In Pragmatus AV, LLC v. Yahoo! Inc., C.A. No. 11-902-LPS-CJB (D. Del. Aug. 28, 2013), Magistrate Judge Christopher J. Burke recommended denial of defendant’s renewed motion to transfer to the Northern District of California. Judge Burke had previously recommended denial of defendant’s motion to transfer (see here), and Judge Stark had accepted the recommendation (see here). Defendant argued that plaintiff’s recent filing of a separate lawsuit against defendant in the Northern District of California (the “California Action”) altered the Jumara factors such that transfer was merited. The California Action involved different patents within the same family as the patents-in-suit in this case and involved the same accused product. Id. at 16.
The Court first addressed the relevance of In re EMC Corp., 501 F. App’x 973 (Fed. Cir. 2013), where the Federal Circuit held that “motions to transfer venue are to be decided based on the situation which existed when suit was instituted,” but also noted that “a district court may properly consider any judicial economy benefits which would have been apparent at the time the suit was filed.” Id. at 8 (internal citations and quotation marks omitted). While it observed that “the full scope of In re EMC Corp’s impact and meaning as to this question” was unclear, see id. at 9-10, “[u]ltimately, the Court need not further examine the full scope of the rule . . . [because] even if the Court could properly take all of the proffered facts related to the California Action into account for purposes of the Renewed Motion to Transfer, the Court determines that they do not add support to that motion, nor would they alter the outcome of the First Motion to Transfer.” Id. at 10-11.
The Court went on to reject all of defendant’s arguments that the California Action “undercut” the original reasons for keeping the case in Delaware. As to plaintiff’s forum preference, plaintiffs had provided a “plausible” explanation for suing in different districts that was not a bad-faith attempt to forum-shop. See id. at 11-15. The convenience of the parties factor was also unaffected. Id. at 16. Regarding practical considerations, while transfer could minimize duplication, it was also the case that the patents in the California Action were different, “and so efficiencies gained from transferring this case to the Northern District . . . might not be as extensive as Defendant argues.” Id. at 17. The Court added that transferring the case to California “would almost certainly have the effect of delaying the ‘expeditious’ progress of the case regarding the five patents-in-suit here (which is nearing the close of discovery), in order to account for the fact that the California Action is at its inception.” Id. at 18. “In conclusion, because the filing of the California Action does not, in the Court’s view, alter the calculus as to any of the cited Jumara factors in favor of transfer, the Court recommends denial of [defendant’s] Renewed Motion to Transfer.” Id.
Defendant had moved to enjoin the California Action in the alternative, under the first-filed rule. The Court also recommended denial of this motion, finding that “while there is an overlap in the identity of parties and there may be an overlap of certain legal issues among the two lawsuits, the cases are sufficiently different such that the first-filed rule does not apply,” particularly because there was no overlap of patents between the two actions. Id. at 20.