Intellectual Property Law

Judge Sue L. Robinson: Transfer Denied

By Karen E. Keller, Andrew A. Lundgren et al.

In what is a common factual scenario in this court, a defendant is sued here in Delaware and within days files a reciprocal declaratory judgment suit in another district and at the same time files a motion to dismiss or transfer the Delaware action. And again, as typical in this district, the case will not be transferred unless "(1) there is no bona fide relationship between Delaware and the defendant; (2) there is a related first-filed case in another district; or (3) the defendant is truly a regional enterprise." Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009). Although these parties had been involved in earlier litigation, that case involved Lanham Act and other false advertising claims, and the instant case involves patent claims. Furthermore, the defendant here is a Delaware corporation located within the same "region" as Delaware. Id.

Although the defendant argued inconvenience of the parties and potential witnesses, Judge Robinson noted the "general courtesy" in Delaware that witnesses "shall be deposed in the city where they work." Id. at 5.

Quantum Loyalty Systems, Inc. v. TPG Rewards, Inc., C.A. No. 09-022-SLR, Memo. Order, at 4 (D. Del. Apr. 2, 2009).

Full post as published by Delaware IP Law Blog on April 06, 2009 (boomark / email).