NanoEn Tek, Inc. et al v. Bio-Rad Laboratories, Inc.
Filing
40
MEMORANDUM OPINION AND TRANSFER ORDER that the defendant's Motion to Transfer Venue is GRANTED, and this case is TRANSFERRED to the Northern District of California; directing the Clerk to send a copy of this Memorandum Opinion and Transfer Order to counsel for the parties and the Clerk of the Northern District of California, and to effect the transfer forthwith. Signed by District Judge Rebecca Beach Smith and filed on 12/2/2011. (rsim)
FILED
UNITED
STATES DISTRICT
EASTERN DISTRICT
COURT
OF VIRGINIA
DEC -2 2011
Norfolk Division
Ci LHK V S O:v-5T-VIG1 COURT
NANOENTEK,
INC.
DI6ITAL-BI0
r.-'-.:"-O: K. VA
and
TECHNOLOGY
CO.,
LTD.,
Plaintiffs,
CIVIL NO.
v.
BIO-RAD
LABORATORIES,
2:llcv427
INC.,
Defendant.
MEMORANDUM OPINION AND
This
is
NanoEnTek,
a
patent
Inc.
and
"Digital-Bio")
Motion
United
to
is
This
Transfer
States
California
District
("Motion").
comes
The
to
for
defendant's
(collectively
court
U.S.C.
the
plaintiffs
Laboratories,
the
28
by
Ltd.
Bio-Rad
before
Pursuant
Court
filed
Technology,
defendant
Venue
action
§
on
to
Bio-Rad's
1404 (a)
to
the
District
Northern
Motion
Inc.
of
Transfer
Venue
GRANTED.
Procedural
On
alleges
7,842,157
Factual
and Procedural
History
History
August
infringement
Bio
Digital-Bio
matter
I.
A.
infringement
against
("Bio-Rad").
TRANSFER ORDER
2,
action
that
(the
2011,
against
Bio-Rad
"'157
has
Digital-Bio
Bio-Rad.
been
Patent"),
In
filed
its
infringing
entitled
a
this
patent
complaint,
Digital
U.S.
Patent
"Method
for
Number
Bonding
Plastic
of
the
Micro
'157
using
a
Chips,"
Patent,
product
United
using
the
process
and by making,
which
States.
Specifically,
by
is
See
the
made
offering
by
a
Complaint
complaint
of
one
to
sell,
process
SIU
10,
alleges
that
or more
claims
selling,
patented
16,
the
in
the
No.
ECF
*157
or
1.
Patent
is
infringed in the process of making products including the "TC10™
Automated Cell Counter" and "TC10™ Counting Slides."
The
*157
and
NanoEnTek,
Inc.
Id.
SISI
10-12.
On
seeking
transfer
Motion,
On
to
Patent
November
the
November
23,
November
November
30,
the
Digital-Bio
exclusive
to
on
2011,
the
Northern
filed
a
2011.
14,
motion
2011,
which
and
the
The matter
is
District
a
patent.
the
instant
of
response
California.
in
Bio-Rad
leave
to
the
Ltd.,
the
filed
file
opposition
filed
a
its
surreply
court
granted
on
its
surreply
on
filed
defendant
now
of
Co.,
2011,
for
Digital-Bio
2011,
Bio-Rad
filed
November
Technology
licensee
24,
Digital-Bio
and
2011.
by
October
16,
28,
ripe
for
responded
on
review.
Relevant Facts
NanoEnTek,
under
the
place
of
Bio
is
Digital-Bio
November
B.
owned
2011,
Motion,
reply.
on
7,
is
3^ f 16.
laws
Inc.
of
business
Technology
Co.,
is
the
a
Republic
located
Ltd.
publicly-traded
in
is
a
of
Seoul,
Korea,
Korea.
subsidiary
of
company
with
Id.
organized
its
SI
principal
5.
Digital-
NanoEnTek,
Inc.,
and
is
a
corporation
Korea,
with
Seoul.
Id.
its
f
incorporated
in
Transfer
6.
Venue,
part
by
place
of
is
Delaware
Ex.
1
H
3,
infringing
third
party
in
Point
Richmond,
ECF
the
interest
action
been
of
to
any
other
brought."
grant
a
motion
following
been
two
brought
interest
justify
28
of
to
transfer
Supp.
2d
731,
Int'l,
Inc.,
250
to
735
F.
11-2
§
or
traded
in
id.
corporation
Supp.
place
of
Decl.").
is
1
Mot.
of
to
Bio-
performed
which
in
is
11.
this
whether
630
where
it
civil
might
and
conduct
might
(2)
whether
Inc.
(quoting
Va.
have
whether
must
the parties
(E.D.
the
claims
the
Tax,
in
any
deciding
court
forum;
2007)
627,
transfer
In
JTH
Va.
may
1404(a).
"Ml)
witnesses,
division
venue,
2d
in
and
court
forum.'"
Supp.
located
Engineering,
See
of
(E.D.
also
process
Grant
convenience
that
of
("Hutton
parties
transferee
and
Republic
Analysis
of
U.S.C.
the
principal
Mem.
California.
transfer
justice
No.
district
the
its
See
district
inquiries:
in
with
manufacturer,
a
of
business
manufacturing
convenience
justice,
laws
publically
law,
II.
"For
a
California.
a
located
the
Bio-Rad
Hercules,
allegedly
under
principal
under
business
Rad's
organized
the
have
the
and witnesses
v.
Koh
to
Lee,
v.
2003)).
482
F.
Microtek
A.
The Northern District of California
The
have
court
been
Pursuant
to
resides.
28
When
judicial
1391(c);
1996
WL
at
is
Hoffman
Hercules,
Pacas
v.
*1
(4th
venue
at
Decl.
11
363
which
is
within
before
3.
Thus,
as
Northern
District
defendant"
to
28
the
Northern
patent
U.S.C.
subject
have
of
resides
filed
of
court
personal
this
action.
(I960).
is
located
in
District
Northern
of
of
this
jurisdiction
brought
this
California
for
415,
table
the
to
commencement
personal
F.3d
District
action,
business
the
83
"in
personal
(unpublished
343-44
since
The
resides
commenced."
was
been
district.
it
defendant
1996)
of
could
the
patent
Inc.,
this
335,
for
subject
Digital-Bio
place
unquestionably
the
time
U.S.
Digital-Bio
where
for
action
where
might
California.
Farms,
whether
Bio-Rad
the
is
Cir.
determine
principal
See
is
Showell
to
has
it
action
of
corporation,
action
Blaski,
and
a
which
whether
California,
district
is
civil
district
the
California,
Hutton
in
any
this
District
a
time
at
there
Bio-Rad's
in
proper
a
v.
1400(b),
defendant
also
determine
jurisdiction
See
§
a Proper Venue
whether
Northern
brought
the
Thus,
determine
the
district
192058,
California
must
be
the
see
decision).
in
U.S.C.
may
jurisdiction
§
first
brought
infringement
any
must
Is
is
purposes
suit
a
of
suit.
exists,
in
that
"judicial
28
U.S.C.
§
1400(b),
U.S.C.
B.
§
so
1404(a),
a
there.
In
venue
to
following
F.
of
See,
2d
there
justice
Laser
Sys.,
(E.D.
Va.
Inc.
pursuant
to
28
so dictate.
2000),
in
Elecs.
Co.,
Ltd.
2005).
entitled
to
plaintiff's
no
F.
(E.D.
of
but
the
to
2d
to
there
grant
a
of
the
685,
of
and
Inc.
motion
decide
this
action
considers
venue;
(3)
v.
is
chosen
386
117
a
the
(2)
the
the
interest
Micromuse,
and
chosen
if
the
forum.
F.
the
(E.D.
Va.
court,
Supp.
See,
Supp.
choice
chosen
cause
forum."
F.
transfer
Inc.,
of
Lycos,
2007)
2d
see
that
708,
a
action
v.
(citing
case
724
is
517
Samsung
forum
forum
is
Beam
515,
e.g.,
of
Inc.
venue
2d
presumption
plaintiff's
weight
to
district
Inc.,
Inc.,
"the
692
court
choice
the
normally
Rambus,
forum,'
next
Forum
plaintiff's
v.
must
California
2004).
Commc'ns,
substantial
'home
Va.
discretion
However,
relation
Supp.
326
the
Techs.,
of
transfer
witnesses;
Agilent
Cox
court
to
plaintiff's
and
District
the
determination,
whether
v.
Northern
discretion
the
Choice
sound
stay
its
parties
322,
should
action,
e.g.,
decision
the
this
(1)
the
Plaintiff's
within
499
transferred
the
this
factors:
Supp.
The
or
be
that
for
making
justice.
1.
Va.
now
convenience and
exercise
convenience
316
if
determined
proper
whether
of
may
Transfer is Warranted
Having
is
venue
(E.D.
is
not
not
the
bears
TiVo,
little
Inc.,
Telepharmacy
Solutions,
(E.D.
Inc.
Va.
entitled
argues
to
with
contacts
Supp.
of
agrees.
to
court
is
not
are
Digital-Bio
witnesses
4,
detail
that
No.
its
2d
741,
743
13.
The
sales
deference
is
arisen
a
plaintiffs'
even
to
in
its
less
of
the
choices
of
venue
because
the
assumption
becomes
"much
less
235,
255-56
ties
through
See
that
choice
(1981).
because
as
such
but
chosen
ties
forum
Aircraft
only
in
the
expert
to
a
Def.'s
party
Expert
given
both
necessary
entitle
Further
generally
Piper
it
of
operations.
Opp'n
venue.
court
District
distributor
from
itself.
reasonable."
The
Virginia,
finds
of
the
to
Pis.'
hardly
far
are
11.
Virginia-based
forum
suit
Mem.
Virginia
a
of
instructive,
result
Virginia."
forum,'
no
"are
other
Eastern
case.
a
of
not
or
the
with
court
personnel
No.
'home
is
plaintiffs
ECF
significant
this
the
forum
1,
retention
to
of
that
notes
products
the
product
retention
as
of
Venue
companies
has
relation
ECF
U.S.
Supp.
choice
District
plaintiffs'
it
and
in
substantial
454
F.
facilities,
Eastern
Transfer
Korean
sale
Commonwealth
Mot.
238
because
known
initially
claims
the
weight
the
the
plaintiffs
cites
Corp.,
Digital-Bio's
no
with
Mot.
The
Virginia
that
substantial
companies
relevant
in
Pickpoint
2003)) .
Bio-Rad
Korean
v.
to
witness
have
still,
to
only
foreign
less
deference,
is
convenient
Co.
v.
Reyno,
Despite
of
Digital-Bio's
Virginia,
plaintiffs'
action
the
a
of
would
forum
substantial
fails
claim that
court
choice
had
court
the
minimal
to
substantial
to
sufficient
significant
is
that
infringement
including
which
of
the
production
forms
'157
of
the
the
Eastern
necessarily
weight
this
if
in
its
give
the
the
cause
of
However,
Digital-Bio's
connections
Instead,
of
District
District.
business
basis
Patent
the
connections.
forum does not inform this inquiry.1
conduct
to
still
relation
find
Bio-Rad has
ties
with the
Bio-Rad's relevant
this
suit:
methods
"TC10™ Automated
of
Cell
its
alleged
production,
Counter"
and
"TC10™ Counting Slides."
The
products
parties
could
determination
assessment
of
disagree
potentially
of
that
transfer.
that
such
sales
true,
that
such
sales
1
Digital-Bio's states
whether
infringe
issue,
assertion
and
about
the
however,
Even
Bio-Rad is
this
the
dispositive of,
defendant's
general
such
alter
Surreply,
ties
or carry great weight in,
ECF No.
39.
the
Digital-Bio's
infringement
District,
they
is
do
to
See Pis.' Opp'n to
for jurisdictional
the
forum
are
the venue analysis.
2 See Pis.' Mem. of Surreply, ECF No. 32; Def.'s Opp'n Mem. to
Pis.'
The
registered to do business in
Virginia and does significant business here.
Def.'s Mot. 4-5, ECF No. 13.
While relevant
purposes,
not
that
of
of
Patent.2
does
acts
within
sale
'157
assuming
constitute
occur
the
not
not
is
rise
not
to the
level
of
a
strong
relation with
this
forum.
It
sufficient that:
Virginia's
residents
purchase
and
use
allegedly
infringing products,
methods,
and systems
from the
defendants.
[T]he defendants likely have this same
contact with every other state in the nation.
It is
well-settled that the mere existence of limited sales
activity within Virginia does not require this court
to give the plaintiff's choice of forum substantial
weight
when
balancing
the
convenience
and
justice
factors.
Lycos,
499
great
pains
not
just
Mot.
in
Mere
but
ECF
at
as
that
No.
13;
and
well
of
is
See
Hutton
Digital-Bio
a
large
Pis.'
Decl.
[Bio-Rad's]
development,
as
of
sales.
Conversely,
14
total
to
the
'157
California.
patent
See
with
Def.'s
("[O]nly
a
customers
are
for
finance
are
Hutton
to
responsible
"personnel
marketing,
company
Opp'n
f
goes
and
the accused manufacturing process
infringed
District
Indeed,
Bio-Rad
cf_;_
percentage
research
692.
global
Virginia.").
allegedly
Northern
2d
emphasize
small
activity,"
that
to
4,
relatively
product
Supp.
national
Part
based
F.
located
Decl.
flfl
legal
itself,
in
the
6,
11.
sales and marketing activity does not entitle Digital-Bio's
choice
of
forum
to
substantial
weight
when
none
of
the
infringing products were developed or produced in this District.
See
322,
Agilent
327
Techs.,
(E.D.
Va.
Inc.
2004).
v.
Micromuse,
The
court
Inc.,
316
therefore
F.
finds
Supp.
2d
that
the
cause
of
Eastern
action
in
this
case
bears
these
reasons,
the
court
Digital-Bio's choice of forum.
635
and
("Thus,
to
the
this
judicial
venue
more
Adtech,
Inc.,
See,
district,
chosen
with
gives
only
e.g.,
slight
Koh,
weight
to
Supp.
2d
250 F.
if there is little connection between the claims
plaintiff's
the
relation
District of Virginia.
For
at
little
129
plaintiff's
forum
that
and
would
weigh
in
militate
favor
substantial
contacts.");
F.
936,
Supp.
choice
2d
of
forum
939
because the defendant's sales were not
transfer
Acterna,
(E.D.
only
of
against
Va.
a
to
L.L.C.
a
v.
(giving
slight
"very
2001)
weight"
"unique to Virginia"
less than ten percent of total sales occurred here).
and
The court
will focus on the remaining factors in determining the propriety
of
transfer.
2.
Convenience of Parties and Witnesses
Bio-Rad
parties
to
Supp.
to
the
of Mot.
argument,
that
access
and
transfer
argues
Northern
"[t]he
sources
to Transfer Venue 6,
the
"court
witnesses,
process.'"
of
District
considers
access to sources of proof,
of
factors
Lycos,
and
499
proof
of
convenience
overwhelmingly
California."
ECF No.
factors
of
11.
such
the
favor
See Mem.
in
m weighing this
as
the
'ease
of
the cost of obtaining the attendance
the
F.
of
availability
Supp.
2d
at
693
of
compulsory
(quoting
Samsung
Elecs.
Va.
Co.
v.
Rambus,
the
"center
outset,
of
the
infringing
since
the
a
the
claim
for
placing
the
708,
l:09cv47,
2009
May
4,
see
2009);
Supp.
that
Inc.
2d
v.
517,
6,
11.
reside
in
District
this
case.
or
also
the
717
Dist.
GTE
n.13
(E.D.
the
non-party
Eastern
3 The convenience of counsel
Supp.
The
2d
court
discussed
689,
698
does
infra
Imaging
(E.D.
not
Part
the
Sys.
Va.
&
37797,
Inc.
are
of
the
v.
no
Va.
Inc.,
71
reflects
disputed
Hutton
Decl.
evidence,
party
alleged
to
currently
The
of
described as
factors
is not
record
See
or
Inc.,
(E.D.
other
"center
sale
of
commerce."
*4
Virginia.
the
of
Qualcomm,
and
that
making
Nutrition,
at
v.
Here,
notes
the
stream
in California.
clearly
convenience
an
Supplements
designation has been
the
Cognitronics
into
witnesses
is
particularly
infringing
testing,
District
the
upon
1999).
court
the
where
"typically
is
for
Wireless,
occurred
cases
arises
LEXIS
Va.
patent
manufactured,
need
product
(E.D.
California
of
or
infringement
U.S.
contrast,
This
an analysis
designed
Bio-Engineered
activity
the
of
is
development,
In
witnesses,4
which
without
519
design,
manufacturing
for
accused
No
4
2d
forum
was
product,
Labs.,
F.
Supp.
preferred
patent
USA
See
F.
activity,"
accused
product
accused
even
S1SI
386
2005)).3
At
F.
Inc.,
Northern
activity"
shorthand
laid out below.
See
in
for
Koh,
relevant to this analysis.
Recognition
Research
Inc.,
83
2000).
overlook
Digital-Bio's
II.B.2.b.
10
expert
witnesses,
250
F.
Supp.
various
2d
at
638.
"center
components
of
of
activity"
the
most
the
first
alleged
of
the
Transfer
to
Venue
6,
ECF
the
District
Northern
Digital-Bio
that this
does
changes
to
the
identical
this
end
to,
considers
result
and
the
of
the
perhaps
evidence,
more
posits
that
Bio-Rad
case,
will
See
11.
from
it
Mem.
contest
in
likely
Supp.
potentially
principal
its
place
this
See
of
Hutton
assertion,
but
to
factor
because
dispute
to
Mot.
that
the
11,
ECF
have
No.
of the
this
Northern
13.
lessened
relevant
business
Decl.
instead
speeds
District
justice
that
for
711
in
always
Fthe
of
do
Imaging
docket
declining
not
conditions
to
transfer
tell
Supp.
2d
Eastern
strongly
the
at
643
a
favor
case.
19
F.
not
case) .
story.
(comparing
of
Taken
83
should
whole
District
California).
not
13.
consideration"
result in a transfer of venue."
see
of
Virginia
together,
transfer
or
be
the
Docket
2d at
at
699
primary
statistics
See
Convergence
patent
litigation
to
the
the
Northern
interests
retention
of
of
this
III.
Digital-Bio's
substantial
not
its
the
instant
this
file
250
California.
retention
of
F.
California,
this
this
as
at
of
is
has
The
this
does
not
factors
at
entitled
of
this
transfer
whole,
the
Virginia
District,
impede
The
to
that
and
Digital-
if the
another
forum.
Northern
factors
District
factor
considerations,
See
is
transfer,
to
only
to
relation to
convenience
the
the
docket
fact
point
635.
transfer.
of
favoring
which
Cognitronics
are
Imaging
699.
transfer
which
a
to
case
Opinion
the
stronger
defendant's
California.
Memorandum
court
a
case
2d
to
circumstances,
2d
prevent
Supp.
not
District
connection
justice
favor
this
no
is
not have more than a minimal
Supp.
in
to
and
of
has
such
and
F.
appropriate.
District
it
in
Accordingly,
GRANTED,
Eastern
Taken
insufficient
83
the
Under
uniformly weigh
Sys.,
because
convenience
Koh,
forum
action does
Bio chose to
See
of
forum,
District.
other
choice
weight
home
Conclusion
connection
Motion
is
hereby
The
Clerk
and
to
is
this
to
to
to
is
Venue
is
the
send
of
case,
Transfer
DIRECTED
Order
District
with
TRANSFERRED
Transfer
20
Northern
Northern
a
counsel
copy of
for
the
parties
and the Clerk of
and to effect the
IT
IS
the Northern
transfer
District of California,
forthwith.
SO ORDERED,
1st
Rebecca Beach Smith
United States District Judge
REBECCA
UNITED
Norfolk,
December
Virginia
£>
,
2011
21
BEACH
STATES
SMITH
DISTRICT
JUDGE
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