Free Memorandum and Order - District Court of Delaware - Delaware

Case 1:08-cv-00104-SLR Document 34 Filed 08/26/2008 Page 1 of 4
IN THE UNITED STATES DISTRICT COLIRT
FOR THE DISTRICT OF DELAWARE
MOTOROLA, INC., )
Plaintiff, g
v. g Civ. N0. 08-104-SLR
RESEARCH IN MOTION LIMITED g
and RESEARCH IN MOTION )
CORPORATION, )
Defendants. g
MEMORANDUM ORDER
At Wilmington this 26th day of August, 2008, having reviewed defendants’
motion to transfer venue of the above captioned case to the United States District Court
for the Northern District of Texas, and the papers submitted in connection therewith;
IT IS ORDERED that said motion (D.l. 15) is granted, for the reasons that follow:
1. Standard of review. Under 28 U.S.C. § 1404(a), a district court may transfer
any civil action to any other district where the action might have been brought for the
convenience of parties and witnesses and in the interests of justice. Congress intended
through § 1404 to place discretion in the district court to adjudicate motions to transfer
according to an individualized, case-by—case consideration of convenience and the
interests ofjustice. Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988);
Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 208 (D. Del. 1998).
2. The burden of establishing the need to transfer rests with the movant "to

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establish that the balance of convenience of the parties and witnesses strongly favors
the defendants." Bergman v. Brainin, 512 F. Supp. 972, 973 (D. Del. 1981) (citing
Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir. 1970)). "Unless the balance is
strongly in favor of a transfer, the plaintiff’s choice of forum should prevail." ADE Corp.
v. KLA-Tencor Corp., 138 F. Supp. 2d 565, 567-68 (D. Del. 2001); Slgig, 431 F.2d at
25. The deference afforded plaintiff’s choice of forum will apply as long as a plaintiff
has selected the forum for some legitimate reason. CR. Bard, Inc. v. Guidant Corp.,
997 F. Supp. 556, 562 (D. Del. 1998); Cypress Semiconductor Corp. v. Integrated
Circuit Systems, lnc., No. Civ. A. 01-199, 2001 WL 1617186, at *2 (D. Del. Nov. 28,
2001); Continental Cas. Co. v. American Home Assurance Co., 61 F. Supp. 2d 128,
131 (D. Del. 1999). Although transfer of an action is usually considered as less
inconvenient to a plaintiff if the plaintiff has not chosen its "‘home turf’ or a forum where
the alleged wrongful activity occurred, the pIaintiff’s choice of forum is still of paramount
consideration, and the burden remains at all times on the defendants to show that the
balance of convenience and the interests of justice weigh strongly in favor of transfer."
ln re M.L.-Lee Acguisition Fund ll, L.P., 816 F. Supp. 973, 976 (D. Del. 1993).
3. The Third Circuit Court of Appeals has indicated that the analysis for transfer
is very broad. Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995).
Although emphasizing that "there is no definitive formula or list of factors to consider,"
ig, the Court has identified potential factors it characterized as either private or public
interests. The private interests include: "(1) pIaintiff’s forum preference as manifested
in the original choice; (2) defendant’s preference; (3) whether the claim arose
elsewhere; (4) the convenience of the parties as indicated by their relative physical and
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financial condition; (5) the convenience of the witnesses but only to the extent that the
witnesses may actually be unavailable for trial in one of the fora; and (6) location of
books and records (similarly limited to the extent that the files could not be produced in
the alternative forum)." Q (citations omitted). The public interests include: "(1) the
enforceability ofthe judgment; (2) practical considerations that could make the trial
easy, expeditious or inexpensive; (3) the relative administrative difficulty in the two fora
resulting from court congestion; (4) the local interest in deciding local controversies at
home; (5) the public policies of the fora; and (6) the familiarity of the trial judge with the
applicable state law in diversity cases." Q (citations omitted).
4. Background. The parties to this litigation, competitors in the very lucrative
market of wireless communications, failed to extend the terms of a cross license
agreement ("the Agreement”)’ that expired on February 15, 2008. ln response to their
failed negotiations: (a) plaintiff filed the instant litigation seeking a declaratoryjudgment
that nine patents owned by defendants are invalid and not infringed by plaintiff; (b)
plaintiff commenced a patent infringement action against defendants in the Eastern
District of Texas, asserting that some 23 of defendants’ products infringe some eleven
of plaintiff’s patents; and (c) defendants commenced an action against plaintiff in the
Northern District of Texas alleging infringement by plaintiff of the same nine patents at
issue in this court, seeking a declaratoryjudgment that their products do not infringe the
same eleven patents at issue in the Eastern District of Texas litigation, and asserting an
'Through the Agreement, plaintiff granted to defendants a non-exclusive license
to practice some 76 patents that plaintiff claimed were essential to certain wireless
communications standards.
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antitrust claim and related contract claims based on the 76 patents at issue in the now-
expired Agreement. Perhaps not surprisingly in this golden age of electronic
communications, all three lawsuits were filed within hours of each other on February 16,
2008. Apparently, there are motions to transfer venue pending decision in all of the
courts.
5. Analysis. The parties at bar are industry giants in the business of
communicating information wirelessly. There is no true inconvenience to the parties, no
matter where they litigate. Ratherthan focus on the hardship to the parties, therefore, I
address in this decision the hardship to the courts involved and the scarcity ofjudicial
resources vis a vis the parties. Given that this court has far fewer resources than any of
the other courts implicated by this Iitigation,2 and given that the parties at bar have
brought to the judicial system the same competitive impetus they use in the market
without regard to the costs associated therewith, there is no sound reason to maintain
any part of this dispute in this court.
6. Conclusion. For the reasons stated above, l conclude that transferring this
case to the Northern District of Texas is appropriate.
2This court has three out of four active district judges and two magistrate judges.
The Eastern District of Texas has eight active districtjudges and seven magistrate
judges. The Northern District of Texas has twelve active district judges, four senior
judges, and eight magistrate judges.
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