In what Judge Robinson believed to be a first impression issue before her, she recently denied a motion to transfer where “neither the parties nor the patents” were identical. Cisco Systems Inc. v. GPNE Corp., C.A. No. 06-671-SLR, Memo. Order, at 5 (D. Del. Apr. 17, 2008). Defendant, GPNE, moved to transfer this declaratory judgment litigation to the Eastern District of Texas where they had earlier filed two patent infringement lawsuits. The first lawsuit in Texas was filed against one set of defendants and settled early on in the litigation. The second lawsuit was filed against another group of defendants and remains pending only against one defendant, and involves only one of the patents-in-suit that was asserted in the Delaware litigation but involved different technology. Id. at 2. (Neither Texas lawsuit involved the declaratory judgment plaintiffs who filed suit in Delaware.)
GPNE argued that once the Eastern District of Texas obtained “possession of the subject matter” of the dispute, the later-filed litigation should be subject to transfer under the “first-filed” rule. Id. Judge Robinson stated that she found “remarkable the assertion that a court obtains ‘possession of a subject matter’ of a patent as soon as a single case involving that patent is filed in that jurisdiction” and therefore denied the motion to transfer. Id. at 5.
A note for all those who may draft a motion to transfer before Judge Robinson in the future…”absent a truly regional defendant or critical witnesses that cannot be compelled to attend trial, Delaware (especially for a Delaware corporation…) is at least as convenient as any other forum.”
For a copy of the opinion click here.