Global Innovation Technology Holdings, LLC et al v. Acer America Corp. et al

Filing 179

ORDER TRANSFERRING CASE. Signed by Chief Judge Federico A. Moreno on 6/18/2009. (jr)

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA Miami Division Case Number: 09-20127-CIV-MORENO GLOBAL INNOVATION HOLDINGS, LLC, et al., Plaintiff,
VS.

TECHNOLOGY

ACER AMERICA CORP., et al., Defendants.
1

CIVIL W ( E J

ORDER TRANSFERRING TO EASTERN DISTRICT OF TEXAS THIS CASE (i.e., the "Florida Action") was referred to the Honorable William C. Turnoff, United States Magistrate Judge for all pretrial matters. That referral encompassed a Report and Recommendation on Defendant Asus Computer International's Motion to Transfer Venue to the Eastern District of Texas (D.E. 87), filed on April 7,2009. Judge Turnoff filed a Report and No. No. Recommendation (D.E. 170) on June 2,2009. IPAT, one of the two Plaintiffs here, had earlier filed in the Eastern District of Texas a suit alleging violation of the exact same patents implicated in this case, but against different defendants (i.e., the "Texas Action"). Prior to Judge Turnoffs Report and Recommendation, Magistrate Judge Everingham of the Eastern District of Texas had sua

sponte recommended transfer of the Texas Action to this Court.

Judge Turnoff therefore

recommended that the Court deny the Motion to Transfer at this time. For the reasons set forth below, the Court AFFIRMS Judge Turnoffs finding of substantial overlap between the two cases, but VACATES his recommendation to deny the motion to transfer. Following both Fifth Circuit and Eleventh Circuit law, the Court hereby TRANSFERS this case to the Eastern District of Texas.

BACKGROUND This Case involves patent infringement allegations under 35 U.S.C. 5 1 et seq. The Plaintiffs, Global Innovation Technology Holdings, LLC ("Global") and Information Protection and Authentication of Texas, LLC ("IPAT"), filed a Complaint on January 16, 2009 against twelve defendant software manufacturers, alleging violation of United States Patent No. 5,3 11,591 ('"591 patents") and United States Patent No. 5,412,717 ('"717 patents"). One of those defendants, Asus Computer International, moved to transfer venue to the Eastern District of Texas, in view of the fact that on December 30,2008, IPAT had filed in that court a patent infringement suit against twentyone other software manufacturers, alleging infringement of the same two patents. On April 24,2009, Magistrate Judge Everingham sua sponte recommended transfer of the Texas Action to this Court. On June 9,2009, Chief Judge Folsom of the Eastern District of Texas vacated Magistrate Judge Everingham's Report and Recommendation, declined to transfer the Texas Action, and found that this Court "should have an opportunity to decide the issue of likelihood of substantial overlap independent of any action of [the Eastern District of Texas] regarding venue." Order, IPAT v Symantec Corp., United States District Court, Eastern District of Texas, 2:08CV484 at 4 (June 9,2009). Moreover, Chief Judge Folsom noted that both the Fifth Circuit and Eleventh Circuit strongly favor the forum of the first-filed suit where two actions involve overlapping issues and parties. Id., citing West GulfMaritime Ass 'n v. ILA Deep Sea Local, 75 1 F.2d 72 1,729 (5th Cir. 1985); Manuel v. Convergys Corp., 430 F.3d 1132, 1135 (1 lth Cir. 2005); Cadle Co. v. Whataburger ofAlice, Inc., 174 F.3d 599,605-06 (5th Cir. 1999); Mann Mfg., Inc. v. Hortex, Inc., 439 F.2d 403,407 (5th Cir. 1971).

ANALYSIS A district court may transfer any civil action to any other district court where it might have been originally filed, in view of the convenience of the parties and witnesses and in the interests of justice. 28 U.S.C. $1404(a). To obtain a transfer, a movant must show (1) the availability of an adequate alternative forum; (2) that public and private factors weigh in favor of transfer; and (3) that the plaintiff can reinstate the action in the alternative forum without undue inconvenience or prejudice. Leon v. Miller Air, Inc., 251 F.3d 1305, 1310-1 1 (1 lth Cir. 2001). A. Adequate Alternative Forum and Reinstatement of Plaintiffs Action Judge Turnoff correctly found that Asus satisfied the first and thir