NanoEn Tek, Inc. et al v. Bio-Rad Laboratories, Inc., No. 2:2011cv00427 - Document 40 (E.D. Va. 2011)

Court Description: MEMORANDUM OPINION AND TRANSFER ORDER that the defendant's Motion to Transfer Venue is GRANTED, and this case is TRANSFERRED to the Northern District of California; directing the Clerk to send a copy of this Memorandum Opinion and Transfer Order to counsel for the parties and the Clerk of the Northern District of California, and to effect the transfer forthwith. Signed by District Judge Rebecca Beach Smith and filed on 12/2/2011. (rsim)

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FILED UNITED STATES DISTRICT EASTERN DISTRICT COURT OF VIRGINIA DEC -2 2011 Norfolk Division Ci LHK V S O:v-5T-VIG1 COURT NANOENTEK, INC. DI6ITAL-BI0 r.-'-.:"-O: K. VA and TECHNOLOGY CO., LTD., Plaintiffs, CIVIL NO. v. BIO-RAD LABORATORIES, 2:llcv427 INC., Defendant. MEMORANDUM OPINION AND This is NanoEnTek, a patent Inc. and "Digital-Bio") Motion United to is This Transfer States California District ("Motion"). comes The to for defendant's (collectively court U.S.C. the plaintiffs Laboratories, the 28 by Ltd. Bio-Rad before Pursuant Court filed Technology, defendant Venue action § on to Bio-Rad's 1404 (a) to the District Northern Motion Inc. of Transfer Venue GRANTED. Procedural On alleges 7,842,157 Factual and Procedural History History August infringement Bio Digital-Bio matter I. A. infringement against ("Bio-Rad"). TRANSFER ORDER 2, action that (the 2011, against Bio-Rad "'157 has Digital-Bio Bio-Rad. been Patent"), In filed its infringing entitled a this patent complaint, Digital U.S. Patent "Method for Number Bonding Plastic of the Micro '157 using a Chips," Patent, product United using the process and by making, which States. Specifically, by is See the made offering by a Complaint complaint of one to sell, process SIU 10, alleges that or more claims selling, patented 16, the in the No. ECF *157 or 1. Patent is infringed in the process of making products including the "TC10 ¢ Automated Cell Counter" and "TC10 ¢ Counting Slides." The *157 and NanoEnTek, Inc. Id. SISI 10-12. On seeking transfer Motion, On to Patent November the November 23, November November 30, the Digital-Bio exclusive to on 2011, the Northern filed a 2011. 14, motion 2011, which and the The matter is District a patent. the instant of response California. in Bio-Rad leave to the Ltd., the filed file opposition filed a its surreply court granted on its surreply on filed defendant now of Co., 2011, for Digital-Bio 2011, Bio-Rad filed November Technology licensee 24, Digital-Bio and 2011. by October 16, 28, ripe for responded on review. Relevant Facts NanoEnTek, under the place of Bio is Digital-Bio November B. owned 2011, Motion, reply. on 7, is 3^ f 16. laws Inc. of business Technology Co., is the a Republic located Ltd. publicly-traded in is a of Seoul, Korea, Korea. subsidiary of company with Id. organized its SI principal 5. Digital- NanoEnTek, Inc., and is a corporation Korea, with Seoul. Id. its f incorporated in Transfer 6. Venue, part by place of is Delaware Ex. 1 H 3, infringing third party in Point Richmond, ECF the interest action been of to any other brought." grant a motion following been two brought interest justify 28 of to transfer Supp. 2d 731, Int'l, Inc., 250 to 735 F. 11-2 § or traded in id. corporation Supp. place of Decl."). is 1 Mot. of to Bio- performed which in is 11. this whether 630 where it civil might and conduct might (2) whether Inc. (quoting Va. have whether must the parties (E.D. the claims the Tax, in any deciding court forum; 2007) 627, transfer In JTH Va. may 1404(a). "Ml) witnesses, division venue, 2d in and court forum.'" Supp. located Engineering, See of (E.D. also process Grant convenience that of ("Hutton parties transferee and Republic Analysis of U.S.C. the principal Mem. California. transfer justice No. district the its See district inquiries: in with manufacturer, a of business manufacturing convenience justice, laws publically law, II. "For a California. a located the Bio-Rad Hercules, allegedly under principal under business Rad's organized the have the and witnesses v. Koh to Lee, v. 2003)). 482 F. Microtek A. The Northern District of California The have court been Pursuant to resides. 28 When judicial 1391(c); 1996 WL at is Hoffman Hercules, Pacas v. *1 (4th venue at Decl. 11 363 which is within before 3. Thus, as Northern District defendant" to 28 the Northern patent U.S.C. subject have of resides filed of court personal this action. (I960). is located in District Northern of of this jurisdiction brought this California for 415, table the to commencement personal F.3d District action, business the 83 "in personal (unpublished 343-44 since The resides commenced." was been district. it defendant 1996) of could the patent Inc., this 335, for subject Digital-Bio place unquestionably the time U.S. Digital-Bio where for action where might California. Farms, whether Bio-Rad the is Cir. determine principal See is Showell to has it action of corporation, action Blaski, and a which whether California, district is civil district the California, Hutton in any this District a time at there Bio-Rad's in proper a v. 1400(b), defendant also determine jurisdiction See § a Proper Venue whether Northern brought the Thus, determine the district 192058, California must be the see decision). in U.S.C. may jurisdiction § first brought infringement any must Is is purposes suit a of suit. exists, in that "judicial 28 U.S.C. § 1400(b), U.S.C. B. § so 1404(a), a there. In venue to following F. of See, 2d there justice Laser Sys., (E.D. Va. Inc. pursuant to 28 so dictate. 2000), in Elecs. Co., Ltd. 2005). entitled to plaintiff's no F. (E.D. of but the to 2d to there grant a of the 685, of and Inc. motion decide this action considers venue; (3) v. is chosen 386 117 a the (2) the the interest Micromuse, and chosen if the forum. F. the (E.D. Va. court, Supp. See, Supp. choice chosen cause forum." F. transfer Inc., of Lycos, 2007) 2d see that 708, a action v. (citing case 724 is 517 Samsung forum forum is Beam 515, e.g., of Inc. venue 2d presumption plaintiff's weight to district Inc., Inc., "the 692 court choice the normally Rambus, forum,' next Forum plaintiff's v. must California 2004). Commc'ns, substantial 'home Va. discretion However, relation Supp. 326 the Techs., of transfer witnesses; Agilent Cox court to plaintiff's and District the determination, whether v. Northern discretion the Choice sound stay its parties 322, should action, e.g., decision the this (1) the Plaintiff's within 499 transferred the this factors: Supp. The or be that for making justice. 1. Va. now convenience and exercise convenience 316 if determined proper whether of may Transfer is Warranted Having is venue (E.D. is not not the bears TiVo, little Inc., Telepharmacy Solutions, (E.D. Inc. Va. entitled argues to with contacts Supp. of agrees. to court is not are Digital-Bio witnesses 4, detail that No. its 2d 741, 743 13. The sales deference is arisen a plaintiffs' even to in its less of the choices of venue because the assumption becomes "much less 235, 255-56 ties through See that choice (1981). because as such but chosen ties forum Aircraft only in the expert to a Def.'s party Expert given both necessary entitle Further generally Piper it of operations. Opp'n venue. court District distributor from itself. reasonable." The Virginia, finds of the to Pis.' hardly far are 11. Virginia-based forum suit Mem. Virginia a of instructive, result Virginia." forum,' no "are other Eastern case. a of not or the with court personnel No. 'home is plaintiffs ECF significant this the forum 1, retention to of that notes products the product retention as of Venue companies has relation ECF U.S. Supp. choice District plaintiffs' it and in substantial 454 F. facilities, Eastern Transfer Korean sale Commonwealth Mot. 238 because known initially claims the weight the the plaintiffs cites Corp., Digital-Bio's no with Mot. The Virginia that substantial companies relevant in Pickpoint 2003)) . Bio-Rad Korean v. to witness have still, to only foreign less deference, is convenient Co. v. Reyno, Despite of Digital-Bio's Virginia, plaintiffs' action the a of would forum substantial fails claim that court choice had court the minimal to substantial to sufficient significant is that infringement including which of the production forms '157 of the the Eastern necessarily weight this if in its give the the cause of However, Digital-Bio's connections Instead, of District District. business basis Patent the connections. forum does not inform this inquiry.1 conduct to still relation find Bio-Rad has ties with the Bio-Rad's relevant this suit: methods "TC10 ¢ Automated of Cell its alleged production, Counter" and "TC10 ¢ Counting Slides." The products parties could determination assessment of disagree potentially of that transfer. that such sales true, that such sales 1 Digital-Bio's states whether infringe issue, assertion and about the however, Even Bio-Rad is this the dispositive of, defendant's general such alter Surreply, ties or carry great weight in, ECF No. 39. the Digital-Bio's infringement District, they is do to See Pis.' Opp'n to for jurisdictional the forum are the venue analysis. 2 See Pis.' Mem. of Surreply, ECF No. 32; Def.'s Opp'n Mem. to Pis.' The registered to do business in Virginia and does significant business here. Def.'s Mot. 4-5, ECF No. 13. While relevant purposes, not that of of Patent.2 does acts within sale '157 assuming constitute occur the not not is rise not to the level of a strong relation with this forum. It sufficient that: Virginia's residents purchase and use allegedly infringing products, methods, and systems from the defendants. [T]he defendants likely have this same contact with every other state in the nation. It is well-settled that the mere existence of limited sales activity within Virginia does not require this court to give the plaintiff's choice of forum substantial weight when balancing the convenience and justice factors. Lycos, 499 great pains not just Mot. in Mere but ECF at as that No. 13; and well of is See Hutton Digital-Bio a large Pis.' Decl. [Bio-Rad's] development, as of sales. Conversely, 14 total to the '157 California. patent See with Def.'s ("[O]nly a customers are for finance are Hutton to responsible "personnel marketing, company Opp'n f goes and the accused manufacturing process infringed District Indeed, Bio-Rad cf_;_ percentage research 692. global Virginia."). allegedly Northern 2d emphasize small activity," that to 4, relatively product Supp. national Part based F. located Decl. flfl legal itself, in the 6, 11. sales and marketing activity does not entitle Digital-Bio's choice of forum to substantial weight when none of the infringing products were developed or produced in this District. See 322, Agilent 327 Techs., (E.D. Va. Inc. 2004). v. Micromuse, The court Inc., 316 therefore F. finds Supp. 2d that the cause of Eastern action in this case bears these reasons, the court Digital-Bio's choice of forum. 635 and ("Thus, to the this judicial venue more Adtech, Inc., See, district, chosen with gives only e.g., slight Koh, weight to Supp. 2d 250 F. if there is little connection between the claims plaintiff's the relation District of Virginia. For at little 129 plaintiff's forum that and would weigh in militate favor substantial contacts."); F. 936, Supp. choice 2d of forum 939 because the defendant's sales were not transfer Acterna, (E.D. only of against Va. a to L.L.C. a v. (giving slight "very 2001) weight" "unique to Virginia" less than ten percent of total sales occurred here). and The court will focus on the remaining factors in determining the propriety of transfer. 2. Convenience of Parties and Witnesses Bio-Rad parties to Supp. to the of Mot. argument, that access and transfer argues Northern "[t]he sources to Transfer Venue 6, the "court witnesses, process.'" of District considers access to sources of proof, of factors Lycos, and 499 proof of convenience overwhelmingly California." ECF No. factors of 11. such the favor See Mem. in m weighing this as the 'ease of the cost of obtaining the attendance the F. of availability Supp. 2d at 693 of compulsory (quoting Samsung Elecs. Va. Co. v. Rambus, the "center outset, of the infringing since the a the claim for placing the 708, l:09cv47, 2009 May 4, see 2009); Supp. that Inc. 2d v. 517, 6, 11. reside in District this case. or also the 717 Dist. GTE n.13 (E.D. the non-party Eastern 3 The convenience of counsel Supp. The 2d court discussed 689, 698 does infra Imaging (E.D. not Part the Sys. Va. & 37797, Inc. are of the v. no Va. Inc., 71 reflects disputed Hutton Decl. evidence, party alleged to currently The of described as factors is not record See or Inc., (E.D. other "center sale of commerce." *4 Virginia. the of Qualcomm, and that making Nutrition, at v. Here, notes the stream in California. clearly convenience an Supplements designation has been the Cognitronics into witnesses is particularly infringing testing, District the upon 1999). court the where "typically is for Wireless, occurred cases arises LEXIS Va. patent manufactured, need product (E.D. California of or infringement U.S. contrast, This an analysis designed Bio-Engineered activity the of is development, In witnesses,4 which without 519 design, manufacturing for accused No 4 2d forum was product, Labs., F. Supp. preferred patent USA See F. activity," accused product accused even S1SI 386 2005)).3 At F. Inc., Northern activity" shorthand laid out below. See in for Koh, relevant to this analysis. Recognition Research Inc., 83 2000). overlook Digital-Bio's II.B.2.b. 10 expert witnesses, 250 F. Supp. various 2d at 638. "center components of of activity" the most the first alleged of the Transfer to Venue 6, ECF the District Northern Digital-Bio that this does changes to the identical this end to, considers result and the of the perhaps evidence, more posits that Bio-Rad case, will See 11. from it Mem. contest in likely Supp. potentially principal its place this See of Hutton assertion, but to factor because dispute to Mot. that the 11, ECF have No. of the this Northern 13. lessened relevant business Decl. instead <fl in 10. argues the documents The the the court files Bio-Rad's are files becomes factor falls District 5 of court importance documentation. lessened weight, of to imaged" and "largely electronic." physical some produce of Mot. Bio-Rad's California. technology location of all transfer No. of Def.'s in this simply no in "likely to be proximity according be fully factor should be given no weight because Opp'n court's the is evidence. come not in this case are that factors, documentary documentary will that court following analysis. infringer documentation Pis.' the Documentary Evidence Turning as these approach straightforward than, a. Although agrees of the However, while does agree not electronic irrelevant.5 completely California, in that There can favor where of all Grant Engineering also may have documents relevant to the case located in the Northern District of California. 11 information related to the allegedly infringing production resides. b. Party Witnesses Next, employees Bio-Rad located convenience that No. shift will Digital-Bio, both and it because Opp'n to "The to in Supp. also from Def.'s Mot. party proffer, asserting by to in affidavit or Norfolk witnesses inconvenience otherwise, materiality of inconvenience." first notes reduced Dist. that role LEXIS in that in the Koh, the the 377 97, considering 250 *4 whether of of 2d to more affordable, in has and Virginia. have burden details the case under degree The witnesses repeatedly a the 636. See USA Labs., transfer 12 at party analysis. ("Courts 7. testimony to enable evidence Supp. convenience court's at F. at is sufficient the assess based not witnesses id. more 6-8, would party to 13. and their potential to Venue District is whose transfer location. respecting the witnesses court a transfer this ECF No. witness by whose that include California, Transfer a either expert 6-10, of that to lodging retained Mot. Digital-Bio, asserts witnesses increased of Korea because has District asserts to conversely, convenient, Pis.' Mem. travel potential significantly Bio-Rad to its Northern inconvenience need that the be See 11. any in would forum. ECF argues court plays 2009 a U.S. emphasized 28 U.S.C. § 1404 (a), the same Further, is the weight the as insufficient court weighs the evidence consideration the inconvenience in in favor Bio-Rad Northern of court this highlights early in the a witnesses case. See Supp. the the 2d court be center the of n.13 involved products are However, while the & minimal must court in the degree find located in potentially Va. Bio-Rad to at need trial. to base that Micro, it the relevant such will Inc. v. 1998). Koh, provides are F. flight Bob manufacturing, accused products). 13 decisions & Q such a located Supp. in the 2d marketing, or and F. near that the accused at 636-37. costs, Daniel Chu, as 20 dilemma, at lodging Thomsen the Enters., activities and on later manufacture of 250 argument decisions arise K (naming Paul Patt, and venue Facing [who] and This make infringing design material." relevant with to witnesses Kortisova-Descamps, information of than again to employees the allegedly 6 See Hutton Decl. M 7-9 Veronika parties minimal testify need (E.D. "that the witnesses both the the information Memory infer to between and Affinity can by Digital-Bio objects that such witnesses needed material 955 witnesses."). more California tension 948, presented afforded attribute specific of trial, and non-party not transfer. District to to is Still, factor, identifies unlikely to direction. knowledge to this case.6 are witnesses inconvenience the either considers party inconvenience of for to Kun Guo, employees and it with financing does not specify determine would witnesses' strain transfer time, the of details Mot. the their home and expense, to some degree, witness despite ECF No. 13, of its that its employees does not identify testify, let potentially factor example any discuss in other travel (USA), costs LLC v. and minimize Pis.' Opp'n vague in that travel, by a to being materiality of such is Def.'s even the claims likely limited if the See Corp., 711 F. to true, to does forums, generally Supp. it testimony.8 also between Bio- transfer, as which, of Digital-Bio time. Microloops it alleging employee differences travel recognize specificity While lodging, relevant Still, the inconvenience expensive adequately witnesses. inconvenienced the of not would see witnesses. be can these more particular evidence more even would alone Digital-Bio's own for claims, is to district contesting inconvenience court inconvenience.7 court to 7, Techs. for the of trial inconvenience not which degree credulity Digital-Bio, Rad's by for Convergence 2d 626, 644- 7 Information such as the certainty and length of each witness's testimony, would be relative needed recognizes this the early assigning this absence to fully difficulty stage, element from assess in and work, to travel, inconvenience. determining such minimal ability such difficulties The etc. court considerations further at support weight. 8 Chanil Chung's declaration simply states "travel . . . is no more convenient for me and other Digital-Bio employees," without identifying any likely witnesses or their importance. Pis.' Opp'n to Def.'s Mot., Ex. 1 SI 14, 14 ECF No. 13-1. 45 (E.D. were Va. 2010) that, in located (finding Eastern District the plaintiff located different" if of the California). the record, in Hong case was a Kong the change evidence Virginia, would court in no of transferred Therefore, whether when not to the cannot venue will not or witnesses expenses be a "materially Northern District determine, find for based inconvenience on any of Digital-Bio's likely witnesses.9 Further, the decision to factor. "The is of 1006 F. little n.6 2dd 35, to of copy 9 No. of re and as (noting experts [,] compensated not even likely witnesses their testimony. of 13. The declarations experts, that v. See for fail expert Co., Eli that 726 for be their to & if 464 so"). all to Co., prepared the Opp'n 1002, witnesses, doing described Pis.' F.2d such must this witnesses Lilly indicated or Digital-Bio's influences paid Purina Lentz 2006) are has also paid that Commonwealth plaintiff's see role the Ralston (D.D.C. Digital-Bio significance ECF 37 their are experts In 1984); testify addition, 4, moment." does from convenience Cir. virtue travel experts (4th Supp. "by hire court of to In these potential Def.'s Mot. part, provided carbon describe any specific Digital-Bio's brief reference to the attorneys who prosecuted the '157 and their patent, see Pis.' accompanying to demonstrate Opp'n to declarations inconvenience. 15 Def.'s are Mot. 10, similarly ECF No. 13, insufficient inconvenience or an unwillingness to testify in California.10 The court, therefore, does not consider Digital-Bio to have made any sufficient showing of witness inconvenience. In sum, the court minimally weighs this factor in making its determination, but favors nonetheless finds it the Northern District of California. c. Third Party Witnesses Courts afford party witnesses. greater weight See Samsung, to 386 F. the convenience Supp. 2d at 718. argues that its third party manufacturer, employees, including Northern District relevant to the Richard Grant, of California trial. See and Hutton of non- Bio-Rad Grant Engineering, has who are whose Decl. located testimony * 11. in the will be Digital-Bio admits that information about the manufacturing process will be relevant to the case, but again argues that such issues unlikely to require witness testimony at the trial itself. Pis.' Opp'n to Def.'s Mot. 9, ECF No. 13. are See As discussed supra, the court can infer that "witnesses involved in the design and manufacture of the accused products are material." Supp. 2d at 636-37. Likewise, Koh, 250 F. there is no dispute that Grant See Pis.' Opp'n to Def.'s Mot., Ex. 16 SI 7, ECF No. Lanmgan Declaration"); id^, Ex. 18 1 6, ECF No. ( McDaniel Declaration") Division ... 13-16 13-18 (stating identically that "the Norfolk is clearly more convenient for me than Northern District of California"). 16 ' ' the Engineering's identified manufacturing third party is relevant witnesses are to this located case. in As the the Northern District of California, this factor weighs in favor of transfer. d. Compulsory Process The availability of compulsory process is also a strong factor if witness testimony can only be compelled in the desired forum. See Samsung, potential Northern 386 F. employee District and of compulsory process therefore, this transfer. Supp. third 2d at 719. party California, will Overall, be element, the at witnesses Bio-Rad needed to most, convenience Although Bio-Rad's reside does secure can not factors assert their only in that testimony; slightly weigh the in favor favor of transfer to the Northern District of California. 3. Interest of Justice The interest of justice factor "encompasses public interest factors aimed at Equifax Info. 2006) most Servs., (internal prominent economy and systemic integrity and fairness." LLC. quotation elements the marks of avoidance (citations omitted). considers "docket controversies 467 In at Supp. and of 2d 627, citations systemic evaluating home, 17 635 knowledge are in of Va. The "judicial judgments." fairness, interest (E.D. omitted). integrity inconsistent congestion, decided F. Byerson v. Id. this court having local applicable law, unfairness interest in in burdening avoiding forum citizens unnecessary with conflicts jury of duty, and law." id. (citations omitted). Frankly, case. most of these factors are neutral in the present Neither side has put forward any arguments about similar litigation that would raise concerns about judicial economy or inconsistent patent law, Additionally, judgments. there the As are this no Northern case arises potential District of under conflicts California federal of is laws. just as capable of applying federal patent law as this court. Bio-Rad argues that controversies decided at Supp. to Transfer Venue 8, of Mot. the citizens of this outcome of this case. the home" District "interest favors in having transfer. ECF No. 11. Mem. in it is true that have no special No manufacturing See local interest occurred here, in the and to the extent any infringement occurred through product sales, this District is certainly not unique.11 In contrast, should it be held liable for infringement, Bio-Rad would likely need to alter its manufacturing process and products, and could suffer economic harm that would presumably affect its employees in the Northern District of California. Northern District of California See discussion supra 7-8. 18 At is a more basic level, the defendant's home the forum. Thus, this factor supports transfer to that district. Brasseler GmbH 2009 Dist. LEXIS this factor U.S. (applying & Co. KG v. Abrasive 25926, at *16 similarly in Tech., (E.D. an See Gebr. Inc., Va. l:08cvl246, Mar. 27, intellectual 2009) property dispute). Digital-Bio claims that relative docket conditions militate against transfer because this case would progress to trial at a more rapid pace California. However, where, in this Pis.' docket court Opp'n to conditions as here, than in the Northern District Def.'s are Mot. only "a 12-13, minor ECF No. "all other reasonable and logical factors would GTE Wireless, 71 F. Supp. 520; Sys., Supp. 2d Cognitronics (explaining reason also do Techs-> speeds District justice that for 711 in always Fthe of do Imaging docket declining not conditions to transfer tell Supp. 2d Eastern strongly the at 643 a favor case. 19 F. not case) . story. (comparing of Taken 83 should whole District California). not 13. consideration" result in a transfer of venue." see of Virginia together, transfer or be the Docket 2d at at 699 primary statistics See Convergence patent litigation to the the Northern interests retention of of this III. Digital-Bio's substantial not its the instant this file 250 California. retention of F. California, this this as at of is has The this does not factors at entitled of this transfer whole, the Virginia District, impede The to that and Digital- if the another forum. Northern factors District factor considerations, See is transfer, to only to relation to convenience the the docket fact point 635. transfer. of favoring which Cognitronics are Imaging 699. transfer which a to case Opinion the stronger defendant's California. Memorandum court a case 2d to circumstances, 2d prevent Supp. not District connection justice favor this no is not have more than a minimal Supp. in to and of has such and F. appropriate. District it in Accordingly, GRANTED, Eastern Taken insufficient 83 the Under uniformly weigh Sys., because convenience Koh, forum action does Bio chose to See of forum, District. other choice weight home Conclusion connection Motion is hereby The Clerk and to is this to to to is Venue is the send of case, Transfer DIRECTED Order District with TRANSFERRED Transfer 20 Northern Northern a counsel copy of for the parties and the Clerk of and to effect the IT IS the Northern transfer District of California, forthwith. SO ORDERED, 1st Rebecca Beach Smith United States District Judge REBECCA UNITED Norfolk, December Virginia £> , 2011 21 BEACH STATES SMITH DISTRICT JUDGE

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