the
plaintiff’s choice of forum).
Renesas also notes that, if this
action is maintained in Delaware, it would likely have to serve
discovery subpoenas in the Northern District of California for
non-party witnesses located there who will not appear
voluntarily.
Because discovery subpoenas must always be issued
from the court in which the deposition will be taken or
production will be made (See Federal Rule of Civil Procedure
45(a)(2)(B) and (C)), the Court finds that this is not an
additional burden.
The Court must also look to the convenience of the
13
remaining defendants.
As already noted, only two of the
remaining Defendants have taken any position on Renesas’ motion.
Their statement, only alluded to by Tessera, provides no detail
as to the basis for their position that suit in California would
be more convenient.
The Court is therefore reluctant to speak
on any of these Defendants’ behalf.
Nonetheless, the Court
notes that: (1) the extent that Sony Corporation, which, like
Renesas, is a large, international, Japanese corporation with
its principal place of business in Japan, is inconvenienced
would likely be diminished for similar reasons to Renesas; (2)
Sony Electronics Inc. likely has a stronger claim to convenience
in California because its principal place of business is located
there, but the strength of that claim is blunted by the fact
that it is incorporated in Delaware (Intellectual Ventures, 2012
WL 297720, at *9 (recognizing that the defendant’s place of
incorporation can be a significant, though not dispositive,
factor in the convenience of the parties analysis)); (3) Sony
Ericsson Mobile AB, a Swedish corporation with its principal
place of business in London, would likely find Delaware to be a
more convenient forum for litigation than California; (4) Sony
Ericsson Mobile Communications (USA) Inc., incorporated in
Delaware and with its principal place of business in Atlanta,
Georgia, would also likely find Delaware to be a more convenient
forum for litigation than California; and (5) none of the
14
remaining Defendants appear, in light of the fact that none have
moved in support of, or against, Renesas’ motion to transfer, to
believe that one forum is significantly more convenient than
another.
Hence, because two of the defendants would likely find
California more convenient and the other two defendants would
likely find Delaware more convenient, all to a limited extent,
the convenience of these parties appears to be a neutral factor.
In short, weighing the convenience of all of the parties,
this Court finds that this factor weighs slightly in favor of
transfer, given that: (1) the Northern District of California
would be a convenient forum for Tessera (but not the most
convenient based on its forum choice); (2) litigating in
California would represent additional, though not significantly
greater, convenience for Renesas; and (3) the remaining
defendants’ convenience is roughly balanced between California
and Delaware.
5.
Convenience for Witnesses
The Court considers this next factor but only to “the
extent that the witnesses may actually be unavailable for trial
in one of the fora”.
Jumara 55 F.3d at 879 (emphasis added).
Party witnesses are not considered part of this analysis because
party witnesses are presumed to be willing to testify at trial
no matter the inconvenience.
Intellectual Ventures, 2012 WL
297720, at *9; Mato v. Window World, Inc., No. 10-7617, 2011 WL
15
710473, at *5 (E.D.Pa. Feb. 28, 2011); Carnegie Mellon Univ. v.
Marvell Tech. Grp., Ltd., No. 09-290, 2009 WL 3055300, at *4
(W.D.Pa. Sept. 21, 2009); Sunds Defibraltor, Inc. v. Durametal
Corp., No. Civ. A. 96-483, 1997 WL 74660, at *3 (D.Del. Jan. 31,
1997).
Neither are non-party witnesses within 100 miles of the
courthouse or within the District of Delaware considered as part
of this analysis because the Court may compel their attendance
by trial subpoena.
Pub. Util. Serv. Corp. v. Leggett & Platt,
Inc., No. 08-1860, 2008 WL 4610241, at *4 (E.D.Pa. Oct. 16,
2008)(“Here, the court has the power to subpoena anyone located
within the court's judicial district or within 100 miles of the
courthouse. Thus, the relevant inquiry is whether there are
nonparty witnesses who could not be subpoenaed.”)(citations
omitted). This leaves only non-party witnesses outside of the
Court’s subpoena power.
Id.
In weighing this factor, courts
also assess the importance of the witness and whether the
witness possesses relevant, non-cumulative information.
Falu-
Rodriguez v. Democracia USA, Inc., No. 10-3811, 2011 WL 31400,
at *3 (E.D.Pa. Jan. 5, 2011)(calling on the defendant to
identify unavailable witnesses, the testimony those witnesses
would provide, and the importance of their testimony); Schering
Corp. v. Amgen, 969 F. Supp. 2d 258, 268 (D.Del. 1997).
It is the defendant’s burden to show both the
unavailability of a particular witness and that witness’
16
importance to the defendant’s case. Id.; Olympia Steel Bldg.
Sys. Corp. v. General Steel Domestic Sales, LLC, No. 06-1597,
2007 WL 1816281, at *7 (W.D.Pa. June 22, 2007); Carnegie Mellon,
2009 WL 3055300, at *4.
With respect to the former, while a
showing that a non-party witness is outside the Court’s subpoena
power is a necessary predicate for, and supports, a finding of
unavailability,7 courts have recognized that third-party fact
witnesses may voluntarily be willing to appear at trial and that
a particularized assessment of a witness’ availability is
appropriate.
7
See Intellectual Ventures, 2012 WL 297720, at *11
Some courts in this Circuit have suggested that the unavailability of
compulsory process on a non-party witness may establish unavailability
at trial sufficient to support this factor, even where there is good
reason to believe that the witness would voluntarily appear at trial.
See, e.g., Teleconference Sys. v. Proctor & Gamble Pharmas., Inc., 676
F. Supp. 2d 321, 333 (D.Del. 2009)(“The fact that representations are
given at this time that Jang and Kent, and perhaps other relevant
witnesses, may voluntarily appear in Delaware for trial, is not the
same as them being subject to compulsory subpoena power.”); Nilssen v.
Everbrite, No. Civ.A 00-189, 2001 WL 34368396, at *2 (D.Del. Feb. 16,
2001)(“A party need not allege that a witness definitely will be
unavailable for trial; rather, it is sufficient for purposes of venue
transfer analysis if the witness is not subject to a court's subpoena
power.”); Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 205
(D.Del. 1998)(concluding that signed declaration from non-party
witnesses of their willingness to attend trial were insufficient);
Sherwood Med. Co. v. IVAC Med. Sys., Inc., No. 96-305, 1996 WL 700261,
at *5 (D.Del. Nov. 25, 1996)(finding assurances of attendance by
counsel insufficient); Crikton, Inc. v. Becton Dickinson Vascular
Access, Inc., 821 F. Supp. 962, 967 (D.Del.1993).
This Court disagrees for two reasons. First holding otherwise would
result in an unnecessarily wooden application of this factor
inconsonant with the broad and flexible interest of justice and
convenience standard this Court is charged with applying. Second, since
the only relevant witnesses for this analysis are non-party witnesses
outside the Court’s subpoena power, it would short-circuit the witness
availability inquiry into solely whether a defendant has identified a
witness with relevant information who is not subject to a Court’s
subpoena power.
17
(noting that third-party fact witnesses may voluntarily appear
at trial and that there was no evidence in that case that they
would not); Carnegie, 2009 WL 3055300, at *4 (finding that the
defendants had failed to show that a witness not subject to
compulsory attendance would be unavailable where the witness had
signed a declaration that he would be willing to attend trial);
Mentor Graphics Corp. v. Quickturn Design Sys., Inc., 77 F.
Supp. 2d 505, 510, 511-12 (D.Del. 1999)(finding that lack of
subpoena power supported finding of unavailability but that nonparty witnesses outside of the Court’s subpoena power might have
incentive to appear); ADE Corp. v. KLA-Tencor Corp., 138 F.
Supp. 2d 565, 570-71 (D.Del. 2001)(“Third, the court has some
question whether it is correct that we should discount a
witness's willingness to voluntarily appear and testify at trial
in Delaware. Previous decisions in this court have suggested
that the better approach is to recognize that witnesses have and
will appear here without having to be subpoenaed.
Rather than
starting with a presumption that witnesses may not appear and
concluding the case should be transferred based on that
assumption, it may make more sense to look at the facts and
circumstances of each witness to see whether a subpoena is
necessary.
Certainly, where a witness reports that he or she is
willing to appear and testify, it does not make much sense to
assume he or she will not appear here and that the case should
18
therefore be transferred.”)(citations omitted); Brenner v.
Consolidated Rail Corp., No. 09-cv-1574, 2009 WL 2710241, at *3
(E.D.Pa. Aug. 26, 2009)(finding that unavailability of subpoena
power did not, by itself, establish unavailability of non-party
witness given potential voluntary willingness of the witness to
testify).
Here, Renesas identifies several different sets of nonparty witnesses that it claims qualify as unavailable because
they are outside the subpoena power of this Court.
First, it
points to the non-party inventors of the patents at issue, who
are all outside the subpoena power of the Court, but believed to
be within the subpoena power of the Northern District of
California.
As noted, however, Tessera has secured declarations
from three of the four non-party inventors that they would
appear at trial.
It would thus be inappropriate, under these
circumstances, to conclude that they would be unavailable to
appear at trial.
ADE Corp., 138 F. Supp. 2d at 570-71 (coming
to the same conclusion with respect to inventors who had signed
a similar declaration).
It would also be premature to conclude
that the fourth witness, an inventor of one of the patents at
issue, would be unwilling to testify.
Id. at 571 (“[T]he court
expects that the inventors on defendant’s patent would have some
incentive to cooperate with their assignee.”).
Second, Renesas identifies its California subsidiary REA as
19
a possible non-party witness.
REA is also outside this Court’s
subpoena power but within the Northern District of California’s.
However, REA is not a named party to this litigation and Renesas
has failed to offer any facts suggesting that it possesses
important information in connection with this litigation.
Nor
has Renesas offered a reason why REA would not voluntarily
appear at trial.
This Court expects that REA would, as Renesas’
subsidiary, voluntarily appear at Renesas’ request.
Third, Renesas argues that there are several third party
licensees that may have relevant information and that are
outside this Court’s subpoena power but inside the Northern
District of California’s subpoena power.
Renesas claims that
these witnesses might have relevant information on damages,
claim construction, non-infringement, and invalidity.
This
Court finds that Renesas’ concerns are overstated for three
reasons.
First, with the exception of Renesas’ claim regarding
damages, Renesas provides no information to suggest that these
entities have any information that would be of use on these
topics.
Its case for obtaining information from third party
licensees on these topics appears to be entirely speculative.
ADE Corp., 138 F. Supp. 2d at 569 (“In this case, KLA has not
demonstrated that we can expect the employees from Applied
Materials and Electroglas will be critical witnesses at trial.
In fact, it would be an unusual patent infringement case where
20
issues of liability, validity and damages turned on the
testimony of a competitor.”).
Second, with respect to
information regarding damages, Renesas’ claimed interest is
weak.
Renesas claims that these third party licensees would
help it in assessing reasonable royalties if it is found liable.
The parties already have highly probative information concerning
reasonable royalties as Renesas itself previously licensed the
patents at issue from Tessera.
Third, the inability to secure
the cooperation of third party licensees within the subpoena
power of the Northern District of California is not particularly
harmful here.
While the parties dispute the number of relevant
third party licensees, it is undisputed that there are many.
Even assuming this Court lacks subpoena power over a sufficient
number of third party licensees, Renesas has offered no evidence
to suggest that there would be difficulty in securing the
voluntary cooperation of sufficient third party licensees.
On the other hand, Tessera points out that the seven
prosecuting attorneys identified in initial disclosures by
Renesas are all located in the Northeast, with five of them in
New Jersey, one in the “New York City area,” and one in
Massachussets.
While Renesas takes issue with Tessera’s
apparent failure to include them in its own initial disclosures,
it is not clear why this failure is material if Renesas believes
these witnesses to be relevant to its own case.
21
Some of these
witnesses may be within the subpoena power of this Court though,
on the information presently before the Court, it cannot say.
All are clearly outside the subpoena power of the Northern
District of California.
However, the Court cannot conclude
that, to the extent they are outside this Court’s subpoena
power, they would voluntarily be willing to travel to Delaware
but not to California.
The prosecuting attorneys would likely
have strong incentive to appear at trial to inure good will with
their former clients.
This Court is therefore skeptical that there are many, if
any, relevant non-party witnesses outside this Court’s subpoena
power, or the California Court’s subpoena power, who would not
voluntarily appear at trial.
To the extent there are, they
would be few and neither party has shown that they would be
significantly prejudiced by their failure to appear.
Therefore,
this Court finds that this factor is neutral.
6.
Location of Relevant Books and Records
The location of books and records is only material “to the
extent that the files could not be produced in the alternative
forum”.
Jumara, 55 F.3d at 879.
While “it is improper to
ignore” this factor “entirely” (Link_A_Media, 662 F.3d at 1224),
it is often irrelevant today because of “recent technological
advances” that enable the documents at issue in the litigation
to be readily produced in even a distant forum.
22
See
Intellectual Ventures, 2012 WL 297720, at *11.
Here, Renesas
has pointed to no documents that, if outside this Court’s
subpoena power but within the Northern District of California’s,
it could not obtain through a subpoena issued in that District.
Neither has Renesas pointed to documents that it could produce
in the Northern District of California but would be too
burdensome to produce in this District.
Therefore, this factor
is neutral.
B.
Public Factors
Renesas cites to two public interest factors that it claims
support its motion to transfer: (1) practical considerations
that could make the trial easy, expeditious, or inexpensive; and
(2) the local interest in deciding local controversies at home.
The parties do not dispute, and this Court agrees, that none of
the remaining public interest factors are relevant here.
1.
Practical Considerations
With respect to the first factor identified by Renesas,
Renesas argues that United States District Judge Claudia Wilken
of the Northern District of California has experience dealing
with closely related technology to that at issue in this
litigation and has construed many of the same terms that are at
issue in this litigation.
Renesas also argues that one of the
patents construed there is the subject of two of its affirmative
defenses.
23
Tessera disputes Renesas’s characterization of the
litigation and counters that: (1) none of the patents at issue
in those litigations are at issue here and the two sets of
patents are not related or in the same patent family; (2) the
patents at issue here and the patents there do not share common
inventors; and (3) the affirmative defenses asserted by Renesas
are baseless and therefore irrelevant to this analysis.
Surely, where “several highly technical factual issues are
presented . . . the interest of judicial economy may favor
transfer to a court that has become familiar with the issues.”
Telcordia Techs., Inc. v. Tellabs, Inc., 2009 WL 5064787, at *3
(D.N.J. Dec. 16, 2009)(transferring case where transferee court
had 11 years of experience with the specific patents at
issue)(citation and quotation omitted).
While Renesas has only
identified a single judge with relevant experience, Judge
Wilken, that fact does not appear to be material given the
court’s ability to assign judges related cases.
See Northern
District of California Local Rule 3-12(f)(3)(providing for
reassignment of a related case to judge with prior related
cases).
Tessera does not dispute that Judge Wilken’s cases
dealt with similar technologies.
Her prior experience is
therefore of at least some relevance here.
However, there is
significant dispute as to the extent to which Judge Wilken’s
prior experience would promote judicial economy.
24
At the heart
of this dispute is the closeness of the relationship between the
patents here and the patents involved in the California suits.
On one side, Tessera argues that the “337 and ‘106 patents are
not ‘related to’ or even in the same ‘patent family’ as any of
the patents” in the California litigations.
On the other side,
Renesas claims that the patents are, in fact, “related.”
In
short, the parties have starkly contrasting views as to this
case and the cases in California.
At bottom though, it is
Renesas’ burden to establish that this factor supports transfer.
It has not provided this Court with sufficient information to
resolve these disputes to conclude that Judge Wilken’s prior
experience would more than modestly promote judicial economy.
The Court hastens to note, however, that if it becomes clear
during this litigation that there are significant efficiencies
to be gained from transfer to the Northern District of
California, the Court can revisit the issue at that time.8
At
this juncture, however, given the lack of sufficient evidence
before this Court, this Court finds that this factor favors
transfer only modestly.
NETGEAR, Inc. v. Ruckus Wireless, Inc.,
No. 10-999, 2011 WL 3236043, at *3 (D.Del. July 28,
2011)(finding the “fact that the pending California actions
involve the same basic . . . technology as that at issue in this
8
If it is indeed the case that Judge Wilken has already construed the
same claims on related patents, then transfer would appear to be
appropriate, as this factor would weigh heavily in favor of transfer.
25
lawsuit . . .is not compelling.”)(citing to Praxair, Inc. V.
ATMI, Inc., Civ. No. 03–1158, 2004 WL 883395, at *2 (D.Del.
April 20, 2004)(finding judicial efficiency lacking where
patents related to same technology field but “involve[d]
different patents, claims, inventors, prosecution histories and
a different set of alleged infringing activities.”) and Auto,
Techs. Int'l, Inc. v. Am. Honda Motor Co., Inc., Civ. No. 06–
187, 2006 WL 3783477, at *3 (D.Del. Dec. 21, 2006)(“nothing in
the Detroit lawsuits yields any potential savings in judicial
economy, given the attenuated connection between those patents
and the patents here in suit.”)).
2.
Local Interest
Delaware has a significant interest in this dispute since
the Plaintiff and two of the five Defendants – Sony Electronics
Inc. and Sony Ericsson Mobile Communications (USA) Inc. – are
Delaware citizens.
Intellectual Ventures, 2012 WL 297720, at
*13. The Northern District of California also has a significant
interest in the dispute given Tessera’s own presence there.
None of the other parties are alleged to have a significant
presence in the Northern District of California or this
District, as Sony Electronics Incorporated is located in the
Southern District of California and Renesas’ ties to the
Northern District are through its subsidiary.
balance, this factor is neutral.
26
Therefore, on
Id.
IV.
Conclusion
As set forth above: (1) most Jumara factors are neutral;
(2) Plaintiff’s choice of forum weighs against transfer; and (3)
the few factors favoring transfer are all modest.
Weighing all
of these factors together, this Court concludes that Renesas has
failed to meet its burden of demonstrating that the balance of
convenience is strongly in favor of transfer.
Accordingly, the
Court will exercise its discretion and deny Renesas’ motion to
transfer, without prejudice.
An accompanying Order shall issue
this date.
s/Renée Marie Bumb
RENÉE MARIE BUMB
United States District Judge
Dated: March 30, 2012
27
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