Virginia Innovation Sciences, Inc. v. Samsung Electronics Co., LTD. et al

Filing 58

OPINION AND ORDER - The Court DENIES Defendants' Motion to Transfer Venue and further DENIES Defendants' alternative request for limited, venue-related discovery. IT IS SO ORDERED. Signed by District Judge Mark S. Davis and filed on 3/6/13. Copies distributed to all parties 3/6/13.(ldab, )

UNITED

STATES DISTRICT

COURT

EASTERN DISTRICT OF VIRGINIA

Norfolk Division

VIRGINIA INNOVATION

SCIENCES,

INC.,

Plaintiff,
Case No.:

2:12cv548

SAMSUNG ELECTRONICS CO.,
LTD.,

ET AL.,
Defendants.

OPINION AND ORDER

This

matter

Electronics Co.,
("SEA"),

LTD

and Samsung

(collectively

United

is

before
("SEC"),

to

U.S.C.

Motion

Court
§

for

to

set

forth

1404(a)

herein,

Defendants

Samsung

and

LLC's

("STA")

Transfer

Venue

to

of New

alternative

ECF Nos.

Defendants'

Inc.

America,

the District

limited discovery concerning venue.
reasons

on

Samsung Electronics America,

"Defendants")

28

Court

Telecommunications

States District

pursuant

the

motion

the

Jersey,

request

29-30.

for
the

transfer

to

For

and

request for venue-related discovery are DENIED.
I.

FACTUAL AND PROCEDURAL HISTORY

Plaintiff Virginia Innovation Sciences,

Inc.

("VIS")

filed

the instant action against Defendants in the Alexandria Division
of

this District on October 4,

infringing

("the

'492

several

2012.

VIS

U.S.

of

VIS's

patents:

patent"),

U.S.

Patent

No.

accuses Defendants

Patent

No.

8,050,711

of

7,8 99,492

("the

'711

patent"),
Patent

U.S.

No.

7,957,733

Patent

8,224,381
("the

*733

apparatus

wireless

("the

'381

("the

l268

patent"),

and

U.S.

patent"),

U.S.

Patent

for

displaying

networks"

communications

ECF No. l, Exs. A-F.

multimedia

and

with

No.

No.

8,135,398

systems,

information

"methods

different

U.S.

Patent

These patents describe "methods,

connection

multimedia

8,145,268

patent"),

("the '398 patent").
and

No.

and

user

from

apparatus

for

terminals."

See

VIS alleges that Defendants have infringed

its patents by making, using, offering for sale, selling, and/or

importing

a

smartphones,
filing

of

wide

range

tablets,
the

of

Blue-ray

Complaint

in

accused
players,

the

products,
and

Alexandria

including

hubs.

After

Division

the

of

this

Court, the action was subsequently transferred to this Division,
pursuant to District policy concerning the rotation of certain
cases.

VIS is a Virginia corporation with its principal place of

business in Arlington, Virginia.

SEC is a corporation organized

under

with

the

business

laws
in

of

Korea

principal place of business in Ridgefield Park, New Jersey.1

STA

1

The

Complaint

identifies

subsidiary

SEA's principal

SEA

of

place

is

a

of

its

owned

Korea.

place

with

wholly

of

principal

York

and

Republic

its

New

corporation

Seoul,

South

SEC

of business as

Washington, District of Columbia, but SEA denies this allegation and
instead represents that its principal place of business is in New
Jersey.

See ECF No.

28.

is

a

Delaware

corporation and

wholly

owned

subsidiary of

SEC

with its principal place of business in Richardson, Texas.
On January 14,

2013,

Defendants filed the instant Motion to

Transfer Venue to the District of New Jersey.
their

memorandum

alternatively

question

of

seek

in

support

leave

venue.

to

ECF

memorandum on January 28,

of

such

conduct

No.

30.

2013.

ECF No.

reply memorandum on January 31, 2013.
19,

2013,

heard oral

this

Court

argument

conducted a

on

the

request for limited discovery.

41.

to

29.

its

In

Defendants

discovery

filed

on

the

opposition

Defendants filed a

ECF No. 46.

status

motion

motion,

limited

VIS

ECF No.

On February

conference at which it

transfer and

alternative

The Court took the matter under

advisement and now issues its findings as set forth below.
II.

LEGAL STANDARD

Title 28, United States Code, Section 1404(a) provides that
"[f]or

the

convenience

interest of justice,
action

of

the

parties

and

witnesses,

in

the

a district court may transfer any civil

to any other district

or division where

it might

have

been brought or to any district or division to which all parties
have

consented."

28

U.S.C.

§

1404(a).

Section

1404(a)

"is

intended to place discretion in the district court to adjudicate
motions for transfer according to an

'individualized,

case consideration of convenience and fairness.'"
Inc. v. Ricoh, Inc., 487 U.S. 22, 29 (1988)

case-by-

Steward Org.,

(citing Van Dusen v.

Barrack,

376

U.S.

612,

622

(1964));

see

also

Imaging Sys., Inc. v. Recognition Research Inc.,
689,

696

(E.D.

Va.

2000)

(recognizing

Cognitronics

83 F. Supp.

the

discretion

2d
the

district court has to transfer to a more convenient forum).

The burden is on the movant to show that transfer pursuant
to Section 1404(a)
696.

is proper.

Cognitronics,

In a patent infringement action,

pursuant

to

Section

regional

circuit

in

Royalty Corp. v. Wang,
In

order

appropriate,

to

"a

1404(a)
which

are
the

determine

Court

district

court

by

sits.

1352

whether

Supp 2d at

motions to transfer venue

governed

202 F.3d 1340,

83 F.

a

the
See

of

Winner

the

Int' 1

(Fed. Cir. 2000).
transfer

must

law

make

of

two

venue

is

inquires:

(1) whether the claims might have been brought in the transferee
forum,

and

of

parties

the

Koh v.

(2)

whether the interest of
and witnesses

Microtek Intern.,

Va. 2003).

justice and convenience

justify transfer

Inc. , 250 F.

Supp.

to

that

2d 627,

forum."

630

(E.D.

Respecting the first inquiry:

The transferee venue is one in which the action 'might
have been brought' if, at the time of the filing of
the

action,

the

district

court

therein

could

have

exercised personal jurisdiction over the defendants
and the district was a proper venue for the action
without waiver or consent by the defendants.
Nationwide

2010

WL

Mut.

Ins.

2520973,

Kontoulas v.

A.H.

at

Co.

*3

v.

The

(E.D.

Robins Co.,

Overlook,

LLC,

No.

Va.

17,

2010)

Inc.,

745

June

F.2d 312,

315

4:10cv69,

(citing
(4th Cir.

1984)).

a

Once

proper

the movant has

venue,

convenience

of

the

the

district

parties

factors:

(1)

(2) witness

the

court

and

justice support transfer.

this second inquiry,

shown that

considers

witnesses

See 28 U.S.C.

Supp.

and

whether

the

is

the

interest

§ 1404(a).

of

As part of

the district court looks to four principal

the

plaintiff's

convenience

and

initial

access;

(3)

2d 731,

736

(E.D. Va.

choice

the

parties; and (4) the interest of justice.
482 F.

transferee venue

of

venue;

convenience

of

the

JTH Tax, Inc. v. Lee,

2007) .

Generally,

the first

factor—a plaintiff's choice of venue—is given substantial weight
as "ti]t is well

plaintiff's
clearly

choice

favor

Ralsky,

settled that a court should rarely disturb a

of

forum

transfer...."

203 F. Supp. 2d 601,

unless

the

Verizon

balance

Online

of

hardships

Servs.,

Inc.

v.

623-24 (E.D. Va.

2002).

must

transfer does

more

than merely 'shift the inconvenience to the other party.'"

JTH

Ultimately,

Tax,
Corp.,

482

F.

the movant

Supp.

617 F. Supp.

2d
76,

convenience

among

strongly in

favor of

the

Nationwide Mut. Ins.,
Hoy,

75

original).

F.

Supp.

at
77

736

(W.D.N.C.

forum

742

DMP

1985)).

and

(E.D.

Corp.

v.

Fruehauf

" [T]he balance of

witnesses

to which

2010 WL 2520973,

740,

"that

(quoting

parties

the

show

[must

transfer

is

weigh]
sought."

at *3 (quoting Nossen v.
Va.

1990))

(emphasis

in

III.

DISCUSSION

A. Jurisdiction of the Potential Transferee Forum
In

order

to

determine

district where

the

the

determine

Court

must

cause

whether

of

the

action

whether

transferee

v.

Micromuse,

2004).

The

Inc.,

phrase

interpreted to mean

316

Plaintiff's

F.

"might

that

Supp.

have

defendant."

Hoffman v. Blaski,

2d

claims

a

could

have

Agilent Techs.,

322,

been

"when a suit

has a right to sue in that district,
of

is

"might have been brought,"

been brought in the transferee court initially.
Inc.

court

325

brought"

(E.D.

has

is commenced,

Va.

been

plaintiff

independently of the wishes
363 U.S.

335,

344,

80 S. Ct.

1084, 4 L. Ed. 2d 1254 (1960); see also Agilent, 316 F. Supp. 2d
at 324.
court

If the claims could have been brought in the transferee

initially,

the

subsequent

within the discretion of

decision

the court.

to

transfer venue

One Beacon Ins.

Co.

v.

is
JNB

Storage Trailer Rental Corp., 312 F. Supp. 2d 824, 828 (E.D. Va.

2004)
582,

(citing Verosol B.V. v. Hunter Douglas, Inc., 806 F. Supp.
591

(E.D.

Under

28

Va.

1992)).

U.S.C.

§

1400(b),

venue

in

patent

infringement

lawsuits is proper in any "district where the defendant resides,
or where
has

a

the

regular

§ 1400(b)

defendant has
and

(emphasis

committed acts

established place

added).

A

of

corporate

of

infringement and

business."

defendant

28

U.S.C.

resides

in

any district
28 U.S.C.

in which

it

is

subject

that

VIS's

to

personal

jurisdiction.

§ 1391(c).

Both

parties

agree

patent

infringement

claims

could have been brought in the District of New Jersey.

Br. in Supp. of Mot.
to Defs.'

Mot.

to Transfer at 5,

Defs.'

ECF No. 30; PL's Resp.

to Transfer at 4, ECF No.

41.

SEA is a wholly

owned subsidiary of SEC with its principal place of business in

New Jersey.

Additionally,

represented that,

at the status conference,

although SEC and STA are not headquartered in

New Jersey, their employees regularly travel
that

the

companies

maintain

offices

clear that this civil action
District

of

New

Defendants

Jersey.

See

to New Jersey and

there.

Therefore,

it

"might have been brought"
28

U.S.C.

§ 1404(a);

is

in the

28

U.S.C.

§ 1391(c).

B. Purposes Served by Transfer

Having determined that this action could have been brought
in

the

transferee

interest

of

forum,

justice

the

and

the

Court

next

considers

convenience

of

the

whether

the

parties

and

witnesses justify transfer to the District of New Jersey.
250 F. Supp. 2d at 630.

Section
factors:
the

1404(a)

This second prong of the analysis under

requires

"(1) plaintiff's

parties,

(3)

witness

interest of justice."

Koh,

the

Court

choice

of

convenience

Pragmatus AV,

to

balance

four

forum,

(2)

and

access,

LLC v.

principal

convenience
and

Facebook,

of

(4)

the

Inc.,

769

F.

Supp. 2d 991, 994-95

(E.D. Va. 2011)

(quoting Heinz Kettler

GmbH & Co. v. Razor USA, LLC, 750 F. Supp. 2d 660, 667

(E.D. Va.

2010)).
1.

VIS

District

chose

of

Plaintiff's Choice of Forum

to

file

Virginia.

the

instant

Defendants

action

argue

in

that

the

little

Eastern

deference

should be given to VIS's choice of forum because VIS is a nonpracticing
intellectual
that

entity

whose

main

property rights.

both VIS

and

this

business

is

Accordingly,

action have

enforcing

Defendants

minimal

ties

to

its

contend

Virginia.

VIS responds—both in its memorandum in opposition to the instant
motion and in the declaration from VIS's sole owner,

Dr.

Tiehong

(Ann)

has

been

Wang

"resident"

("Dr.
of

Wang")

the

attached

Eastern

thereto—that

District

of

it

Virginia

since

a

its

formation in 2005 and that it has been engaged in the research,

development,

and prosecution of the patents-in-suit,

other patents, in this District since that time.
5.

as well as

ECF No. 41 at

Defendants reply that VIS's past prosecution of the patents-

in-suit

cannot

Defendants

establish

further

its

maintain

present
that,

manufacture or develop products,
despite

its

representations

research and development.

connection
because

to
VIS

the

forum.

does

not

it is a non-practicing entity

that

it

is

actively

engaged

in

Generally,

a

plaintiff's

substantial weight.
667;
to

Koh,

this

of

forum

See Heinz Kettler GmbH,

250 F. Supp.
choice

choice

2d at 623.

"varies

with

However,

the

is

entitled

to

750 F. Supp. 2d at
the weight accorded

significance

of

the

contacts

between the venue chosen by plaintiff and the underlying cause
of action."
DDI,

LLC v.

Pragmatus,
Loopnet,

(E.D. Va. Aug.
home

forum,

30,

769 F. Supp.

Inc.,

No.

2d at 995; see also Civix-

2:12cv2,

2012

WL

3776688,

at

*3

"Even when the plaintiff sues in its

fact

that

2012) .

not

is

by

itself

controlling

and

the

weight of that factor depends on the nexus tying the case to the
forum."
No.

Gebr.

Brasseler GmbH & Co.

I:08cvl246,

Here,

VIS

2009 WL 874513,

KG.

at *2

v.

Abrasive Tech.,

(E.D. Va.

Mar.

is a Virginia corporation that has

operated in this District

since

its

27,

the

fact alone
nexus

is

between

not

formation in 2005.

controlling.

this

2009).

continuously

the Eastern District of Virginia is VIS's home forum.
that

The

Court

District

and

the

instant

the

patented

Inc.,

also

Thus,
However,

considers

infringement

action.2

First,

the

Court

notes

that

technologies

at

issue in this action were all researched and developed primarily

2 The Court notes that the general rule recommending the "center of the
accused activity" as the preferred forum in patent infringement cases
applies only when the plaintiff did not file suit in its home forum.
See Order at 11-14,
Comscore, Inc. v. Integral Ad Sci., Inc., No.
2L12cv351,
Comscore, Inc. v. Double Verify Inc., No. 2:12cv3 96, and
Comscore, Inc. v. Moat, Inc., No. 2:12cv695 (E.D. Va. Feb. 15, 2013).

Accordingly, the Court does not consider this rule in determining the
weight it should accord to VIS's choice of its home forum.

in

this

District

here.

and

Defendants

may be
forum

that

are

such

patents-in-suit

were

prosecuted

in noting

past

activities

correct

insufficient to
if

the

establish a plaintiff's

activities

do

not

2d 499,

503

343)

(finding

a

bankruptcy
patent

(E.D. Va.

2012)

subsidiary's

proceeding,

infringement

as

suit,

(quoting Hoffman,

as

the

and

plaintiff's
to

show the

a

that

874 F.

363 U.S.

operations

insufficient

connection to this District).

"conditions

Jaffe v. LSI Corp.,

former

well

connection to

constitute

'existed when suit was instituted.'"

Supp.

that

at

ongoing

own

prior

plaintiff's

However, VIS does not rely solely

on its past activities to rebut the Defendants'

contention that

VIS lacks a significant connection to this District.

VIS

represents

that

it

not

only

researched and developed

the patented technologies at issue in this District, but that it
continues

to

research

and

develop

various

technologies

Dr. Wang devotes all of her time to such activities.
Dr.

Wang

is

VIS's

only

employee,

she

is

actively

here.

Although
engaged

in

VIS's research and development operations on a full-time basis.
The

fact

Wang's

their

that

such

residence

development

practicing

occur

in Arlington,

significance.

manufacture

activities

products

Nor

entity,"

Virginia

does

undermine

operations,

for

as

in

the

10

office

not

that

a

VIS

suggest.

venue

at

detract

continuing

Defendants

of

VIS

does

fact

VIS's

purposes

the

Dr.

from

does

not

research

and

A

analysis,

"non-

is

an

entity that
rather

"does not research and develop new technology,

acquires

patents,

alleged infringers."
ongoing

research

distinguish

it

licenses

Pragmatus,

and

the

769 F. Supp.

development

from

those

technology,

of

sues

2d at 995.

technologies

plaintiffs

and

deemed

but

VIS's

for

patent

non-practicing

entities in the cases upon which Defendants seek to rely.

See

Order

Inc.,

No.

CIVIX-DDI,

2012

at

2-3,

Bascom

(E.D.

Va.

l:12cvlll,

WL 3776688,

at

*3;

Research,

Dec.

11,

LLC

2012),

Pragmatus,

v

Facebook,

ECF No.

769 F.

40;

Supp.

2d at 995

This is

simply not a case in which the plaintiff's sole activity in the

forum is the enforcement of
See CIVIX-DDI,

its

2012 WL 3776688,

intellectual
at

*3;

property rights.

Pragmatus,

769 F.

Supp.

2d at 995.

In viewing the above facts as a whole,
VIS

is

a

entitled

practicing

to

entity whose

substantial

choice

weight

in

the Court finds that

of

an

its

home

enforcement

involving patented technologies that VIS

researched,

and

Court

prosecuted

connection

here.

between

this

Accordingly,
District

the

and

the

forum

action

developed,

finds

cause

is

of

that
action

the
is

sufficient to warrant the substantial deference generally given
a plaintiff's choice of

forum.

See,

e.g.,

750 F. Supp. 2d at 667; Koh,

250 F. Supp.

have

otherwise

failed

transfer of

to

demonstrate

venue,

they bear

the
11

Heinz Kettler GmbH,

2d at 623.

and,

ultimate

as

the

burden

Defendants
movants

to

for

show that

transfer pursuant

to

Section 1404(a)

is

proper.

Cognitronics,

83 F. Supp. 2d at 696.
2.

Convenience of the Parties

and Witnesses

The fact that VIS's choice of forum is accorded significant
weight

does

not

appropriate
among

the

end

upon

a

parties

the

inquiry.

showing

that

and

witnesses

Transfer
"the

is

forum to which transfer is sought."

WL 2520973, at *3 (quoting Nossen,
in original).
the

burden

details

The

to

by

strongly

of

in

still

favor

of

Additionally,

afforded

2012

inconvenience

otherwise,

"has

sufficient

testimony

the materiality of evidence and

inconvenience."

Koh,

250

F.

Supp.

2d

at

636.

"the convenience of non-party witnesses should be

greater

weight

[than

the

convenience

of

party
386 F.

witnesses]

in deciding a motion to transfer."

Samsung,

Supp

at

Defendants

2d.

the

(emphasis

respecting the witnesses and their potential

degree

of

Ins.,

75 F. Supp. at 742)

or

be

convenience

Nationwide Mut.

affidavit

to enable the court to assess
the

balance

party asserting witness

proffer,

would

718.

demonstrate

that

inconvenient

forum

As
the

in

the

moving

Eastern

which

[District of New Jersey]

parties,

District

to

of

litigate,

Virginia

not

must

is

"an

simply that

the

would be more convenient."

Id. at 718

n.15.

Defendants

witnesses will

have

made

suffer if

much

of

required to
12

the

travel

inconvenience

its

internationally to

this

District.

Defendants

argue

that

the

District

of

New

Jersey's proximity to two international airports makes it a much
more convenient venue,
the

non-party

both for their employee witnesses and for

inventors

of

the

patents-in-suit,

three

of

whom

reside in China.

With respect to Dr. Wang and other non-party

witnesses

in

located

Northern

Virginia

and

Washington,

D.C.,

Defendants argue that proceeding in the District of New Jersey
would

impose

equal

inconvenience

upon

such witnesses

litigating in the Norfolk Division of this District.

argue

that

sponte

they

transfer

declarations
that

should

of

from

not

the

all

be

prejudiced

action

party

to

and

this

them than the District of New Jersey.

the

Division

non-party

this District—even this Division—is

by

will

have

to

travel

a

Court' s

and

sua

proffer

affirming

convenient

for

Defendants urge the Court

to disregard such declarations and consider the

witnesses

would

Plaintiffs

witnesses

far more

as

great

fact

distance

that such

regardless

of

whether venue is transferred.

As a threshold matter,
inconvenience,

bear

the

Defendants,

burden

"to

as the parties asserting
proffer

by

affidavit

or

otherwise,

sufficient details respecting the witnesses and their

potential

testimony

materiality

of

to

Samsung,

have

that

all

386

F.

the

court

and

evidence

inconvenience."
proffered

enable

the

Supp.

2d at

potential
13

witnesses

to

assess
degree

718.
with

the
of

Defendants
knowledge

concerning

the

accused

products

and

their

sale

States are employees who work in South Korea,
Texas.

specific

expects

the

United

New Jersey,

and

Although Defendants discuss the degree of inconvenience

to such witnesses at
any

in

to

length,

details

call

concerning

(including

transferee district)

Defendants have failed to provide

how

the

number

many

of

witnesses

and how each witness's

witnesses

reside

it

in

the

testimony will

be

material and non-cumulative, despite being given the opportunity
to

further

See Koh,

elaborate

on

250 F. Supp.

sufficient
witnesses

facts
are

at

Thus,

whether

"central

to

a

claim"

the

Dec. 2,

No.

2011).

employees
witnesses.

of

facts

that

Defendants'
"merely

are

before

to any such witnesses

2:llcv427,

Specifically,
SEC,

conference.

the Court does not have

or

reduced roll in the court's analysis."
Inc.,

status

proffered

cumulative."

2d at 718.

the inconvenience

Rad Labs.,

the

determine

Samsung, 386 F. Supp.

that

point

2d at 636.

to

Furthermore,

this

SEA,

or

the

Court

suggest

should "play[]

NanoEntek,

2011 WL 6023189,

a

Inc. v. Bio-

at *5

(E.D.

Va.

the only witnesses proffered are
STA

and

are,

therefore,

party

See id. ("Party witnesses are the parties themselves

and those closely aligned with a party

[such as employees].").

Such witnesses "are presumed to be more willing to testify in a
different

forum."

Additionally,

the

Samsung,

386

international
14

travel

F.

Supp.

2d

required of

at

718.

these party

witnesses

is

further

mitigated

international defendant,

the

fact

that

the

only

SEC, has previously litigated a patent-

infringement

declaratory

Division

this

of

by

judgment

District

and,

action

in

in

such

the

Richmond

action,

expressly

affirmed the convenience of this forum when opposing a motion to
transfer venue.

See Samsung,

CIVIX-DDI,

WL

2012

386 F. Supp.

3776688,

prior litigation in the

at

(considering

719;

a

see also

plaintiff's

transferee forum when determining such

forum was presumably convenient).

air

*5

2d at

travel w[ill undoubtedly]

Thus,

although "international

be burdensome wherever this

case

is litigated,"

it does not appear that such travel is any more

burdensome

SEC

to

in

this

District

than

it

would

be

in

the

District of New Jersey.

The

convenience of

the

transferring the case.
identified

are

the

non-party witnesses weighs against

The only non-party witnesses presently

inventors

prosecuting attorney of

of

the

patents-in-suit

such patents.

Three of

the

and

the

non-party

inventors reside in China and the fourth resides in Washington,

D.C.3

ECF No.

patents-in-suit

ECF No. 41, Ex.
declarations

41 at 2-3.
resides

6.

The prosecuting attorney of the

in this District,

in McLean,

Virginia.

All such witnesses have provided VIS with

affirming

that

litigating

in

the

District

of

New

3 The fifth inventor is Dr. Wang, who, as the sole owner of VIS, is a
party witness.
Dr. Wang
Virginia.
ECF No. 41 at 2.

resides

15

in

this

District,

in

Arlington,

Jersey

would

be

inconvenient

District of Virginia is

Exs.

2-6.

ask

the

consider

and

the

that

the

forum.

Court

to

Eastern

ECF No.

disregard

Norfolk from China (based on the absence of direct flights),

as

well

is

Northern

Virginia,

which

of

these
to

from

difficulty

41,

traveling

as

and

them

a more convenient

Defendants

representations

for

Defendants

contend

equidistant to Norfolk and Newark.

The Court finds no reason to

disregard

these

the

representations

of

non-party

witnesses.

Accordingly, their convenience weighs against transfer.
C.
The

fourth and

final

determining whether
is

§ 14 04(a).

Analysis
to

factor

transfer

appropriate

unrelated

Interest of Justice

the

witness

this

the

applicable

law,

(3)

District

of

trial,

(6)

the

possibility of harassment,

(2)

to

and (8)

controversies decided at home.
996;

Gebr.

the

interest

factors

Brasseler GmbH,

aimed

of

justice

at

'systemic

of

28

U.S.C.

considerations

including

conditions,

(5)

join

(1)

the

(4)

access

to

the possibility of an

other

parties,

(7)

the

the interest of having local

2009 WL 874513,

769
at

"encompasses

integrity
16

New Jersey is

the court's familiarity with

Pragmatus,

factor

consider when

See

convenience,

docket

ability

to

justice.

premises that might have to be viewed,
unfair

Court

factor encompasses

and party

pendency of a related action,

the

the

to

interest
of

for

and

F.
*5.

Supp.

2d at

Ultimately,

public

fairness,'"

interest
with

the

most

prominent

considerations

being

"judicial

economy

and

the

avoidance of inconsistent judgments."

Byerson v. Equifax Info.

Servs,

(E.D. Va.

LLC,

467

F.

Supp.

2d 627,

635

2006)

(quoting

Samsung, 386 F. Supp. 2d at 721).

The

parties

agree

that

the

majority

considerations are not applicable in this

of

case.

the

above

Specifically,

there are no related actions currently pending in the District
of

New Jersey,

Federal

patent

applicable

Supp.

or any other district.

law

law,
is

2d at 329

so
at

not

the

issue.

The

Court's
See

case

arises

familiarity
Agilent

under

with

Techs.,

the

316

F.

(noting that one district court is no better or

worse equipped to handle a suit arising under Federal patent law
than

any

other).

considerations

Neither

party

should influence

the

has

argued

Court's

that

docket

transfer analysis,

although the parties agree that the average time to trial for a

civil

case

in

the

District

of

twenty-seven months—which

is

District.

there

Additionally,

New

Jersey

is

approximately

significantly longer than in
are

no

facts

before

the

this
Court

suggesting that there are premises to be viewed in this case or
that

there

is

a

this District.

possibility of

Finally,

unfair

trial

or

harassment

in

the ability to join parties also does

not appear to be at issue.

The
interest

parties

only

in deciding

dispute

this

which

controversy.
17

district

has

Defendants

a

greater

argue

that

their

ties

to

New

Jersey

make

it

more

reasonable

to

burden

jurors in that District.

VIS argues first that a case arising

under

cannot

Federal

patent

controversy."

law

properly

be

called

a

"local

To the extent local interests can be implicated

in such a case,

VIS argues that Virginia has a strong interest

in the resolution of this dispute because VIS

is a Virginia

entity seeking to protect intellectual property it developed in
this

District

against

multinational

defendants

who

sell

infringing products here.

Whether a dispute arising under Federal patent law creates
a "local controversy"
Some

courts

have

is not entirely settled in this District.

agreed

with

VIS

infringement action is not

a

499

Others

F.

Supp.

2d

at

696.

local

and

USA

Corp.,

No.

3:07cv543,

Va. Dec. 20, 2007).

that

have

found

2007

WL

a

a

patent

E.g.,

controversy.

where a plaintiff sues in its home forum.
Zonet

held

Lycos,

local

E.g.,

interest

Tatwell, LLC v.

4562874,

at

*12

(E.D.

Still others have considered infringement

suits to be local "where the maker and seller of the infringing
products

is

NanoEnteck,

cases,

located."
2011

WL

E.g.,

6023189,

Jaffe,
at

the existence of a local

*7.

874

F.

However,

Supp.
in

2d

at

these

509;

latter

controversy may be predicated

upon the economic harm that would result in the transferee forum

if

a

finding

of

liability

were

18

to

require

a

change

to

manufacturing processes
6023189,

or products.

See

NanoEnteck,

WL

at *7.

Here,

VIS has sued in its home forum and,

already found,
Defendants

a

heavy

presence
products

of

the

accused

When prompted at

the

status

to point to any harm,

in

the Court has

New

occurs

conference,

economic or otherwise,

the

citizens

of

New

Jersey

Although

Jersey,

in

South

Defendants

in New Jersey upon a finding of liability.

that

as

is a practicing entity in such forum.

have

manufacturing

argued

2011

all
Korea.

were unable

that would result

Defendants instead

would have

a greater

interest in litigating a dispute involving a local company—SEA.
Given the absence of any facts concerning the anticipated effect
of this action's outcome in New Jersey,

why

jurors in

adjudicating

that

the

Specifically,

District

instant

jurors

in

would have

dispute

an

developed
therefore,

equal
in

interest

Virginia

this

factor

by
is

in
a

a

greater

those

than

New Jersey may

case involving a local company,

least

the Court sees no reason

interest

in

this

have

an

interest

in

District.
in

a

but jurors in Virginia have at

a

case

Virginia

neutral

to

involving
company.

the

Court's

technologies
On

balance,

determination

of the instant motion.

In sum,

Defendants have failed to show that VIS's choice of

forum should not be accorded significant weight.

Defendants

have

extensively

argued
19

that

Although the

convenience

of

the

parties
finds

the

and witnesses

that

Defendants

hardships

Servs.,

should
have

clearly

203 F. Supp.

failed

VIS's

show

choice,

that

"the

transfer."

2d at 623-24.

the

balance

Verizon

Accordingly,

Court
of

Online

the Court will

forum.

Alternative Request for Limited Venue-Related Discovery

Defendants'
Court

to

favor[s]

not disturb VIS's choice of

D.

override

determine

warranted

under

have

alternatively

that

transfer

Section 14 04(a),

requested

of

venue

the

that,
is

Court

should

not

the

presently

withhold

entering

such finding and allow the parties to conduct limited discovery
concerning venue.

that

they

At

lacked

activities

to

the

status conference,

sufficient

determine

non-practicing entity.

information

whether

VIS

is

a

Defendants argued

concerning

practicing

VIS's

versus

a

Defendants seek leave to take Dr. Wang's

deposition in order to verify both the nature and extent of her
work for VIS, and the representations in her declaration.

Generally,
determining

district

whether

to

jurisdictional facts
v.

Akzo,

N.V.,

2

courts
grant

enjoy
limited

(including venue).
F.3d

56,

64

(4th

broad

discretion

discovery

to

explore

See Mylan Labs.,
Cir.

1993).

in

Inc.

Although

discovery under the Federal Rules of Civil Procedure is "broad
in

scope

and

freely

permitted,"

the

Court

sees

no

reason

defer its finding and permit such discovery in this case.

Specifically,

Defendants

seek

limited
20

discovery

for

the

to

Id.

sole

purpose

of

searching

declaration

that

development

in

Court

finds

evidence

continues

District

the

Fourth

and

limited

in

she

Wang's

research

devotes

and

herself

such circumstances,

reasoning

persuasive.

Dr.

Inc.,

the

with

respect

Carefirst

See

of

334 F.3d 390,

to

to

M.D.,

403

(4th

As the plaintiff did in Carefirst, Defendants seek

discovery

declaration.
Defendants

engage

Under

v. Carefirst Pregnancy Ctrs.,

Cir. 2003) .

rebut

that

Circuit's

discovery

to

to

full-time basis.

jurisdictional
Inc.

VIS

this

such work on a

for

in

Id.

have

spite

and

of

Likewise,

"offered

against

in

nothing

support

beyond

Dr.
of

Wang's

their

... bare

sworn

request,

allegations"

and "conclusory assertions" that VIS is a non-practicing entity.
Id.

(quoting ALS Scan,

293 F.3d 707, 716 n.3
for

jurisdictional

allegations

[made]

Court

not

need

Inc.

v.

Digital Serv.

(4th Cir. 2002)).

or

venue-related

in

the

permit

face of

even

discovery

specific

limited

finds

Inc.,

that,

as

121 F.R.D.

presented,

254,

259

Inc.,

Where a party's request
rests

Id.

(M.D.N.C.

Defendants'

"on

denials [,]

discovery

discovery will be a fishing expedition."
KIS Cal.,

Consultants,

...

...

[if]

bare
the
such

(quoting Rich v.

1998)).

alternative

The Court

request

for

additional discovery amounts to nothing more than an attempt to
unearth

facts

contrary

Court.

Accordingly,

to

the

those

Court

venue-related discovery.
21

sworn

denies

facts

presented

Defendants'

to

the

request

for

IV.

For

the

reasons

Defendants'

Motion

to

Defendants'

alternative

set

CONCLUSION

forth

Transfer

request

above,
Venue

for

the
and

Court

DENIES

further

DENIES

limited,

venue-related

discovery.

The Court DIRECTS the Clerk of the Court to send copies of
this Opinion and Order to counsel of record.
IT

IS

SO ORDERED.

Mark S.

Davis

UNITED STATES DISTRICT JUDGE

Norfolk, Virginia

March 6 , 2013

22