Judge Fallon recommends denial of motion to transfer, partial grant of motion to dismiss indirect infringement claims

In Collabo Innovations, Inc. v. Omnivision Technologies, Inc., C.A. No. 16-197-SLR-SRF (D. Del. Jan. 25, 2017), Magistrate Judge Sherry R. Fallon considered Defendant’s motion to transfer to the Northern District of California as well as its motion to dismiss indirect infringement claims based on an alleged lack of pre-suit knowledge.

The Court denied the motion to transfer. Both parties were Delaware corporations with principal places of business in California, and Plaintiff had no facilities in Delaware. Id. at 1. Because Delaware was not Plaintiff’s “home turf,” the Court awarded Plaintiff’s forum choice “increased weight in the Jumara analysis but less than the ‘substantial’ or ‘paramount’ weight” it would be given had [Plaintiff] filed suit in its home forum.” Id. at 8. Because Defendant manufactured, sold, and used the accused products nationwide, and because it was also “a large Delaware corporation with resources to litigate in this district,” where the claim arose was neutral and the convenience of the parties weighed against transfer. Id. at 9-10. As to the public interest factors, the Court found that practical considerations weighed slightly against transfer where Plaintiff had filed a related action against another party in Delaware but where Defendant argued that “a trial in Delaware will be more expensive and difficult due to travel considerations and expenses, including costs of local counsel.” Id. at 12-13. In sum, Defendant had “not shown that the Jumara factors as a whole weigh strongly in favor transfer. Only [Defendant’s] forum preference weighs in favor of transfer, and that preference does not warrant maximum deference. On the other hand, the remaining factors are neutral or weigh in favor of [Plaintiff].” . . . The court recognizes that it may be more expensive and inconvenient for [Defendant] to litigate in Delaware instead of California. However, under the circumstances, the court ‘decline[s] to elevate the convenience of one party over the other,’ as ‘discovery is a local event and trial is a limited event.’ . . . Delaware imposes no ‘unique or unexpected burden’ on [Defendant], such that transfer is warranted in the interests of justice.” Id. at 14-15 (citations omitted).

The Court then recommended that the motion to dismiss be granted in part, as to any possible allegations of pre-filing conduct. Acknowledging that “[t]he case law in this district is divided on the issue of whether pre-suit knowledge is required to sufficiently state a claim for indirect infringement,” Id. at 17, the Court adopted the “more recent line of cases” holding that “the filing of a complaint is sufficient to provide knowledge of the patents-in-suit for purposes of stating a claim for indirect infringement occurring after the filing date.” Id. Here, Plaintiff had limited its cause of action for indirect infringement to conduct following the filing of the complaint. Id. at 18. “In keeping with the most recent decisions of this court,” therefore, the “post-filing date knowledge of the patents-in-suit is sufficient to state a claim for indirect infringement occurring after service of the complaint. In view of the foregoing authority,” the Court recommended that the motion be granted-in-part “to the extent that [Plaintiff’s] amended complaint could be construed to assert causes of action for indirect infringement based on pre-filing conduct.” Id.

Collabo Innovations, Inc. v. Omnivision Technologies, Inc., C.A. No. 16-197-SLR-SRF (D. Del. Jan. 25, 2017)

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