Joao Control & Monitoring Systems LLC v. Ford Motor Company
MEMORANDUM OPINION and ORDER GRANTING 10 MOTION to Transfer Case to Eastern District of Michigan filed by Ford Motor Company. Signed by Chief Judge Gregory M. Sleet on 8/21/13. (mmm)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
JOAO CONTROL & MONITORING SYSTEMS, )
FORD MOTOR COMPANY,
C.A. No. 12-cv-1479 (GMS)
On November 15, 2012, the plaintiff, Joao Control & Monitoring Systems, LLC ("Joao
Control"), filed suit against the defendant, Ford Motor Company ("Ford"), alleging infringement
of U.S. Patent Nos. 6,542,076 ("the '076 Patent"), 6,542,077 ("the '077 Patent"), and 7,397,363
("the '363 Patent") (collectively, "the patents-in-suit"). (D.I. 1.) On December 21, 2012, Ford
filed a Motion to Transfer (D.I. 10), pursuant to 28 U.S. C.§ 1404(a), seeking to transfer the abovecaptioned action to the Eastern District of Michigan. For the reasons that follow, the court will
grant Ford's motion.
As described in the Complaint and the parties' briefing in connection with the instant
motion, Joao Control is a limited liability company organized and
under the laws of the
State of Delaware and maintains its principal place of business in Yonkers, New York. (D .I. 1 at
2.) Joao Control's principal place of business address is listed as the residence of the named
inventor ofthe patents-in-suit, Raymond Anthony Joao. (D.I. 11 at 3.) Ford is a corporation also
organized and existing under the laws of the State of Delaware, but maintains its principal place
of business in Dearborn, Michigan. (!d. at ~ 3.)
This patent infringement action involves hardware and software technology. (ld.
Specifically, the plaintiff alleges that Ford owns, operates, advertises, controls, sells, and otherwise
provides hardware and software comprising "control apparatuses for vehicle systems," including
the "Ford SYNC system, particularly as this system is used to
and utilize personalized
online statement of vehicle status (via the 'Vehicle Health Report'), to access directions from a
horne computer (via the "Send to SYNC" and "SYNC Destinations" Systems and Services), to
access Bluetooth and Sirius audio streaming, and to obtain energy response (via the 'Ford SYNC
911 Assist' System and Services) ... and associated hardware and software. (ld.) Joao Control
alleges that Ford has infringed the patents-in-suit by making, using, providing, offering to sell, and
selling (directly or through intermediaries), and includes claims for willful infringement and
induced infringement. (ld.
STANDARD OF REVIEW
28 U.S.C. § 1404(a) provides that, "[f]or 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 or to any district or division to which all parties have consented."
28 U.S.C. § 1404. The provision affords district courts with "broad discretion to determine, on an
individualized, case-by-case basis, whether convenience and fair:1ess considerations weigh in
favor of transfer." Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995). In this
examination, the court undertakes a two-step inquiry to determine whether a motion to transfer
should be granted. First, the court must establish whether the action is one that could have
originally been brought in the proposed transferee forum. See Shutte v. Armco Steel Corp., 431
F .2d 22, 24 (3rd Cir. 1970). Second, the court must then weigh whe1her transfer would best serve
the interests of convenience and justice. See Jumara, 55 F.3d at 879. The burden rests on the
defendant to show that transfer is appropriate at each step, id. (citing Shutte, 431 F.2d at 22), and,
"unless the balance of convenience of the parties is strongly in favor of [the] defendant, the
plaintiffs choice of forum should prevail" Shutte, 431 F.3d at 25 (citing Owatonna Manufacturing
Co. v. Melore Co., 301 F. Supp. 1296, 1307 (D. Minn. 1969)).
A. The Propriety of the Transferee Forum
Under 28 U.S.C. § 1404(a), the proposed transferee forum must be one in which the action
might have originally been brought. 28 U.S.C. § 1404(a). Accordingly, the court may only grant
Ford's motion to transfer to the Eastern District of Michigan if venue would have been proper
there and if that district court could have exercised personal and subject matter jurisdiction in the
action. See 17 James Wm. Moore et al., Moore's Federal Practice § 111.12[b] (3d ed. 2012).
As noted, Ford maintains its principal place of business in Dearborn, Michigan, which is
located in the proposed transferee forum. In addition, Joao Control is currently litigating a suit
against Ford in the Eastern District of Michigan, 1 that was originally filed in January of2012, and,
according to Ford, involves the same family of patents as those asserted here. (!d. at 1.) Therefore,
it is clear that each party has sufficient minimum contacts with the proposed transferee forum to
provide that district court with personal jurisdiction and the parties do not dispute this fact. See
D.I. 15 at 9; 28 U.S. C. § 1400(b) ("Any civil action for patent infringement may be brought in the
As the parties explain, Joao Control's action against Ford in the Eastern District of Michigan was originally
filed in California and was transferred to the Eastern District of Michigan on September 6, 2012. (D.I. II at 4.) Ford
recites that, after hearing argument on the matter, Judge David 0. Carter transferred the action from the Central District
of California because the center of activity related to the patent infringement was Michigan, where the products were
designed. (Id. (citing Ex. J at 8:9-11 :5).)
judicial district where the defendant resides, or where the defendant has committed acts of
infringement and has a regular and established place of business."); see also §§ 1391(b)(l),
1391(d); FED. R. Crv. P. 4(k). In addition, as a patent dispute, the Eastern District of Michigan
would have subject matter jurisdiction over the action pursuant to 28 U.S.C. § 1338(a), which
provides district courts with original jurisdiction in such matters. See 28 U.S.C. § 1338(a). Thus,
in view of the foregoing, the court finds that this action could have been brought originally in the
proposed transferee forum and will proceed to the second step of the transfer analysis.
B. The Jumara Analysis
Next, the court must consider whether transferring this action to the Eastern District of
Michigan would serve the interests of convenience and justice. See Mite!, 2013 WL 1856457, at
*5. The Third Circuit requires courts considering a transfer motion to perform a case-by-case
analysis, rather than to apply a "definitive formula." See Jumara, 55 F.3d at 879. This assessment
should take into account the various public and private interests protected and defined in§ 1404(a).
The private interests may include:
plaintiffs forum preference as maintained in the original choice; the defendant's
preference; whether the claim arose elsewhere; the convenience of the parties as
indicated by their relative physical and financial condition; the convenience of the
witnesses-but only to the extent that the witnesses may actually be unavailable for
trial in one of the fora; and the location of books and records (similarly limited to
the extent that the files could not be produced in the alternatlve forum).
Jd. The public interests may include:
the enforceability of the judgment: practical considerations that could make the trial
easy, expeditious, or inexpensive; the relative administrative difficulty in the two
fora resulting from court congestion; the local interest in deciding local
controversies at home; the public policies of the fora; and the familiarity of the trial
judge with the applicable state law in diversity cases.
!d. at 879-80. Importantly, the Jumara analysis is not limited to these explicitly enumerated
factors, and no one factor is dispositive. See id. at 879. The court addresses each of these "Jumara
factors" in tum.
1. Private Interest Factors
a. The Plaintiff's Forum Preference
The first private interest factor is the "plaintiffs forum preference as manifested in the
original choice." !d. at 879. Ford asserts that Joao Control's choice of forum should be entitled
to little weight, because it has chosen to litigate in Delaware, which is not its home turf and is a
state with little, if any, connection to the action. (D.I. 11 at 1-2.) In response, Joao Control
maintains that its choice of forum is entitled to "heightened deference" because it selected the state
in which it was formed, making this district its "home turf." Therefore, Joao Control argues, its
choice of forum should not be lightly disturbed. (D.I. 15 at 2-3.)
Joao correctly notes that, under the § 1404(a) analysis, the plaintiffs choice of forum is
typically afforded heightened deference, particularly where the plaintiff has chosen to litigate on
its home turf. See AlP Acquisition LLC v. iBasis, Inc., No. 12-616 GMS, 2012 WL 5199118, at
*3 (D. Del. Oct. 19, 2012); see also Shutte, 431 F.2d at 25 ("It is black letter law that a plaintiffs
choice of a proper forum is a paramount consideration in any determination of a transfer request,
and that choice 'should not be lightly disturbed."' (citation omitted)). Here, both Joao Control and
Ford chose to avail themselves ofthe "advantages of Delaware corporate law" and to the "risk of
suit in Delaware" by forming or being incorporated there, leaving Ford with an "uphill battle" to
demonstrate inconvenience. See Praxair, Inc. v. ATMI, Inc., No. 03-1158-SLR, 2004 WL 883395,
at *2 (D. Del. Apr. 20, 2004); see also Mitel, 2013 WL 1856457, at* 5. However, as the court
recently explained in Smart Audio Technologies, LLC v. Apple, Inc., the deference afforded to a
plaintiffs choice of forum is shown primarily by placing the initial burden on the movant to
demonstrate that the balance of convenience "strongly" favors transfer.
See Smart Audio
Technologies, LLCv. Apple, Inc., C.A. No. 12-134-GMS, 2012 WL 5865742, at *4 (D. Del. Nov.
16, 2012). Specifically, as an individual Jumara factor, a plaintiff's forum preference receives
enhanced weight only where it has chosen to file suit on its home turf or can identify a rational and
legitimate reason for litigating in Delaware. See id.
Here, Joao Control was formed in Delaware and its forum C11oice is, therefore, entitled to
some measure of deference. Importantly, however, while courts "ha[ve] observed that a corporate
entity's state of incorporation is part of its 'home turf,'" it is not dispositive in the analysis. See In
re Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed. Cir. 2011). Rather, "[t]he court ...
recognizes that, when a plaintiff chooses to bring an action in a district where it is not physically
located, its forum preference is entitled to something less than ... paramount consideration." Linex
Techs., Inc. v. Hewlett-Packard Co., No. 11-400-GMS, 2012 WL l05323, at *3 (D. Del. Jan. 7
2013); see also In re Link_A_Media, 662 F.3d at 1223 (using the term "home forum" to refer to
the jurisdiction in which a party is physically located and noting that "[w]hen a plaintiff brings its
charges in a venue that is not its home forum ... that choice of forum is entitled to less deference").
Therefore, because Joao Control chose to litigate in the forum where it was formed, rather than the
forum where its principal place of business is located, its choice is entitled to less deference than
it would typically receive in this analysis. See AlP, 2012 WL 5199118, at *3. Consequently, the
court weighs this factor against transfer and is accorded heightened . but not maximum, deference
as an individual Jumara factor. 2
The court finds that Joao Control has identified "rational, legitimate reasons" for litigating in Delaware,
including that both are formed and incorporated under Delaware law, Delaware is proximate to the headquarters of
both parties, and infringing activity has taken place in this District. Thus, the court concludes that Joao Control's
choice of forum is entitled to heightened deference in the transfer analysis. (D.I. 15 at 8.)
b. The Defendant's Forum Preference
The second private interest factor is the defendant's choice of forum. Jumara, 55 F.3d at
879. Ford maintains that it would prefer to litigate this action in the Eastern District of Michigan
because: (1) the parties are currently litigating a case involving the same family of patents in that
district and, therefore, judicial efficiency and economy would be achieved by transfer; (2) the
majority of party and non-party witnesses are located in the proposed transferee forum; (3) the
majority of relevant evidence is located in Michigan; and (4) the primary acts giving rise to this
suit occurred in the Eastern District of Michigan. While the court will address Ford's reasons for
seeking transfer in its examination of the other private interest Jumara factors below, Ford has
clearly expressed a preference for litigating in the Eastern District of Michigan. The court finds
Ford's reasons for seeking transfer to be legitimate and rational. See Intellectual Ventures I LLC
v. Altera Corp., 842 F. Supp. 2d 744,755 (D. Del. Jan. 23, 2012). Tr,us, this factor weighs in favor
Whether the Claim Arose Elsewhere
The third private interest factor the court must consider is "whether the claim arose
elsewhere." Jumara, 55 F.3d at 879. "[A]s a matter of law, a claim for patent infringement arises
whenever someone has committed acts of infringement, to wit, 'makes, uses, offers to sell, or sells
any patented invention' without authority." Cellectis SA. v. Precision Biosciences, Inc., 858 F.
Supp. 2d 376,381 (D. Del. 2012) (quoting 35 U.S.C. § 27l(a)); see also Smart Audio Techs., 2012
WL 5865742, at *7. Accordingly, where the defendant in a patent infringement action operates
on a national level, this factor is often neutral.
The court has recognized, however, that "[t]o some extent, [infringement] claims ar[i]se
where the allegedly infringing products [a]re designed and manufactured." Smart Audio Techs.,
2012 WL 5865742, at *7 (quoting Wacoh Co. v. Kionix, Inc., 845 F. Supp. 2d 597, 602 (D. Del.
2012)); see also Intellectual Ventures, 842 F. Supp. 2d at 755 ("[I]f there are significant
connections between a particular venue and the events that gave rist:~ to a suit, this factor should be
weighed in that venue's favor." (quoting In re Hoffmann-La Roche Inc., 587 F.3d 1333, 1338
(Fed. Cir. 2009)).
Here, Ford contends that, because it has its principal place of business in the Eastern
District of Michigan, the employees who developed the accused system and all documents,
systems, and evidence related to the system are in Dearborn. (D.I. 11 at 8-9.) While it is true that
Ford is a national corporation and active in every state such that, typically, there is no implication
of local interests as demarcated by the loci of corporate activity, this factor weights slightly in
favor of transfer.
Specifically, because the patent infringement claims arise from infringing
products that were designed and manufactured in a single, discrete location, this is weighed on the
transfer side ofthe balance. See Mite!, 2013 WL 1856457, at *4.
The Convenience ofthe Parties
The court must also determine whether the proposed transferee forum would prove more
convenient for the parties. See Jumara, 55 F.3d at 879. In this examination, the court weighs
several considerations, including: "(1) the parties' physical location; (2) the associated logistical
and operational costs to the parties' employees in traveling to Delaware (as opposed to the
proposed transferee district) for litigation purposes; and (3) the relative ability of each party to bear
these costs in light of its size and financial wherewithal." Mite!, 2013 WL 1856457, at *4 (quoting
Smart Audio Tech., 2012 WL 5865742, at *7 (internal quotation omitted)). To this end, the court
is tasked with assessing the "convenience of the parties as indicated by their relative physical and
financial condition." See Jumara, 55 F.3d at 879.
Ford suggests that litigating this action in the Eastern District of Michigan is more
convenient for both parties because: (1) the parties are already litigating a matter involving related
patents in that district; (2) Joao Control does not have a connection to either Delaware or Michigan
and instead operates out of Yonkers, New York for the sole purpo!;e of prosecuting patents; (3)
Ford operates out of the Eastern District of Michigan and, therefore, all relevant witnesses-both
party and non-party-and all evidence, books, and records are located in Dearborn; and (4) no
evidence or witnesses are located in Delaware. (D.I. 11.) Conversely, Joao Control asserts that
this factor does not weigh in favor of transfer because "[g]iven the :size of Ford, and its finances,
it is convenient for it to travel to Delaware for litigation purposes" and it would be inconvenient
for Joao Control to travel to Michigan, such that transfer of the aetion would place the burden
solely on it. (D.I. 15 at 10-11.)
While Joao Control correctly notes that the "relative ability of each party to bear [litigation]
costs in light of its size and financial wherewithal" is a key consideration in the court's
"convenience of the parties" analysis, it is not dispositive and is, instead, assessed in conjunction
with the parties' physical location and associated logistical and operational costs. Mite!, 2013 WL
1856457, at *4 (quoting Smart Audio Tech., 2012 WL 5865742, at *7 (internal quotation omitted)).
While the court has not been presented with enough information to fully assess the relative
financial resources of the parties, it appears that each has sufficient financial resources to litigate
in either forum.
This conclusion is further supported by the information that is detailed in the parties'
briefing. Specifically, Ford is a Michigan-based corporation that operates throughout the country.
Joao Control, on the other hand, appears to consist solely of the one named inventor of the patentsin-suit and does not produce or sell goods or services. Joao Control, as noted, operates its principal
place of business in Yonkers, New York, and originally filed suit against Ford in California, in
what is now the Eastern District of Michigan action. The court finds it reasonable to assume that
if Joao Control had the financial resources to travel from New York to California, it has the
resources to litigate in Michigan, approximately two thousand miles closer.
Importantly, however, Ford is incorporated in Delaware and, therefore, has submitted to
suit in this District. Indeed, "a Delaware corporation must expect an uphill climb in proving that
it is, in any meaningful sense, 'inconvenient' to defend its actions in the forum in which the
corporation has freely chosen to create itself." Intellectual Ventures I, 842 F. Supp. 2d at 756; see
also Linex Techs., Inc., 2013 U.S. Dist. LEXIS 1924, at *15; AlP Acquisition, 2012 WL 5199118,
at *4 ("[T]he court finds it significant that [the defendant] is a Delaware corporation and has
necessarily consented to suit in this jurisdiction."). The decision to incorporate in Delaware
suggests that the inconvenience of litigating here is somewhat less than the court would ordinarily
presume it to be in this case. Thus, having considered each element of this Jumara factor, the court
concludes that it weighs slightly in favor of transfer.
e. The Convenience of the Witness
The next Jumara factor is "the convenience of the witnesses-but only to the extent that
the witnesses may actually be unavailable for trial in one of the fora.·' 55 F.3d at 879. Ford argues
that the convenience of the witnesses will be best achieved by transferring this action to the Eastern
District of Michigan. Specifically, Ford details that: (1) the eight :Ford employees with primary
responsibility for developing the Ford SYNC system, which includes the features identified in the
complaint, are located in Michigan (D.I. 11 at 8); (2) an employee at Inrix, Inc., the third-party
that developed one of the features of the SYNC system in cooperation with Ford, will be a
necessary witness and is located and works in the proposed transferee forum (id.); (3) "[t]here are
numerous key individuals located in Michigan related to the design and development of the Ford
SYNC system and the features identified in the complaint" (id.}; and (4) the attendance of
witnesses could be compelled in Michigan, due to proximity and subpoena power, but not in
Delaware (id. at 12). Conversely, Joao Controls notes that the convenience of witnesses factor
should only be considered "to the extent that the witnesses may actually be unavailable for trial in
one of the fora." (D.I. 15 at 11 (citing Jumara, 55 F.3d at 879).) Thus, Joao Control argues that
because Ford has not identified "any party witness that would be unavailable for trial in Delaware"
and the Inrix witness would be available for deposition or by subpoena power in Delaware because
Inrix is a Delaware corpoation, this factor should be neutral. (!d. at 11-12.)
As an initial matter, the court notes that "witnesses employed by the parties are not
considered by a court conducting a venue transfer analysis because the parties are obligated to
procure the presence of their own employees at trial." Nilssen v. Everbrite, Inc., No. 00-189-JJF,
2001 WL 34368396, at *2 (D. Del. Feb. 16, 2001). Here, it appears that most, if not all, of the
witnesses that Ford identifies are Ford employees with the
Because Ford will be required to produce these employees, the
of the Inrix employee.
does not factor them into the
analysis ofthis factor.
With regard to the Inrix employee, it appears that Joao Control overstates the moving
party's burden of demonstrating that a third-party witness will be unavailable or unwilling to travel
to Delaware. In this assessment, the court does not require such a clear statement-it is enough
that likely witnesses reside beyond the court's subpoena power and that there is reason to believe
that those witnesses will refuse to testify absent subpoena power. See Smart Audio Techs, 2012
WL 5865742, at *8 ("[T]his factor is only given weight when there is some reason to believe that
a witness actually will refuse to testify absent a subpoena."); see also AlP Acquisition, 2012 WL
5199118, at *4; Acuity Brands, Inc. v. Cooper Indus., Inc., No. 07-444-GMS, 2008 WL 2977464,
at *2 (D. Del. July 31, 2008). Here, while it is true that the Inrix employee may submit to a
deposition if the case were to proceed in Delaware, he would be within the court's subpoena power
in the Eastern District of Michigan. Ford does not specifically identify additional third-party
witnesses in its briefing, but does note that such witnesses exist in the Eastern District of Michigan
and would be outside the subpoena power of the court in this District should transfer be denied.
However, because Ford identifies only one third-party witness, the court regards this factor as
neutral in the transfer analysis.
The Location of Books and Records
Finally, the court accounts for "the location of books and records (similarly limited to the
extent that the files could not be produced in an alternative forum)." Jumara, 55 F.3d at 879. Ford
maintains that, because its principal place of business is in Dearborn, Michigan, and the accused
features were designed and engineered in the proposed transferee district, this factor should weigh
in favor of transfer. Specifically, Ford notes that: (1) the eight Ford employees with the primary
responsibility for developing the Ford SYNC system, which includes the features identified in the
complaint, are in Michigan (D.I. 11 at 8); (2) because these eight employees developed the system
in Michigan, "all of the documents, computer systems[,] and other evidence pertaining to the
features of SYNC identified are also located [there]" (id. ); (3) its "engineering, design
development, and marketing decisions are made in Michigan" (id. ):, (4) one of the features of the
SYNC system was developed by third-party, Inrix, also located in Michigan (id. ); and (5)
Dearborn, Michigan is its "principal place for research, development production, testing[,] and
marketing" (id. at 8-9).
Notably, Joao Control acknowledges in its briefing that, although "today's technology and
the routine exchange of discovery using electronic discovery databases, including the exchange of
documents, records and things in electronic form" is easier, this "factor would slightly favor
[d]efendant's request for transfer to Michigan." (D.I. 15 at 10.) The court agrees. The court has
recognized that the "bulk of the relevant evidence" in cases such as this often comes from the
accused infringer, such that the location of the defendant's documents can favor transfer. See
Smart Audio Techs, 2012 WL 5865742, at *9. Indeed, as Joao Control correctly notes, while
technological advancements have significantly reduced the weight to be accorded this factor,
importantly, "the court may not simply ignore the location of relevant books and records." AlP,
2012 WL 5199118, at *4; see also See In re Link_A_Media Devices Corp., 662 F.3d at 1224.
Thus, because Ford's principal place of business and much, if not cell, of its materials relevant to
the accused technology are located in the Eastern District of Michigan, this factor weighs slightly
in favor of transfer.
2. Public Interest Factors
The parties limit their briefing on the public interest factors to: (1) "practical considerations
that make the trial easy, expeditious, or inexpensive"; and (2) "loca.l interest in the controversy."
(D.I. 11; D.I. 15; D.I. 18.) Therefore, because the parties are in agreement that all other factors
are neutral, the court will not address the factors of: enforceability of the judgment; public policies
of the fora; the court's familiarity with relevant state law; or relative administrative difficulty, as
that relates to such issues as court congestion.
a. Practical Considerations
Jumara instructs that courts should look to "practical considerations that could make the
trial easy, expeditious, or inexpensive." 55 F.3d at 879. Ford contends that transferring this action
to the Eastern District of Michigan would serve the public interest of practical considerations
because: (1) judicial efficiency will be gained by transferring this action to the district where a
related litigation is pending (D.I. 11 at 15 (citing lvoclar Vivaden AG v. 3M Co., No. 11-1183,
2012 WL 2374657, at *13 (D. Del. Jun. 22, 2012)); (2) cases involving the same patent family
pending in another forum should be transferred to that other forum (id. at 16 (citing SOC- USA,
LLC v. Office Depot, Inc., No. 09-80545, 2009 WL 2365863, at* 1 (S.D. Fla. Jul. 30, 2009)); and
(3) for many of the reasons detailed in connection with its "convenience of parties" and
"convenience of witnesses" factors, it will prove less expensive to litigate in the proposed
transferee forum, as the vast majority of the witnesses and evidence is located there (id. at 17 -18).
In response, Joao Control argues that practical considerations favor keeping the case in
Delaware because this action is more advanced than the Michigan action. Specifically, Joao
Control details that Ford's motion to dismiss is fully briefed in this district, but briefing only
recently commenced in Michigan when it submitted its Answering Brief. Joao Control also notes
that, admittedly, both actions are in their early stages, but maintains that transfer is inappropriate
because it would prove inconvenient for it. (D.I. 15 at 12.) The court notes that, as of the date of
this Memorandum and Order, briefing on Ford's motions to dismiss has been completed in both
districts and the Eastern District of Michigan has scheduled a scheduling teleconference in its
action for the end of August 2013, such that the actions are nearly parallel in their litigation timing.
Thus, the court finds Joao Control's argument unpersuasive on this point.
Indeed, in consideration of the parties' arguments and the relevant law, the court largely
agrees with Ford that the practical considerations of having an easy, expeditious, and inexpensive
trial weighs slightly in favor of transfer. Specifically, while Ford has identified only one thirdparty witness and, therefore, has failed to establish that the private interest factor "witness
convenience" favors transfer, it has established that its employt::es, engineering and design
facilities, potentially relevant documentation, and other relevant evidence are located in the
Eastern District of Michigan. While the court did not take into com:ideration issues of economic
cost and logistical convenience with respect to potentially relevant Ford employees when assessing
"witness convenience," it can consider such factors here in determining the balance of "practical
considerations." Here, because neither party has facilities, offices, or employees in Delaware, the
court finds that the practical considerations of efficiency, expense, and ease favor transfer.
This conclusion is further supported by the facts detailed in the private interest factor
"convenience of the parties" discussion above. While the court found that factor neutral because
Ford is incorporated in Delaware and, therefore, cannot argue that it is an inconvenient forum, the
underlying facts discussed in that section do recommend transfer as the court finds that the
aggregate litigation costs would be reduced by litigating in Michigan. Specifically, both parties
are currently litigating in the Eastern District of Michigan and appear to have the financial
resources to do so. The court finds that it would prove more convenient for both to litigate in
Michigan than to conduct litigation in two districts, particularly when neither have a principal
place of business in Delaware and will have to travel to this district should the case remain here.
Finally, the court agrees with Ford that transferring this action will also prove expeditious
and efficient from a judicial perspective, because this litigation involves patents related to the
patents-in-suit in the Eastern District of Michigan. Specifically, tht:: patents-in-suit resulted from
continuation applications3 and share essentially the same specification with the Michigan patents.
Joao Control's description of the purported invention is identical for the Michigan patents and the
In January 2012, Joao Control filed suit against Ford for infringement of the '405 and '130 Patents in the
Central District of California. The' 130 Patent is based on a continuation application of the '405 Patent and, therefore,
the specification and the priority claim of the '130 Patent are based on the '405 Patent. (D. I. 11 at 3; see also id at 45.)
patents-in-suit and both complaints are directed to the same accused product-the Ford SYNC
System. (D.I. 11 at 2 (citing D.I. 1 at~~ 5, 12, 19; Ex. P.
8, 14).) Notably, Joao Control
sought to amend its complaint in the Eastern District of Michigan aetion to add the claims that it
raises here, but chose instead to file this litigation in the District of Delaware when Ford stated that
it would not agree to Joao Control's pleading amendment unless Joao Control limited its case to
ten claims. (D.I. 11 at 1-2; D.I. 18 at 4.) It appears from this proposed amendment that Joao
Control agreed that the patents-in-suit in Michigan and those here are at least tangentially related. 4
Thus, view of the foregoing, the court concludes that the "practical considerations" factor weighs
in favor of transfer.
a. Local Interest in the Litigation
The transfer analysis also requires that the court examine "any local interest in deciding
local controversies at home." Jumara, 55 F.3d at 879. Joao Control argues that there is a local
"interest in resolving disputes between Delaware businesses locally" because "[a]ny judgment
issued by the Delaware Court are enforceable against the [p ]artie:;; because they are Delaware
businesses." (D.I. 15 at 13.) Likewise, Ford identifies a local interest in the litigation in Michigan
based on the fact that the "Eastern District of Michigan has a strong interest in deciding disputes
that arise within its boundaries" and, in fact, has "far superior interests in deciding this dispute
In reaching its finding here, the court notes that it rejects Joao Control's argument that Ford "waived its
right" to bring a motion to transfer in this action because Ford rejected its requests to amend its complaint in the
Eastern District of Michigan to add the claims at issue here. (D.I. 15 at 6.) Specifically, Joao Control contends that
"Ford, through its counsel, made it unequivocally clear that it did not want these three patents-in-suit brought into the
Eastern District of Michigan and the Michigan litigation. Such clear and knowledgeable actions, and the refusal to
agree with Plaintiff to litigate these three patents in that forum, constitutes a waiver of any arguments to now transfer
this case to Michigan." (!d.) To the contrary, it is clear that Ford did not reject Joao Control's request to amend
outright, and, instead, indicated that it would agree to amendment if Joao Control limited its suit to ten claims.
Notably, Ford's request was consistent with a ten claim requirement that had previously been ordered by the California
court prior to transfer. (D.l. 18 at 4.) Ford has a right to seek limitation on the number of claims asserted and Joao
Control could have filed a motion with the court seeking leave to amend its pleadings. Therefore, the court disagrees
with Joao Control and finds that Ford has not waived its right to file a motion to t':ansfer in this action.
when compared to Delaware." (D.I. 11 at 19.) The court, howe:ver, is unpersuaded by these
arguments. As Joao Control recognizes, because "[t]he nature of patent litigation is national,
especially when dealing with infringement by a large, national corporation such as [Ford]," the
factor is neutral. The court agrees.
As noted in recent transfer memorandum opinions, the court concurs with the position
Judge Robinson expressed on this issue in Helicos Biosciences Corp. v. Illumina, Inc., wherein
[P]atent litigation does not constitute a local controversy in most cases. Patent
cases implicate constitutionally protected property rights. The resolution of patent
cases is governed by federal law reviewed by courts of national (as opposed to
regional) stature. Moreover, to characterize patent litigation as "local" undermines
the appearance of neutrality that federal courts were establish to provide and flies
in the face of the national (if not global) markets that are affected by the outcome
of these cases.
858 F. Supp. 2d 367, 375 (D. Del. 2012). Thus, this factor is typically neutral in the context of
patent litigation because patent issues usually "do not give rise to a local controversy or implicate
local interests." TriStrata Tech., Inc. v. Emulgen Labs, Inc., 537 :F. Supp. 2d 635, 643 (D. Del.
The court again reaches this conclusion here and is not convinced that either district has a
local interest in this action that would weigh in favor of transfer. To the contrary, while there may
well be an "interest" in both jurisdictions for the reasons the parties advance, the court disagrees
that that interest represents a "local controversy" in the context relevant here. This action is
governed under federal law, brought against a national corporation, and concerns a product
available nationally. Therefore, the court finds that this action implicates a national, rather than a
local, controversy, rendering this public interest factor neutral.
C. Transfer Analysis Summary
Considering the Jumara factors as a whole, the court concludes Ford has met its burden of
demonstrating that the interests of justice and convenience strongly favor transfer. Only Joao
Control's forum preference weighs against transfer and, as the court explains above, that
preference does not warrant maximum deference in this case. On the other hand, several factors
counsel transfer: Ford's choice of forum; the location where the claims arose; the location of
relevant books and records; and practical considerations.
For the reasons discussed above, the court will grant Ford's Motion to Transfer (D.I. 10)
this action to the Eastern District ofMichigan pursuant to 28 U.S.C. § 1404(a).
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
JOAO CONTROL & MONITORING SYSTEMS, )
FORD MOTOR COMPANY,
C.A. No. 12-cv-1479 (GMS)
At Wilmington, this .l::L day of August, 2013, consistent with the Memorandum Opinion
issued this same date, IT IS HEREBY ORDERED THAT:
1. Ford's Motions to Transfer Venue to the Eastern District of Michigan (D.I. 10) 1s
2. The above-captioned action is transferred to the U.S. District Court for the Eastern District
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