Intellectual Property Law

Magistrate Judge Joel Schneider: Transfer Warranted Despite Defendants' Incorporation in Delaware

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

A recent venue-transfer decision by Magistrate Judge Joel Schneider illustrates the limits of Delaware courts' deference to a defendant's state of incorporation. In granting a request to transfer the patentee's infringement action to the Northern District of California, the Court noted that five of the nine defendants seeking transfer are incorporated in Delaware. In the District of Delaware, this factor typically weighs against transfer.

The underlying litigation, however, presented no other link to Delaware:

"Plaintiff has not dispelled the key fact that the essence of the case is a dispute between two California companies over patents and products developed in California, and that the key evidence and witnesses are located in California . . . . There is simply no getting around the fact that all key identified witnesses and evidence is located in California." (at 25)

Although the fact of a defendant's domestic incorporation will often persuade a Delaware court to retain the litigation, this decision is an example of how other convenience factors can override that preference.

Teleconference Systems v. Proctor & Gamble Pharma. Inc., C.A. No. 09-200-JBS-JS (D. Del. Nov. 25, 2009) (Schneider, M.J.).

Full post as published by Delaware IP Law Blog on December 01, 2009 (boomark / email).