In a recent memorandum opinion, Chief Judge Gregory M. Sleet granted defendant’s motion to transfer venue to the Eastern District of Michigan. Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS (D. Del. Aug. 21, 2013). Plaintiff is a limited liability company organized under the laws of the State of Delaware and lists its principal place of business as the residence of the inventor of the patents-in-suit in New York. Id. at 1. Defendant is a Delaware corporation with its principal place of business in Michigan. Id. at 1-2.
First, Judge Sleet determined that this action could have been brought in the Eastern District of Michigan, as defendant maintains “its principal place of business in Dearborn, Michigan, which is located in the proposed transferee forum.” Judge Sleet also noted that plaintiff “is currently litigating a suit against [defendant] in the Eastern District of Michigan.” Id. at 4.
Turning to the Jumara private interest factors, Judge Sleet found that “because [plaintiff] chose to litigate in the forum where it was formed, rather than the forum where its principal place of business is located, its choice is entitled to less deference than it would typically receive in this analysis.” Id. at 6. Defendant’s forum preference, on the other hand, was “legitimate and rational” and therefore weighed in favor of transfer. Id. at 7. Addressing whether “the claims arose elsewhere, Judge Sleet noted that “[t]o some extent, [infringement] claims ar[i]se where the allegedly infringing products [a]re designed and manufactured.” Id. at 7. Accordingly, Judge Sleet found that factor to weigh “on the transfer side of the balance” because the infringement claims arose “from infringing products that were designed and manufactured in a single, discrete location.” Id. at 8. Judge Sleet next found that the “convenience of the parties” weighed slightly in favor of transfer, because while it appeared that “each [party] [had] sufficient financial resources to litigate in either forum,” defendant’s “decision to incorporate in Delaware suggests that the inconvenience of litigation here is somewhat less than the court would ordinarily presume it to be in this case.” Id. at 9-10. Judge Sleet found “the convenience of the witnesses” to be neutral since defendant was able to specifically identify only one third-party witness outside of the District of Delaware’s subpoena power. Id. at 12. Additionally, Judge Sleet explained that “because [defendant’s] principal place of business and much, if not all, of its materials relevant to the accused technology are located in the Eastern District of Michigan,” the “location of books and records” weighed slightly in favor of transfer. Id. at 13.
Judge Sleet next addressed the Jumara public interest factors. Accounting for “practical considerations that make the trial easy, expeditious, or inexpensive,” Judge Sleet found transfer favored by the fact that “neither party has facilities, offices, or employees in Delaware.” Id. at 15. Judge Sleet further noted that “both parties are currently litigating in the Eastern District of Michigan,” and the instant litigation “involves patents related to the patents-in-suit in the Eastern District of Michigan.” Id. at Judge Sleet additionally found that neither district “has a local interest in this action that would weigh in favor of transfer.” Id. at 17.
Judge Sleet concluded that in “[c]onsidering the Jumara factors as a whole, . . . [defendant] has met its burden of demonstrating that the interests of justice and convenience strongly favor transfer.” Id. at 18.
Joao Control & Monitoring Systems, LLC v. Ford Motor Company, C.A. No. 12-1479-GMS
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