A recent decision by district judge Joseph J. Farnan Jr. reaffirms the difficulty parties often have in transferring actions out of the District of Delaware. In considering defendant Hologic’s motion to transfer venue, the Court recognized that nearly identical litigation between the same parties was already pending in the transferee jurisdiction. But, unlike most other transfer scenarios, Hologic had also filed a third action in Delaware, seeking to enforce its own patents on the same technology.
According to the Court, Hologic’s decision to affirmatively litigate its own patents in Delaware weakened its position on transfer:
“The fact that Hologic initiated suit against Ethicon in this District – even though the parties were involved in other patent litigation concerning similar technology in the Southern District of Ohio – indicates that Hologic does not consider this District to be an inconvenient forum.”
As a result, Hologic could not justify a transfer out of Delaware. This case stands as a reminder that first-filed pending litigation among the parties, which usually favors a transfer, can also stand as an impediment to obtaining a new forum.
Ethicon Endo-Surgery Inc. v. Hologic Inc., C.A. No. 09-580-JJF (D. Del. Oct. 15, 2009) (Farnan, J.).
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