MyKey Technology, Inc. v. Intelligent Computer Solutions, Inc.

Filing 31

MEMORANDUM. Signed by Judge J. Frederick Motz on 12/21/12. (apls, Deputy Clerk)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MARYLAND

MYKEY TECHNOLOGY, INC.

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v.
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INTELLIGENT COMPUTER SOLUTIONS *
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Civil No. – JFM-12-2719

MEMORANDUM

MyKey Technology, Inc. has instituted this action in the District of Maryland for patent
infringement. Defendant, Intelligent Computer Solutions, Inc. (“ICS”) has filed a motion to
transfer venue to the Central District of California or, in the alternative, to dismiss. The action
will be transferred to the Central District of California.
There is no question that this action could have been brought in the Central District of
California because that is the district in which ICS has its principal place of business. Therefore,
in determining whether to transfer the action, this court should consider (1) the weight accorded
to plaintiff’s choice of venue, (2) witness convenience and access, (3) convenience of the parties,
and (4) the interest of justice. D 2 Ltd. v. Blackboard, Inc., 671 F. Supp. 2d 768, 778 (D. Md.
2008). While two of these factors may be somewhat neutral, the other two weight heavily in
favor of transfer of the action. 1

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MyKey contends that ICS is not subject to personal jurisdiction in the Central District of
California. That fact, of course, is irrelevant because 28 U.S.C. §1404(a) does not require that a
plaintiff be subject to the personal jurisdiction in the district to which an action is transferred.
Rather, §1404(a) requires only that the district to which an action is transferred is only one where
the action “might have been brought.” 28 U.S.C. §1404(a). Whether or not MyKey is subject to
personal jurisdiction in the Central District of California is immaterial to the inquiry that
§1404(a) requires to be made. See F.T.C. v. Watson Pharm., Inc., 612 F. Supp. 2d 1081, 1090
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First, although the District of Maryland is MyKey’s choice of venue, that choice is not
entitled to significant weight in light of the fact that MyKey first sued ICS in the District of
Delaware. See Cronos Containers, Ltd. v. Amazon Lines, Ltd., 121 F. Supp. 2d 461, 465 (D. Md.
2000). MyKey argues that Cronos does not apply because MyKey itself sought to transfer the
Delaware action to the District of Maryland in light of the decision by the Federal Circuit in In re
Link_A_Media Devices Corp., 662 F.3d 1221, (Fed. Cir. 2011). That argument is unpersuasive.
In Link_A_Media the Federal Circuit held that the incorporation of a party is entitled to little
weight in its determination of whether venue will be maintained in the district chosen by the
plaintiff. However, the judge in Delaware to whom the Delaware action was assigned had
previously ruled on two occasions that Link_A_Media Devices Corp. is of limited precedential
value where other factors weigh in favor of plaintiff’s choice of Delaware as the appropriate
forum.2
Second, it appears that there are a number of third-party witnesses located in California
whom ICS intends to call upon to corroborate its defenses. This factor is “[o]ften cited as the
most important factor in passing on a motion to transfer under Section 1404(a) . . . .” 8 Charles
Allen Wright, Arthur R. Miller, & Edward H. Cooper, Federal Practice and Procedure, § 3851
(3d ed. 2008). The only third party identified by MyKey is Brian Ledell, a resident of Virginia,

(C.D. Cal. 2009) (citing 15 Charles Alan Wright, Arthur R. Miller & Edward H. Cooper, Federal
Practice and Procedure, § 3845 (3d ed. 2007).
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ICS argues that to accord weight to MyKey’s choice of Maryland “would be to reward MyKey
for attempting to switch judges and jurisdictions after testing the waters in Delaware for almost a
year.” ICS’s reply memo, at 9. While there may be merit to this argument, I do not rely upon it.
Conversely, MyKey argues that for this court to transfer this action to the Central District of
California would be to grant ICS as “second bite at the apple” in light of the fact that in opposing
MyKey’s motion to transfer this action to Maryland ICS filed its own motion to transfer the
action to the Central District of California. Fatal to this argument is the fact that ICS’s motion to
transfer was mooted by the fact that the Delaware court dismissed ICS from the case for lack of
personal jurisdiction in Delaware.
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who prosecuted the patent application for one of the three patents-in-suit. Assuming that MyKey
intends to call Ledell as a witness – a question on which his opposition memorandum is silent –
as opposed to merely seeking discovery from him, any inconvenience to Ledell (assuming that
he is willing to travel to the Central District of California to testify) is outweighed by the
inconvenience to the third-party witnesses residing in California.
Third, while litigating this action in California may be relatively inconvenient for
MyKey, that inconvenience is balanced by the inconvenience of litigating the action in Maryland
for ICS. In that connection, although convenience to counsel is not, of course, a factor listed in
§1404(a), it is noteworthy that MyKey’s primary counsel practices in California. This fact may
well minimize the inconvenience to MyKey that a transfer to the Central District of California
would entail.
Fourth, ICS has raised legitimate questions as to whether it is subject to personal
jurisdiction in Maryland. This court has previously held that the “interest of justice” factor set
forth in §1404(a) weighs against unnecessarily injecting a personal jurisdiction issue in a case
that might render all proceedings in the case nugatory if it is ultimately determined that the
defendant was not subject to personal jurisdiction in Maryland. See The Harry and Jeanette
Weinberg Foundation Inc. v. ANB Investment Management and Trust Co., 966 F. Supp. 389 (D.
Md. 1997); Joseph M. Coleman & Assocs. Ltd. v. Colonial Metals, 887 F. Supp. 116, 120 (D.
Md. 1995). I believe that my reasoning in these prior cases is sound. “Therefore, the interest of
justice” factor weighs in favor of the transfer of this action to the Central District of California.

Date: December 21, 2012

____/s/________________________
J. Frederick Motz
United States District Judge
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