Husqvarna AB et al v. The Toro Company
Filing
77
REPORT AND RECOMMENDATIONS- denying 26 MOTION to Transfer Case to the United States District Court for the District of Minnesota. Please note that when filing Objections pursuant to Federal Rule of Civil Procedure 72(b)(2), briefing consists so lely of the Objections (no longer than ten (10) pages) and the Response to the Objections (no longer than ten (10) pages). No further briefing shall be permitted with respect to objections without leave of the Court. Objections to R&R due by 8/29/2016. Signed by Judge Sherry R. Fallon on 8/11/2016. (lih)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
HUSQVARNA AB and HUSQVARNA
PROFESSIONAL PRODUCTS, INC.,
· Plaintiffs,
v.
THE TORO COMP ANY,
Defendant.
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Civil Action No. 15-856-SLR-SRF
REPORT AND RECOMMENDATION
I.
INTRODUCTION
On September 22, 2015 plaintiffs, Husqvama AB and Husqvama Professional Products,
Inc. (collectively "Husqvama"), filed this patent infringement suit against the defendant, The
Toro Company ("Toro"), alleging infringement of United States Patent No. 9,055,713 (the "'713
patent"). (D.I. 1) Presently before the court is Toro's motion to transfer venue to the District of
Minnesota pursuant to 28 U.S.C. § 1404(a). (D.I. 26) For the following reasons, I recommend
that the court DENY Toro's motion to transfer.
II.
BACKGROUND
Husqvama AB is a Swedish company organized and existing under the laws of Sweden.
(D.I. 1 at~ 1). Husqvama Professional Products, Inc. ("HPP") is a U.S. subsidiary of Husqvama
AB. (D.I. 41 at 3) Husqvama asserts that HPP is the exclusive.licensee of the patent-in-suit.
(Id.) HPP is a Delaware corporation maintaining its principal place of business in Charlotte,
North Carolina. (Id.) Husqvama produces "outdoor power products," such. as lawnmowers. (Id.
at 2-3) It sells its products to retailers across the United States, including in Delaware. (Id. at 3)
Husqvama and Toro are directcompetitors in the market. (Id.)
Toro is a Delaware corporation maintaining its principal place of business in
Bloomington, Minnesota. (D.I. 27 at 5) Toro also sells products through retailers across the .
United States, including in Delaware. (D.I. 42 at if 8) Toro's Minnesota headquarters houses its
.
.
research, development, engineering, marketing, and.sales functions. (D.I. 27 at 5) Additionally,
Toro maintains that "all of the witnesses with information regarding Toro's accused products and
prior art are within the subpoena power of the District of Minnesota." (Id. at 6)
Husqvarna alleges infringement of the '713 patent entitled, "All Wheel Drive, Walk
Behind Mower." (D.I. 1 at if 7) Husqvama accuses two Toro all-wheel drive ("AWD")
lawnmowers of infringing the '713 patent: Toro Recycler 22-inch Personal Pace All-Wheel
Drive Mower (Model No. 20353), and Lawn Boy All-Wheel Drive Mower (Model Nos. 10739
and 17739). (D.I. 1 at if 9; D.I. 43,. Ex. L) Toro filed its answer and counterclaim to the
complaint on November 13, 2015. (D.I. 9) Husqvarna filed its answer to Toro's counterclaim
on December 7, 2015. (D.I. 12) Thereafter, on March 24, 2016, Toro filed the pending motion to
transfer. (D.I. 26) 1
III.
STANDARD OF REVIEW
Section 1404(a) of Title 28 of the United States Code grants district courts the authority
to transfer venue "[ f]or the convenience of parties and witnesses, in the interests of justice ... to
any other district or division where it might have been brought." 28 U.S.C. § 1404(a). Much has
been written about the legal standard for motions to transfer under 28 U.S.C. § 1404(a). See,
e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011); Jumara v. State Farm
1
There is also a pending motion to stay in this action, which will be addressed separately. (D.I.
33)
2
Ins. Co., 55 F.3d 873 (3d Cir. 1995); Helicos Biosciences Corp. v. Illumina, Inc., 858 F. Supp. 2d
367 (D. Del. 2012).
Referring specifically to the analytical framework described in Helicos, the court starts
withthe premise that a defendant's state of incorporation has always been "a predictable,
legitimate venue for bringing suit" and that "a plaintiff, as the injured party, generally ha[s] been
'accorded [the] privilege of bringing an action where he chooses."' 858 F. Supp. 2d at 371
(quoting Norwood v. Kirkpatrick, 349 U.S. 29, 31 (1955)) .. Indeed, the Third Circuit in Jumara
reminds the reader that "[t ]he burden of establishing the need for transfer ... rests with the
movant" and that, "in ruling on defendants' motion, the plaintiffs choice of venue should not be
lightly disturbed." 55 F .3d at 879 (citation omitted).
The Third Circuit goes on to recognize that:
In ruling on§ 1404(a) motions, courts have not limited their consideration to the
three enumerated factors in § 1404(a) (convenience of parties, convenience of
witnesses, or interests of justice), and, indeed, commentators have called on the
courts to "consider all relevant factors to determine whether on balance the
litigation would more conveniently proceed and the interests of justice be better
served by transfer to a different forum."
Id. (citation omitted). The court then describes some of the "many variants of the private and
public interests protected by the language of§ 1404(a)." Id.
The private interests have included: plaintiffs forum of preference as manifested
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 alternative forum).
The public interests have included: 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
3
the fora; and the familiarity of the trial judge with the applicable state law in
diversity cases.
Id. (citations omitted).
IV.
ANALYSIS
With the above "jurisdictional guideposts" in mind, the court turns to the "difficult issue
of federal comity" that transfer motions present. E.E.O.C. v. Univ. ofPa., 850 F.2d 969, 976 (3d
Cir. 1988). Husqvarna does not challenge that venue would also be proper in the District of
Minnesota.: (D.I. 41) As such, the court does not address this further. 2 See 28 U.S.C. § 1404(a).
A. The Private Factors
The private interests include: plaintiffs forum preference; the defendant's preference;
where the claim arose; the convenience of the parties as indicated by their relative physical and
financial condition; the convenience of the witnesses to the extent that witnesses may actually be
unavailable for trial; and the location of books and records. See Jumara, 55 F.3d at 879.
1. Plaintiffs' forum preference
Husqvarna contends that as plaintiffs, their choice of forum is entitled to great weight.
(D.I. 41 at 8-11) HPP "is a Delaware corporation that is choosing to rely on the law and Courts
of Delaware for its business dealings." (Id.) Therefore, Husqvarna asserts that Delaware is a
natural forum for it to pursue business litigation. (Id.)
Toro responds that this factor, along with incorporation in Delaware, is not dispositive of
the transfer inquiry. (D.I. 27 at 10) Because the parties do not have a physical presence in
2
The first step in the transfer analysis is to determine whether the movant has demonstrated that
the action could have been brought in the proposed transferee venue in the first instance. See
Mallinckrodt, Inc. v. E-Z-Em, Inc., 670 F. Supp. 2d 349, 356 (D. Del. 2009). This issue is not
disputed.
4
Delaware, Husqvama' s choice of forum is only entitled "to some degree of heightened
deference." (Id. at 11)
Plaintiffs have historically been accorded the privilege of choosing their preferred venue
for pursuing their claims. See C.R. Bard, Inc. v. Angiodynamics, Inc., Civ. No. 15-218-SLR,
2016 WL 153033, at *2-4 (D. Del. Jan. 12, 2016). "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."' Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d
Cir. 1970) (internal citation omitted); see also Helicos Biosciences Corp. v. Illumina, Inc., 858 F.
Supp. 2d 367, 373 (D. Del. 2012) ("the court declines to disregard the privilege of choosing a
venue that has historically been accorded plaintiffs, absent some specific authority making such a
distinction''). However, courts have recognized 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., Civil Action No.
11-400-GMS, 2013 WL 105323, at *3 (D. Del. Jan. 7, 2013).
I
In the present action, Husqvama does not have facilities in Delaware. (D.I. 1 at ,-r 1; D.I.
28, Ex. 6) However, even where the chosen forum is not a "home forum," courts still give a
plaintiffs preference "heightened" weight. Linex, 2013 WL 105323, at *3. Delaware is a
legitimate forum, as HPP and Toro are incorporated in Delaware. See FastVDO LLC v.
Paramount Pictures Corp., 947 F. Supp. 2d 460, 462 (D. Del. 2013).
Therefore, this factor weighs against transfer.
2. Defendant's forum preference
Toro contends that its preference for the District of Minnesota strongly favors transfer
because its actions, headquarters, principal place of business, and witnesses are centered in
5
Minnesota. (D.I. 27 at 13) Toro's witnesses can also be compelled to testify in the District of
Minnesota. (Id.)
Husqvarna concedes that Toro's choice should be given some weight in the analysis.
(D.1. 41at11) However, Toro's preference should be weighted less than the plaintiffs'. (Id.)
Additionally, Husqvarna asserts that Toro is a Delaware corporation conducting business in
Delaware, so Delaware is an appropriate forum. (Id.)
Courts "decline[] to elevate [a defendant's] convenience over the choice of a neutral
forum selected by [the defendant] as the situs of [its] incorporation." Stephenson v. Game Show
Network, LLC, 933 F. Supp. 2d 674, 678 (D. Del. 2013) (citing Cradle IP, LLC v. Texas
Instruments, Inc., 923 F. Supp. 2d 696, 699-700 (D. Del. 2013)).
Although Toro would rather litigate in Minnesota, Toro is incorporated in Delaware and
sells its products in various states, including Delaware. (D.I. 27 at 5; D.I. 42 at if 8; D.I. 43, Exs.
F, G) A party's state of incorporation is a traditional and legitimate venue, as is the locus of a
party's business activities. See C. R. Bard, Inc. v. Angiodynamics, Inc., Civ. No. 15-218-SLR,
2016 WL 153033, at *2-4 (D. Del. Jan. 12, 2016).
Therefore, this factor weighs only slightly in favor of transfer.
3. Where the claim arose
Toro asserts that the case should be transferred because the claim "arose out of activity
centered in the District of Minnesota-not Delaware." (D.1. 27 at 13) Specifically, infringement
is more properly focused in Minnesota because research and development, witnesses, vendors,
and its headquarters are there. (Id. at 14) Husqvarna responds that the claim arose in Delaware
because Toro sells its products in Delaware. (D.I. 41 at 11) Additionally, Husqvarna contends
6
that neither the issues nor evidence are centered in Minnesota, as Toro's lawnmowers are
manufactured in Mexico, and relevant witnesses reside elsewhere. (Id. at 5-6, 11-12)
A claim for patent infringement arises wherever someone has committed acts of
infringement, to wit, "makes, uses, offers to sell, or sells any patented invention" without
authority. See generally 35 U.S.C. § 27l(a); Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt,
Inc., 148 F.3d 1355, 1360 (Fed. Cir. 1998) (an infringement claim "arises out ofinstances of
making, using, or selling the patented invention").
Because Toro has sold its products in Delaware, the asserted patent claims may be said to
arise in Delaware. See C.R. Bard, Inc. v. Angiodynamics, Inc., Civ. No. 15-218-SLR, 2016 WL
153033, at *2--4 (finding that a patent claim arose in Delaware when the defendant sold products
there); (D.I. 42
at~
8)
Therefore, this factor weighs against transfer.
4. Convenience of the parties
Toro believes transfer is warranted because even though both companies are very large,
Husqvarna is twice the size. (D.I. 27 at 15) Husqvarna must travel regardless of the forum, so it
makes sense to litigate in Minnesota where Toro's headquarters and witnesses are located. (Id.)
In opposition, Husqvarna avers that because both companies are so large, the size difference is
inconsequential. (D.I. 41 at 12) Furthermore, Toro has previously litigated "well over thirty"
patent cases across the United States. (Id.) Therefore, there should be no impediments to
litigating outside of Minnesota. (Id.)
In evaluating the convenience of the parties, a district court should focus on the parties'
relative physical and financial condition. See C.R. Bard, 2016WL153033, at *3 (citing Jumara
v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995)). When a party "accept[s] the benefits of
7
incorporation under the laws of the State of Delaware, 'a company should not be successful in
arguing that litigation' in Delaware is 'inconvenient,' 'absent some showing of a unique or
unexpected burden."' Scientific Telecomm., LLCv. Adtran, Inc., Civ. No. 15-647-SLR, 2016
WL 1650760, at *1 (D. Del. Apr. 25, 2016) (quoting ADE Corp. v. KLA-Tencor Corp., 138 F.
Supp. 2d 565, 573 (D. Del. 2001)).
Toro is a large Delaware corporation with resources to litigate in this district, as it has
done previously. 3 (D.I. 43, Ex. Z at 1, 7-10) Toro chose to incorporate in Delaware, where it
would be subject to the jurisdiction of Delaware courts. See Stephenson v. Game Show Network,
LLC, 933 F. Supp. 2d 674, 670 (D. Del. 2013) (denying a motion to transfer where the defendant
was incorporated in Delaware and had the resources to litigate there); Versata Software, Inc. v.
Callidus Software Inc., 944 F. Supp. 2d357, 361 (D. Del. 2013) (transfer not warranted where
both parties had experience litigating in multiple jurisdictions).
Therefore, this factor weighs against transfer.
5. Convenience of the witnesses
Toro asserts that availability of trial witnesses is the most important factor in the transfer
analysis. (D.I. 48 at 2) Accordingly, transfei; is warranted because many non-party witnesses are
unavailable to attend trial in Delaware. (D.I. 27 at 9) Specifically, Toro asserts that it has
"provided detailed sworn testimony establishing that four witnesses having independent, firsthand knowledge of key evidence [of an 'early prototype] invalidating Plaintiffs' patent will not
and cannot attend trial in Delaware, but can be compelled to attend trial in Minnesota." (D .I. 48
at 2) Those witnesses include Milton Rache, Mike Happe, Dave Moe, and Tip Sivilay. (Id.)
3
As of March 17, 2016, Toro was a publicly traded company with 6,134 employees and $1.7
billion in revenue. (D.I. 28, Ex. 13 at 1)
8
Husqvarna suggests that the prototype is not important to Taro's trial defenses because
Toro did not identify the prototype in its identification of seven prior art references. (D.I. 41 at
15) Thus, Toro is over-emphasizing the significance of the prototype to support the present
motion. (Id.) Regardless, Husqvarna asserts that Toro has not shown that the witnesses are
necessary for trial, or that there are no additional witnesses who could supply the necessary
testimony at trial in Delaware. (Id.)
For example, Mr. Rache stated that Chris Wadzinksi and others also have relevant
knowledge of the lawnmowers at issue. (Id. at 15-16) However, Toro did not show that Mr.
Wadzinksi or the "others" are unavailable for trial. (Id.) Husqvarna also questions Mr. Rache's
credibility because Mr. Rache stated that the prototype was the precursor to Taro's commercial
walk-behind mover, but the commercial mower was not released until eight years after Mr.
Rache retired. (Id. at 16)
With respect to Mr. Happe, Husqvarna asserts that Toro has not shown that others do not
have the same knowledge of sales, marketing, design, and function of the prototype model that
Mr. Happe claims to have. (Id.)
Finally, Husqvarna objects to Mr. Moe's declaration as untimely because it was not filed
until after Toro submitted its opening brief for this pending transfer motion. (Id.) Even ifthe
court considers Mr. Moe's declaration, Mr. Moe states that he was a group manager. (Id. at 17)
Husqvarna asserts that Toro has not shown that others within the "group" could not provide
similar testimony. (Id.)
With respect to convenience of the witnesses, it is not whether witnesses are
inconvenienced by litigation that matters, but rather, whether witnesses "may actually be
9
unavailable for trial in one of the fora." Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.
1995).
In the present action, there is no indication that the "key" witnesses are the only witnesses
with knowledge of the accused products who could be called upon to testify. Mr. Rache
identified Chris W adzinksi as a designer with knowledge of the lawnmower prototype. (D .I. 31
at il 6) Mr. Hurst identified multiple individuals with knowledge of the design, development,
manufacturing, marketing, or sales of the accused products. (D.I. 30 at ilil 5-15)
Additionally, Mr. Sivilay is a Toro employee. (D.I. 32 at il 1) "[W]itnesses who are .
employed by a party carry no weight in the 'balance of convenience' analysis since each party is
able, indeed, obligated to procure the attendance of its own employees for trial. Affymetrix, Inc.
v. Synteni, Inc., 28 F. Supp. 2d 192, 203 (D. Del. 1998) (citation omitted). Moreover, Mr.
Sivilay states that it would be "inconvenient" for him to travel to Delaware, but not that he would
be unable to attend. 4 (D.I. 32 at il 8)
Mr. Hurst suggests, like Mr. Sivilay, that it would be inconvenient for the knowledgeable
employees he has identified to travel to Delaware to attend trial. 5 (D.I. 30 at il 16) Mr. Rache,
also states that he would "probably decline to travel to Delaware to testify because of the
inconvenience .... " (D.I. 31 at il 9) That travel would be inconvenient does not demonstrate that
all of these witnesses would "actually be unavailable for trial," as required by Jumara. 55 F.3d
873, 879 (3d Cir. 1995.). 6
4
Mr. Sivilay stated that he has been working part time due to back problems, which have been
improving with physical therapy. (D.I. 32 at il 6) Because of this back pain, "[he] would prefer
not to travel to Delaware to testify." (Id.)
5 Mr. Hurst states that it would be inconvenient for all witnesses identified to be away from their
work at Toro's headquarters to testify in Delaware. (D.I. 30 at il 16)
6
The convenience of the witnesses is only given weight "when there is some reason to believe
that a witness actually will refuse to testify absent a subpoena." Smart Audio Techs., LLC v.
10
District Court Judge Robinson has found that:
[I]n the nine patent jury trials this judicial officer conducted between March 2010
and October 2011, an average of three fact witnesses per party appeared live for
trial, with the average length of trial being 28 hours (with the parties often using
less time than allocated, on average, 25 hours). Further, depositions in the cases
over which this judicial officer presides are generally taken where the deponents
reside or work.
C.R. Bard, Inc. v. Angiodynamics, Inc., Civ. No. 15-218-SLR, 2016 WL 153033, at *3 (D. Del.
Jan. 12, 2016). As in C.R. Bard, there is no suggestion that this case will be any exception.
Moreover, discovery can be conducted at any location convenient to the parties and their
employees, so the only event that must take place in Delaware is the trial. 7 The court has
previously found that:
[T]ravel expenses and inconveniences incurred for that purpose, by a Delaware
defendant, [are] not overly burdensome. From a practical standpoint, much of the
testimony presented at trial these days is presented via recorded depositions, as
opposed to witnesses traveling and appearing live. There certainly is no obstacle
to [a party] embracing this routine trial practice.
Oracle Corp. v. epicRealm Licensing, LP, No. Civ. 06-414-SLR, 2007 WL 901543, at *4 (D.
Del. Mar. 26, 2007). As such, although some witnesses would choose not to travel, Toro has not
shown that witnesses with "key" knowledge could not attend trial in Delaware. Furthermore,
Apple, Inc., 910 F. Supp. 2d 718, 732 (D. Del. 2012). In the present action, only Mr. Happe and
Mr. Moe affirmatively state that they will refuse to testify at trial in Delaware. (D.I. 29 at if 7;
D.I. 36, Ex. 1 at if 9) However, as discussed, Toro has not shown that Mr. Happe and Mr. Moe
are the only witness with key knowledge of the accused products.
7
According to national statistics, less than 13.9% of patent infringement cases resolve on the
merits. Scientific Telecomm., LLC v. Adtran, Civ. No. 15-647-SLR, 2016 WL 1650760, at *1
n.2 (D. Del. Apr. 25, 2016) (citing Howard, Brian, The Truth About Patent Damage Awards,
Law 360 (Oct. 16, 2014); Morgan, Paul, Microsoft v. i4i -Is the Sky Really Falling?, Patently 0
(Jan. 9, 2011) ("[M]ore than 97% of patent suits are settled before trial with no judicial validity
test."); Denlow, Morton, Hon. Ret., Magistrate Judges' Important Role in Settling Cases, The
Federal Lawyer, 101 (May/June 2014) ("In 2012, less than 2 percent of federal civil cases went
to trial.")).
11
Toro has not shown that it could not use, or would suffer prejudice through use of video
depositions at trial.
Therefore, this factor weighs slightly in support of transfer.
· 6. Location of the books and records
Toro arguesthat transfer is appropriate due to inconvenience in transporting physical
evidence from Minnesota to the District of Delaware. (D.I. 27 at 17-18) In addition to books
and records, Toro anticipates that lawnmowers themselves will be necessary evidence at trial.
(Id.) Husqvama responds that both companies "are sophisticated modem companies that
maintain electronic business records and files, and they each have the ability to image and
produce paper files electronically." (D.I. 41 at 18) With respect to lawnmowers, Husqvama
argues that shipping the two· accused lawnmowers
~'is
a modest expense for a patent case of this
size, particularly because Toro regularly ships the accused products to Delaware to be sold in this
state as part of its ordinary course of business." (Id.)
The Third Circuit in Jumara advised that the location of books and records is only
determinative if"the files c[an]not be produced in the alternative forum." 55 F.3d at 879.
However, the Federal Circuit recently explained that "[i]n patent infringement cases, the bulk of
the relevant evidence usually comes from the accused infringer. Consequently, the place where
the defendant's documents are kept weighs in favor offransfer to that location." In re
Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). Nevertheless, courts within the District
of Delaware have repeatedly recognized that recent technological advances have reduced the
weight of this factor. See, e.g., Intellectual Ventures I LLC, v. Checkpoint Software Techs. Ltd.,
797 F. Supp. 2d 472, 485 (D. Del. 2011); Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192,
208 (D. Del. 1998); Nihon Tsushin Kabushiki Kaisha v. Davidson, 595 F. Supp. 2d 363, 372 (D.
12
..
..
Del. 2009). Today, "virtually all businesses maintain their books and records in electronic
format readily available for review and use at any location." C. R. Bard, Inc. v. Angiodynamics,
Inc., Civ. No. 15-218-SLR, 2016 WL 153033, at *3 (D. Del. Jan. 12, 2016).
With respect to books and records, it is logical to conclude that Toro maintains readily
accessible documents in electronic format, given that Taro's headquarters are in Minnesota, it
maintains facilities across the $lobe, lawn care products are manufactured in Mexico, and it sells
its products to nationwide distributors like Home Depot. (D.I. 43, Exs. F, M, N, 0, P, X)
With respect to the physical lawnmowers and prototypes, Toro has not shown why it
would be unable to transport the mowers, which are sold in Delaware, to trial in a Delaware
court. See C. R. Bard, 2016 WL 153033, at *3. Toro states that it would be "much more
convenient for [it] to take these mowers back and forth to court in the District of Minnesota than
[in Delaware]." (D.I. 27 at 18) However, aside from the fact that it is a shorter distance from the
District of Minnesota courthouse to Taro's headquarters, Toro does not present any logical
reason why mowers cannot be transported from a storage facility in Delaware, given the fact that
mowers are regularly shipped to Delaware for sale. (D.I. 43, Exs. F, P, X) Whether the
equipment is physically stored in Minnesota or Delaware would seem to have no impact on the
logistics of moving that equipment from a storage site to a courtroom in either district. Toro has
not provided a record to establish a logistical issue of such significance that it tips the scales in
favor of transfer. Accordingly, Toro fails to show why its physical evidence and books and
records are incapable of being presented at trial in Delaware. See C. R. Bard, 2016 WL 153033,
at *3.
Therefore, this factor is neutral.
13
B. The Public Factors
The public interests include: the enforceability of the judgment; practical considerations;
administrative difficulty; the local interest in deciding local controversies at home; public policy;
and the familiarity of the trial judge with the applicable state law in diversity cases. Jumara v.
State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995).
1. Enforceability of the judgment, administrative difficulty, and public
policy
The parties concede that these factors are neutral. (D.I. 27 at 18 n.9; D.I. 41 at 20)
2. Practical considerations
Toro asserts that it is more convenient, efficient, and expedient to litigate in Minnesota
because a separate and related patent infringement action between the parties was transferred
there from North Carolina. (D.I. 27 at 2--4, 18-19) Furthermore, it contends that the District of
Minnesota has developed specialized patent procedures to ensure predictability and efficiency.
(Id. at 18) However, Husqvarna highlights Delaware's "deep experience and competence" in
handling patent cases. (D.I. 41 at 19)
Although litigating patent infringement actions in both Delaware and Minnesota would
present some overlap, the Minnesota case was stayed on August 31, 2015. (D.I. 28, Ex. 5)
Additionally, the patents-at-issue in each case are different, and they involve different accused
products. 8 See C.R. Bard, 2016 WL 153033, at *4 (finding that such evidence weighed against
8
The Minnesota case involves patent numbers 7,071,436 and 7,866,134, entitled "Starter" and
"Positive Grass Collector Attachment Positioning," respectively. (D.I. 28, Ex~ 5 at ifif 7-8) The
Minnesota case accuses the Toro Recycler 22-inch Personal Pace Electric Start Mower (Model
No. 20334) and Recycler 22-inch Variable Speed High Wheel Mower (Model No. 20371). (Id.,
Ex. 5 at if 10) The current action involves patent number 9,055,713, entitled "All Wheel Drive,
Walk Behind Mower." (D.I. I at if 7) The present action accuses the Toro Recycler 22-inch
14
-·
..
transfer); (D.I. 41 at 19-20; D.I. 43, Exs. T, U, W) Moreover, the U.S. District Court for the
District of Delaware is one of the most experienced in handling patent litigation. See Brian C.
Howard J.D., M.A. & Jason Maples, J.D., LL.M., Lex Machina, LEX MACHINA PATENT
LITIGATION YEAR IN REVIEW 2015 (2016). This Court is historically home· to the second highest
number of patent filings out of any district in the country. Id. at 5-6. In 2015, judges from this
district issued the most merits decisions compared to any other district in the country. Id. at ii.
Therefore, this factor weighs against transfer.
3. Local interests
Toro asserts that Minnesota is the preferred forum because it "is the center of gravity of
the accused activity," and the effects of the case will be felt most by Toro's employees located in
Minnesota. (D.I. 27 at 13-14; D.I. 48 at 9-10) Husqvama responds that this factor is generally
not dispositive whereas, here, the alleged infringement occurs in multiple states. (D.I. 41 at 19)
"Local interest in deciding local controversies is not a dispositive factor, as patent
litigation does not constitute a local controversy in most cases." See C. R. Bard, 2016 WL
153033, at *4. Indeed, the claims may be said to arise in Delaware, among other states, and Toro
maintains facilities_ globally. See § IV(A)(3), supra. Additionally, "patent litigation implicates
constitutionally protected property rights, is governed by federal law reviewed by a court of
appeals of national (as opposed to regional) stature, and affects national (if not global) markets."
C.R. Bard, 2016 WL 153033, at *4 (citing Cradle IP v. Texas Instruments, Inc., 923 F. Supp. 2d
696, 700-01 (D. Del. 2013)).
Therefore, this factor is neutral.
Personal Pace All-Wheel Drive Mower (Model No. 20353) and Lawn Boy All-Wheel Drive
Mower (Model Nos. 10739 and 17739). (D.I. 43, Ex. L)
15
C. Transfer Analysis Summary
Toro has not shown that the Jumara factors as a whole weigh in favor of transfer. Only
Toro's forum preference for its "home district" and the limitations of some Toro witnesses to
appear in person for trial weigh in favor of transfer. These factors do not, on the whole, warrant
transfer to another district. The greater number of remaining factors weigh against transfer, or
are neutral.
"Defendant has the burden of persuading the court that transfer is appropriate, not only
for its convenience but in the interests of justice." C. R. Bard, 2016 WL 153033, at *4. In the
present action, Husqvarna chose a legitimate forum, Toro's state of incorporation. See id.
"Although Delaware is not the locus of any party's business activities, it is a neutral forum, and
the action does not implicate the laws of another state. Id.; see also Hologic, Inc. v. Minerva
Surgical, Inc., Civ. No. 15-1031-SLR, 2016 WL 789349, at *2 (D. Del. Feb. 29, 2016) (the court
did not elevate the convenience of one party over another where the action involved Delaware
corporations and did not implicate the state laws of another jurisdiction.).
The court recognizes that it may be more expensive and inconvenient for Toro to litigate
in Delaware than in Minnesota. However, under the circumstances the court "decline[s] to
elevate the convenience of one party over the other," as "discovery is a local event and trial is a
limited event." C. R. Bard, 2016 WL 153033 at *4 n.6 (noting that "[d]iscovery is largely
electronic, with depositions taking place where the deponents reside or work. Moreover, most
trials now are scheduled for less than seven days, and involve only a handful of live witnesses
and a limited number of documents."); Scientific Telecomm., LLC v. Adtran, Inc., Civ. No. 15647-SLR, 2016 WL 1650760, at *2 (D. Del. Apr. 25, 2016). Delaware imposes no "unique or
unexpected burden" on Toro, such that transfer is warranted in the interests of justice. Scientific
16
Telecomm, 2016 WL 1650760, at *2 (explaining that when incorporated in Delaware, a party
cannot successfully argue that Delaware is an inconvenient forum "absent some showing of a
unique or unexpected burden."). Therefore, Toro's motion to transfer venue should be DENIED.
V.
CONCLUSION
For the foregoing reasons, I recommend that the court DENY Toro's motion to transfer
venue. (D.I. 26)
This Report and Recommendation is filed pursuant to 28 U.S.C. § 636(b)(l)(B), Fed. R.
Civ. P. 72(b)(l), and D. Del. LR 72.1. The parties may serve and file specific written objections
within fourteen (14) days after being served with a copy of this Report and Recommendation.
Fed. R. Civ. P. 72(b)(2). The objections and responses to the objections are limited to ten (10)
pages each. The failure of a party to object to legal conclusions may result in the loss of the right
to de novo review in the District Court. See Sincavage v. Barnhart, 171 F. App'x 924, 925 n.1
(3d Cir. 2006); Henderson v. Carlson, 812 F.2d 874, 878-79 (3d Cir. 1987).
The parties are directed to the court's Standing Order For Objections Filed Under Fed. R.
Civ. P. 72, dated October 9, 2013, a copy of which is available on the court's website,
http://www.ded.uscourts.gov.
Dated: August_!_L, 2016
AGISTRATE JUDGE
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