Wiremed Tech LLC v. Adobe Systems Incorporated

Filing 37

MEMORANDUM OPINION. Signed by Judge Maryellen Noreika on 5/24/2019. (dlw)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
WIREMED TECH LLC,
Plaintiff,
v.
ADOBE INC.,
Defendant.

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C.A. No. 18-1066 (MN)

MEMORANDUM OPINION
Stamatios Stamoulis, STAMOULIS & WEINBLATT LLC, Wilmington, DE; David R. Bennett,
Direction IP Law, Chicago, IL – Attorneys for Plaintiff
Kelly E. Farnan, RICHARDS, LAYTON & FINGER, P.A., Wilmington, DE – Attorney for Defendant

May 24, 2019
Wilmington, Delaware

NOREIKA, U.S. DISTRICT JUDGE:
Before the Court is Defendant Adobe Inc.’s (“Defendant” or “Adobe”) Motion to Transfer
Venue Pursuant to 28 U.S.C. § 1404(a) to the Western District of Washington. (D.I. 11). Plaintiff
Wiremed Tech LLC (“Plaintiff” or “Wiremed”) opposes transfer. (D.I. 18). For the reasons set
forth below, Adobe’s motion is denied.
I.

BACKGROUND
Wiremed is a Texas limited liability company with a principal place of business in Texas.

(D.I. 1 ¶ 1). Adobe is a Delaware corporation with a principal place of business in California.
(Id. ¶ 2). Wiremed initiated this action on July 18, 2018, alleging that Adobe’s Character Animator
infringes U.S. Patent Nos. 6,331,864 and 6,944,825. (Id. ¶¶ 28, 42). Adobe’s Character Animator
“is an animation application that combines live motion-capture with a multi-track recording system
to control layered 2D puppets drawn in Adobe Photoshop or Illustrator.” (D.I. 13 ¶ 3). Adobe
moves to transfer this action to the Western District of Washington where the Character Animator
application was primarily designed and developed by a team based in Adobe’s Seattle, Washington
office. (Id. ¶ 4).
II.

LEGAL STANDARD
District courts have 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). However, “[a] plaintiff, as the injured party, generally ha[s] been
‘accorded [the] privilege of bringing an action where he chooses,’” Helicos Biosciences Corp. v.
Illumina, Inc., 858 F. Supp. 2d 367, 371 (D. Del. 2012) (quoting Norwood v. Kirkpatrick, 349 U.S.
29, 31 (1955)), and this choice “should not be lightly disturbed,” Jumara v. State Farm Ins. Co.,
55 F.3d 873, 879 (3d Cir. 1995).

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The Third Circuit has recognized that:
“[i]n 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.’”
Jumara, 55 F.3d at 879 (citation omitted). The Jumara court went on to describe twelve (12)
“private and public interests protected by the language of § 1404(a).” Id. The private interests
include:
“plaintiff’s forum 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).”
Id. at 879 (citations omitted). The public interests 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.”
Id. at 879-80.
The party seeking transfer bears the burden “to establish that a balancing of proper interests
weigh[s] in favor of transfer.” Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970).
Moreover, though courts have “broad discretion to determine, on an individualized, case-by-case
basis, whether convenience and fairness considerations weigh in favor of transfer,” Jumara,
55 F.3d at 883, the Third Circuit has held that “unless the balance of convenience of the parties is
strongly in favor of [the] defendant, the plaintiff’s choice of forum should prevail.” Shutte,
431 F.2d at 25.

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III.

ANALYSIS
As an initial matter, the parties dispute whether this case could have originally been brought

in the Western District of Washington. Patent infringement actions “may be brought in the judicial
district where the defendant resides, or where the defendant has committed acts of infringement
and has a regular and established place of business.” 28 U.S.C. § 1400(b). Because Adobe is a
Delaware corporation, it resides only in Delaware for purposes of the patent-venue statute. See
TC Heartland LLC v. Kraft Food Grp. Brands LLC, 137 S. Ct. 1514, 1521 (2017). Thus, for the
case to be transferred to the Western District of Washington, Adobe must have committed acts of
infringement there and have a regular and established place of business within the district.
It is undisputed that Adobe has a regular and established place of business in the Western
District of Washington. 1 Wiremed, however, asserts that Adobe has not shown that it has
committed acts of infringement within the Western District of Washington because Adobe denied
selling its Character Animator nationwide in its Answer. (D.I. 18 at 8 (citing D.I. 10 ¶ 28)). In
response, Adobe argues that it admitted “selling Character Animator, an application offered
nation-wide, and only denied that it infringes the patents-in-suit.” (D.I. 21 at 1 (citing D.I. 10 ¶
28)). Adobe also contends that the Character Animator was made in Seattle. (See id.).
Given that Wiremed has accused Adobe of infringement nationwide (D.I. 1 ¶¶ 28, 42) and
Adobe did not deny that “it makes and sells a software product called Character Animator” (D.I.
10 ¶¶ 28, 42), which Adobe has admitted is available nationwide and is, at least, partially made in
Seattle (D.I. 21 at 1), the Court finds that Adobe has “committed acts of infringement” for the

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For a corporation to have a regular and established place of business, three requirements
must be met: “(1) there must be a physical place in the district; (2) it must be a regular and
established place of business; and (3) it must be the place of the defendant.” In re Cray
Inc., 871 F.3d 1355, 1360 (Fed. Cir. 2017). Adobe’s Seattle, Washington office meets all
three of these requirements. (See D.I. 13 ¶¶ 2, 4-6).
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purposes of § 1400(b). Because the Court has determined that this action could have been brought
in the Western District of Washington, the Court now considers the private and public factors set
forth in Jumara in connection with its transfer inquiry.
1.

Plaintiff’s forum preference

This factor weighs against transfer. “It is black letter law that a plaintiff’s choice of a
proper forum is a paramount consideration in any determination of a transfer request,” – one that
“should not be lightly disturbed.” Shutte, 431 F.2d at 25 (internal quotations and citation omitted).
“Assuming jurisdiction and proper venue, weight is given to plaintiff’s choice because it is
plaintiff’s choice and a strong showing under the statutory criteria in favor of another forum is
then required as a prerequisite to transfer.” Burroughs Wellcome Co. v. Giant Food, Inc.,
392 F. Supp. 761, 763 n.4 (D. Del. 1975).
Adobe argues that Wiremed’s choice of forum should be “entitled to minimal deference”
because it is a Texas limited liability company, with a principal place of business in Texas, and its
“only connection to Delaware is that it brought this litigation here.” (D.I. 12 at 7-8). This Court
has previously noted that it is “‘difficult to understand why the plaintiff’s forum choice in and of
itself merits less weight when the plaintiff has no ties to the selected forum or when the facts
underlying the controversy occurred elsewhere’” and that “‘[n]either Shutte nor Jumara hold or
even intimate that a plaintiff’s motive in selecting its forum choice is relevant for § 1404(a)
purposes.’” ANI Pharm., Inc. v. Method Pharm., LLC, No. 17-1097 (MN), 2019 WL 176339, at
*8 (D. Del. Jan. 11, 2019) (quoting VLSI Tech. LLC, v. Intel Corp., No. 18-966 (CFC), 2018 WL
5342650, at *2, 5-6 (D. Del. Oct. 29, 2018)). Likewise, here, where Adobe has not challenged the
validity of venue or jurisdiction in Delaware, the Court is not convinced that Wiremed’s lack of a

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connection to Delaware should dictate that Wiremed’s forum choice should receive less deference.
Wiremed’s choice is entitled to paramount consideration.
2.

Defendant’s forum preference

This factor favors transfer. Adobe’s interest in having this case transferred to the Western
District of Washington is clear.
3.

Whether the claims arose elsewhere

This factor is neutral. Adobe contends this factor weighs in favor of transfer because the
accused product was designed and developed primarily in Adobe’s Seattle office. (See D.I. 12 at
8). This fact weighs in favor of transfer. See In re Hoffmann-La Roche, Inc., 587 F.3d 1333, 1338
(Fed. Cir. 2009); see also Smart Audio Techs., LLC v. Apple, Inc., 910 F. Supp. 2d 718, 730
(D. Del. 2012) (“[T]o some extent, [infringement] claims ar[i]se where the allegedly infringing
products [a]re designed and manufactured.” (quotation marks and citation omitted) (alterations in
original)). But design and development of the accused product also occurred in California and
Minnesota, where other members of Adobe’s Character Animator team are based. (See D.I. 13
¶ 5). Therefore, the claims also arose in California and Minnesota.
Moreover, patent claims arise wherever alleged infringement has occurred. Treehouse
Avatar LLC v. Valve Corp., 170 F. Supp. 3d 706, 710 (D. Del. 2016) (citing 35 U.S.C. § 271(a);
Red Wing Show Co., Inc. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (Fed. Cir. 1998)).
Because Wiremed has accused Adobe of patent infringement throughout the United States,
including Delaware (D.I. 1 ¶¶ 28, 42), it could be said that Wiremed’s claims also arose in
Delaware. Thus, this factor is neutral.

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4.

Convenience of the parties as indicated by their relative physical
and financial condition

This factor weighs slightly against transfer. Adobe argues that “[t]ransferring this case to
the Western District of Washington would significantly reduce the logistical and operation costs
for Adobe.” (D.I. 12 at 9). Adobe’s size, financial resources, and status as a Delaware corporation,
however, negate any assertion that it is actually inconvenienced by having to litigate in Delaware.
As a Delaware corporation with global operations, Adobe can demonstrate “inconvenience”
pursuant to § 1404(a) only if it can “prove that litigating in Delaware would impose a unique or
unusual burden on [its] operations.” Graphics Props. Holdings Inc. v. Asus Comput. Int’l, Inc.,
964 F. Supp. 2d 320, 325 (D. Del. 2013) (internal quotation marks and citation omitted) (alteration
in original); see also Universal Secure Registry, LLC v. Apple, Inc., No. 17-585 (CFC) (SRF),
2018 WL 4502062, at *3 (D. Del. Sept. 19, 2018) (“When a party accept[s] the benefits of
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” (internal quotation marks and citation omitted) (alteration in original)).
Here, Adobe has not identified any significant inconvenience – let alone a unique or
unusual burden – that it would incur as a party to litigation in this Court. Although Adobe asserts
that if the case stays in Delaware, “Adobe and its witnesses would bear significant additional costs,
burdens and disruptions associated with flying across the country . . . and being separated from
families and work responsibilities for days or weeks on end” for trial (D.I. 12 at 10), the Court is
not convinced that this would amount to a unique or unusual burden, given Adobe’s size and the
ability of its party witnesses to work remotely if need be.
As for Wiremed, Adobe contends that “transferring this case would have little, if any,
impact on Wiremed’s logistical and operational costs” because it is located in Texas and will have

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to travel regardless of where the case is litigated. (Id.). The Court disagrees. Wiremed “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.” Tessera, Inc. v. Sony Elecs. Inc., No. 10-838
(RMB) (KW), 2012 WL 1107706, at *4 (D. Del. Mar. 30, 2012). Moreover, although the Court
is unable to determine the exact size of Wiremed from the record, it is able to discern that it is
much smaller than Adobe. (D.I. 12 at 1; D.I. 18 at 12). Therefore, in balancing the convenience
of litigating in the Western District of Washington for Adobe with (1) Adobe’s status a Delaware
corporation with a global presence, and (2) the convenience of litigating in the District of Delaware
for Wiremed and its status as a small company, this factor weighs against transfer. But, given the
fact that Wiremed will have to travel regardless of where this case is litigated, this factor will be
given only slight weight.
5.

Convenience of the witnesses

This factor slightly favors transfer. This factor carries weight “only to the extent that the
witnesses may actually be unavailable for trial in one of the fora.” Jumara, 55 F.3d at 879; see also
VLSI, 2018 WL 5342650, at *7 (citing Smart Audio, 910 F. Supp. 2d at 732 (noting that this factor
applies only insofar as “a witness actually will refuse to testify absent a subpoena”)). Moreover,
“witnesses who are employed by a party carry no weight,” because “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).
Here, Adobe identifies several third-party witnesses located in Seattle, Washington.
(D.I. 12 at 11-12). Of these witnesses, two are the named inventors of the patents-in-suit. (Id. at
11 (citing D.I. 13 ¶¶ 9-13, Exs. 8-12)). A third witness is the founder and CEO of Onadime, Inc.,
the original assignee of the patents-in-suit. (Id. at 11 (citing D.I. 13 ¶¶ 11, 19-20, Exs. 18-19)).

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The patents-in-suit’s prosecuting attorneys are also near or in Seattle. (Id. at 12 (citing D.I. 13 ¶¶
14-17, Exs. 13-16)). Given that Wiremed pleaded in its Complaint that Onadime, Inc.’s product
“‘implemented the method’ claimed in the patents,” Adobe asserts that “[t]estimony from [these]
individuals [] should bear on validity, prior art, damages, marking, and sundry other patent-specific
issues.” (D.I. 21 at 7).
Although nothing in Adobe’s papers or submitted declarations suggests that these thirdparty witnesses would not be willing to testify at trial, because neither party has identified any
third-party witnesses in Delaware and Adobe has identified why it would want to call these
witnesses at trial, this factor favors transfer, albeit only slightly.
6.

Location of books and records

This factor is neutral. Jumara instructs the Court to give weight to the location of books
and records necessary to the case only “to the extent that the files [and other evidence] could not
be produced in the alternative forum.” Jumara, 55 F.3d at 879. Here, although Adobe argues that
“most records and documents related to the design and development of [the accused product]” are
located in its Seattle office (D.I. 12 at 12), it has not identified any evidence that could not be
produced in this district. Nor has Adobe offered any showing that any “documentary evidence
relevant to this action is found exclusively” in the Western District of Washington. See VLSI, 2018
WL 5342650, at *7. Therefore, this factor is neutral.
7.

Enforceability of the judgment

This factor is neutral, as judgments from this district and the Western District of
Washington would be equally enforceable.

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8.

Practical considerations

This factor is neutral. The Court must consider “practical considerations that could make
the trial easy, expeditious, or inexpensive.” Jumara, 55 F.3d at 879. Here, Adobe argues that
“transferring this case [] would make trial far easier and far less expensive, given the overwhelming
nexus of both party and non-party witnesses, events, and sources of proof in the Seattle area.”
(D.I. 12 at 14). Wiremed responds that transfer will “significantly increase[] [the] cost of the case”
for parties and witnesses outside of Seattle because “Seattle is substantially more expensive than
Wilmington” in terms of meals and lodging. (D.I. 18 at 14). Because both parties’ contentions
“have been raised, in [some] way, as to other Jumara factors, [] the Court will not double-count
them here.” Elm 3DS Innovations LLC v. SK Hynix Inc., No. 14-1432 (LPS) (CJB), 2015 WL
4967139, at *11 (D. Del. Aug. 20, 2015). Therefore, given that there is no broader public benefit
to this case proceeding in this Court versus the Western District of Washington, this factor is
neutral. W.R. Berkley Corp. v. Niemela, No. 17-32 (GMS), 2017 WL 4081871, at *4 (D. Del.
Sept. 15, 2017) (finding factor to be neutral when “neither party addresse[d] the broader public
costs of proceeding in one district or the other”).
9.

Relative administrative difficulty due to court congestion

This factor weighs slightly in favor of transfer. The Court takes judicial notice of the most
recent Judicial Caseload Profiles, 2 as of December 31, 2018, which indicate that the median length
of time between filing and trial for civil cases is 28.7 months in the District of Delaware and 19.4
months in the Western District of Washington. The December 31, 2018 profile also indicates that
District of Delaware has a higher amount of pending cases per judgeship (596 cases) and

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The December 2018 statistics for the District Courts of the United States can be found at:
https://www.uscourts.gov/sites/default/files/fcms_na_distprofile1231.2018.pdf.
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percentage of civil cases over three (3) years old (9.6%) than the Western District of Washington
(431 cases and 3.7%, respectively).
Although “[t]his District’s large caseload has not, in the past, been a sufficient justification
for transfer[,] . . . increased times from filing to . . . trial [is an] important factor[] that do[es]
influence the court’s calculus.” W.R. Berkley, 2017 WL 4081871, at *5 (citing Intellectual
Ventures I LLC v. Altera Corp., 842 F. Supp. 2d 744, 759-60 (D. Del. 2012)). Because there is a
difference of nine months between the two districts’ time between filing and trial, this factor
weighs slightly in favor of transfer. See Textron Innovations, Inc. v. Toro Co., No. 05-486 (GMS),
2005 WL 2620196, at *3 (D. Del. Oct. 14, 2005) (“[T]he court is not persuaded that any disparity
in court congestion, to the extent there is any, will be so great as to weigh strongly in favor of a
transfer.” (emphasis added)).
10.

Local interest in deciding local controversies at home

This factor is neutral. First, “[p]atent issues do not give rise to a local controversy or
implicate local interests.” TriStata Tech., Inc. v. Emulgen Labs., Inc., 537 F. Supp. 2d 635, 643
(D. Del. 2008). Second, Adobe, a multinational company with thousands of employees worldwide,
is not a “local” company in the Western District of Washington. Moreover, its dispute with
Wiremed, which does not reside in Washington, is not a “local controversy” in the Western
District. See Rosebud LMS, Inc. v. Salesforce.com, Inc., No. 17-1712 (CFC), 2018 WL 6061343,
at *7 (D. Del. Nov. 20, 2018) (finding a local controversy did not exist in the proposed transferee
district when both parties did not reside there). Thus, this factor is neutral.
11.

Public policies of the fora

The parties agree that this factor is neutral. (D.I. 12 at 16; D.I. 18 at 14).

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12.

Familiarity of the trial judge with the applicable state law in
diversity cases

Wiremed’s claims arise under federal patent laws. Therefore, the familiarity of the
respective districts with state law is not applicable and this factor is neutral.
13.

Balancing the private and public factors

A balancing of the twelve Jumara factors advises the Court that this case should not be
transferred to the Western District of Washington. Seven factors are neutral, two factors weigh
against transfer, and three factors weigh in favor of transfer. Looking at the factors as a whole
and treating Wiremed’s choice of this forum as a paramount consideration, Adobe has failed to
meet its heavy burden of showing that the Jumara factors weigh strongly in favor of transfer.
IV.

CONCLUSION
For the foregoing reasons, the Court denies Adobe’s motion to transfer the case to the

United States District Court for the Western District of Washington pursuant to 28 U.S.C.
§ 1404(a). An appropriate order will issue.

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