Judge Robinson Issues First Transfer Opinions in Patent Cases Post-Link_A_Media
Judge Robinson recently decided two motions to transfer, her first in patent cases since the Federal Circuit’s decision in Link-A-Media. In Helicos Biosciences Corp. v. Illumina, Inc. et al., C.A. No. 10-735-SLR, at 3 (D. Del. May 3, 2012), Judge Robinson detailed the Courts of Appeal’s history of allowing “civil action[s] for patent infringement [to] be brought in the judicial district in which the defendant was incorporated.” Id. at 3. As Judge Robinson explained, “by the time Jumara issued in 1995, there was a recognized historical continuum that served as the backdrop for the Third Circuit’s analysis. First, a defendant’s state of incorporation had always been a predictable, legitimate venue for bringing suit. Second, a plaintiff, as the injured party, generally had been ‘accorded [the] privilege of bringing an action where he chooses.’” Id. at 6 (citations omitted). Indeed, she noted, “the risk associated with the exercise of [judicial] discretion was also recognized . . . as ‘assigning to the trial judge the choice of forums, a prerogative which has previously rested with the plaintiff.’” Id. (citations omitted). Judge Robinson noted further that, “[a]lthough transfer is a discretionary decision on the part of a district judge, . . . clearly the Federal Circuit expects an analysis of all the Jumara factors in connection with any transfer decision issued by this court.” Id. at 8. She therefore proceeded to address each Jumara factor in turn, explaining why each factor either weighed for or against transfer, or was neutral. Id. at 9-14.
Ultimately, Judge Robinson found that one factor favored transfer. Considering the “practical considerations that could make the trial easy, expeditions, or inexpensive” she noted that “[t]he court in Delaware has been criticized for managing its patent docket without the aid of local rules, allowing the judges to vary their case management procedures over time and/or from case to case[,] . . . encouraging parties to settle their disputes, but not shying away from resolving disputes through the adversarial process (including trial) if the parties fail in their efforts to craft a business solution[,] . . . expecting the corporate citizens of Delaware to make themselves available to litigate in Delaware, as has been their historical obligation, and  making observations about the realities of patent litigation gleaned from the (not insubstantial) experiences of its judges.” Despite these critiques of the Court, she found that this factor favored transfer, as “trial in the Northern District of California would be easier and less expensive for the defendants.” Id. at 12. Because only one factor favored transfer, however, Judge Robinson determined that “defendant [had] not tipped the scales of justice in favor of transfer.” Id. at 14.
Similarly, in Cellectis S.A. v. Precision Biosciences, Inc., C.A. No. 11-173-SLR (D. Del. May 3, 2012), Judge Robinson denied a motion to transfer to the Eastern District of North Carolina . Id. at 18. Judge Robinson analyzed each Jumara factor. Finding that two of the eleven factors – “the convenience of the parties” and “practical considerations that could make the trial easy, expeditious, or inexpensive” – weighed in favor of transfer, Judge Robinson concluded that the defendant did not put forth enough evidence to tip the scale in favor of transfer. Id. at 15-18.