Judge Andrews recently considered defendants’ motions to transfer in cases brought by patent owner Robocast against both Apple and Microsoft. See Robocast, Inc. v. Apple, Inc., C.A. No. 11-235-RGA (D. Del. Feb. 24, 2012). Although the cases are separate, both complaints alleged infringement of the same patent, and Microsoft admitted that its transfer motion “rises or falls with Apple’s.” Robocast was a Delaware corporation, but neither Robocast nor Apple had a principal place of business in Delaware. Robocast was headquartered in New York, and Apple sought transfer to the Northern District of California, where it was headquartered. Considering the Third Circuit’s Jumara factors, Judge Andrews found that those factors supported denying the motions to transfer.
The plaintiff’s forum preference and the convenience of the parties as indicated by relative physical and financial condition each supported the plaintiff’s position that the case should not be transferred. Id. at 3-4. Because infringement occurred “all over the United States, including Delaware . . . the claims arise in every judicial district.” Id. at 5. Furthermore, “Apple is omnipresent in everyday life. It is a large and powerful corporation. Robocast consists of its President and two employees. Its founder was at the oral argument on the present motion. Its financial condition pales in comparison to that of Apple.” Id. Because “[t]here is no reason to doubt that if this litigation turns into a war of attrition, Apple will have the upper hand,” the plaintiff’s choice of forum “significantly disfavors transfer.” Id. Apple also argued that “Robocast’s connection with Delaware is entitled to less weight because it is a ‘non-practicing entit[y],’” a characterization and conclusion which Robocast disputed. Id. at 9. Judge Andrews found, however, that while Robocast “has no physical connection to Delaware, its corporate citizenship is of long standing. There might be cases in which a nonpracticing entity’s connections to Delaware suggest reasons to discount that connection, but this is not one of them.” Id. (citations omitted).
The factors that did favor transfer included defendant’s forum preference, the convenience of the witnesses, the location of books and records, and practical considerations that could make the trial easy, expeditious, or inexpensive. Id. at 3-4. None of these, however, overwhelming supported transfer. The convenience of witnesses was largely speculative, and the location of books and records was “of marginal weight given that it is likely that Apple’s records can be produced at trial wherever trial is held.” Id. at 6-7. In reaching this conclusion, Judge Andrews distinguished In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011), noting that he “[did] not understand the Federal Circuit to have altered the Third Circuit’s focus on the issue being not so much where the witnesses and evidence are, but whether they can be produced in court.” Id. at 7 n.10. He continued, “I have considered In re Link_A_Media Devices Corp. . . . but I do not think it is particularly helpful in assessing the transfer request in this case, as its facts were very different.” Id. at 10.
The other Jumara factors were either inapplicable or did not favor one side or the other. Id. at 4. Judge Andrews therefore concluded: “In the present case there is a greater connection to Delaware, as the plaintiff is a Delaware corporation with its principal place of business close to Delaware but not to California, and, also of considerable significance, the plaintiff would be inconvenienced by transfer. Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. I think that when the plaintiff is a three-person corporation with Delaware as its longstanding corporate home, and the defendant is Apple, there ought to be a compelling reason to overcome plaintiff’s choice of forum.” Id. at 10 (citations omitted).