Va. Innovation Scis., Inc. v. Samsung Elecs. Co.

928 F.Supp.2d 863

VIRGINIA INNOVATION SCIENCES, INC., Plaintiff,

v.SAMSUNG ELECTRONICS CO., LTD., et al., Defendants.

Case No. 2:12cv548.

United States District Court,

E.D. Virginia,

Norfolk Division.

March 6, 2013.

Aaron Ward Purser, Timothy E. Grochocinski, Innovalaw, P.C., Orland Park, IL, W. Ryan Snow, David Caldwell Hartnett, Crenshaw Ware & Martin PLC, Norfolk, VA, Edward E. Casto, Jr., Pro Hac, Vice, Edward R. Nelson, III, Pro Hac, Vice Jonathan Hart Rastegar, Pro Hac, Vice Thomas C. Cecil, Pro Hac, Vice Nelson Bumgardner Casto, P.C., Fort Worth, TX, for Plaintiff.

Brett Johnston Williamson, Pro Hac, Vice, Cameron William Westin, Pro Hac, Vice, Sanjeev Mehta, Pro Hac, Vice, O'Melveny & Meyers LLP, Newport Beach, CA, Eric Samuel Namrow, Pro Hac, Vice, O'Melveny & Myers LLP, Washington, DC, Marc M. Breverman, Pro Hac, Vice, O'Melveny & Myers LLP, Los Angeles, CA, Robert William McFarland, Sarah Kate McConaughy, McGuireWoods LLP, Norfolk, VA, Susan Van Keulen, O'Melveny & Myers LLP, Pro Hac, Vice, Menlo Park, CA, for Defendants.

OPINION AND ORDER

MARK S. DAVIS, District Judge.

This matter is before the Court on Defendants Samsung Electronics Co., LTD (“SEC”), Samsung Electronics America, Inc. (“SEA”), and Samsung Telecommunications America, LLC's (“STA”) (collectively “Defendants”) Motion to Transfer Venue to the United States District Court for the District of New Jersey, pursuant to 28 U.S.C. § 1404(a) and alternative request for limited discovery concerning venue. ECF Nos. 29–30. For the reasons set forth herein, Defendants' motion to transfer and request for venue-related discovery are DENIED.

I. FACTUAL AND PROCEDURAL HISTORY

Plaintiff Virginia Innovation Sciences, Inc. (“VIS”) filed the instant action against Defendants in the Alexandria Division of this District on October 4, 2012. VIS accuses Defendants of infringing several of VIS's patents: U.S. Patent No. 7,899,492 (“the '492 patent”), U.S. Patent No. 8,050,711 (“the ' 711 patent”), U.S. Patent No. 8,145,268 (“the '268 patent”), U.S. Patent No. 8,224,381 (“the '381 patent”), U.S. Patent No. 7,957,733 (“the '733 patent”), and U.S. Patent No. 8,135,398 (“the '398 patent”). These patents describe “methods, systems, and apparatus for displaying multimedia information from wireless connection networks” and “methods and apparatus for multimedia communications with different user terminals.” See ECF No. 1, Exs. A–F. VIS alleges that Defendants have infringed its patents by making, using, offering for sale, selling, and/or importing a wide range of accused products, including smartphones, tablets, Blue-ray players, and hubs. After the filing of the Complaint in the Alexandria Division of this Court, the action was subsequently transferred to this Division, pursuant to District policy concerning the rotation of certain cases.

VIS is a Virginia corporation with its principal place of business in Arlington, Virginia. SEC is a corporation organized under the laws of South Korea with its principal place of business in Seoul, Republic of Korea. SEA is a New York corporation and wholly owned subsidiary of SEC with its principal place of business in Ridgefield Park, New Jersey.¹ STA is a Delaware corporation and wholly owned subsidiary of SEC with its principal place of business in Richardson, Texas.

On January 14, 2013, Defendants filed the instant Motion to Transfer Venue to the District of New Jersey. ECF No. 29. In their memorandum in support of such motion, Defendants alternatively seek leave to conduct limited discovery on the question of venue. ECF No. 30. VIS filed its opposition memorandum on January 28, 2013. ECF No. 41. Defendants filed a reply memorandum on January 31, 2013. ECF No. 46. On February 19, 2013, this Court conducted a status conference at which it heard oral argument on the motion to transfer and alternative request for limited discovery. The Court took the matter under advisement and now issues its findings as set forth below.

II. LEGAL STANDARD

Title 28, United States Code, Section 1404(a) provides that “[f]or the convenience of the parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought or to any district or division to which all parties have consented.” 28 U.S.C. § 1404(a). Section 1404(a) “is intended to place discretion in the district court to adjudicate motions for transfer according to an ‘individualized, case-by-case consideration of convenience and fairness.’ ” Stewart Org., Inc. v. Ricoh, Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988) (citing Van Dusen v. Barrack, 376 U.S. 612, 622, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964)); see also Cognitronics Imaging Sys., Inc. v. Recognition Research Inc., 83 F.Supp.2d 689, 696 (E.D.Va.2000) (recognizing the discretion the district court has to transfer to a more convenient forum).

The burden is on the movant to show that transfer pursuant to Section 1404(a) is proper. Cognitronics, 83 F.Supp.2d at 696. In a patent infringement action, motions to transfer venue pursuant to Section 1404(a) are governed by the law of the regional circuit in which the Court sits. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1352 (Fed.Cir.2000).

In order to determine whether a transfer of venue is appropriate, “a district court must make two inquires: (1) whether the claims might have been brought in the transferee forum, and (2) whether the interest of justice and convenience of the parties and witnesses justify transfer to that forum.” Koh v. Microtek Intern., Inc., 250 F.Supp.2d 627, 630 (E.D.Va.2003). Respecting the first inquiry:

The transferee venue is one in which the action ‘might have been brought’ if, at the time of the filing of the action, the district court therein could have exercised personal jurisdiction over the defendants and the district was a proper venue for the action without waiver or consent by the defendants.

Nationwide Mut. Ins. Co. v. The Overlook, LLC, No. 4:10cv69, 2010 WL 2520973, at *3 (E.D.Va. June 17, 2010) (citing Kontoulas v. A.H. Robins Co., Inc., 745 F.2d 312, 315 (4th Cir.1984)). Once the movant has shown that the transferee venue is a propervenue, the district court considers whether the convenience of the parties and witnesses and the interest of justice support transfer. See28 U.S.C. § 1404(a). As part of this second inquiry, the district court looks to four principal factors: (1) the plaintiff's initial choice of venue; (2) witness convenience and access; (3) the convenience of the parties; and (4) the interest of justice. JTH Tax, Inc. v. Lee, 482 F.Supp.2d 731, 736 (E.D.Va.2007). Generally, the first factor-a plaintiff's choice of venue-is given substantial weight as “[i]t is well settled that a court should rarely disturb a plaintiff's choice of forum unless the balance of hardships clearly favor transfer....” Verizon Online Servs., Inc. v. Ralsky, 203 F.Supp.2d 601, 623–24 (E.D.Va.2002).

Ultimately, the movant must show “that transfer does more than merely ‘shift the inconvenience to the other party.’ ” JTH Tax, 482 F.Supp.2d at 736 (quoting DMP Corp. v. Fruehauf Corp., 617 F.Supp. 76, 77 (W.D.N.C.1985)). “[T]he balance of convenience among the parties and witnesses [must weigh] strongly in favor of the forum to which transfer is sought.” Nationwide Mut. Ins., 2010 WL 2520973, at *3 (quoting Nossen v. Hoy, 750 F.Supp. 740, 742 (E.D.Va.1990)) (emphasis in original).

III. DISCUSSION

A. Jurisdiction of the Potential Transferee Forum

In order to determine whether the transferee court is a district where the cause of action “might have been brought,” the Court must determine whether Plaintiff's claims could have been brought in the transferee court initially. Agilent Techs., Inc. v. Micromuse, Inc., 316 F.Supp.2d 322, 325 (E.D.Va.2004). The phrase “might have been brought” has been interpreted to mean that “when a suit is commenced, plaintiff has a right to sue in that district, independently of the wishes of defendant.” Hoffman v. Blaski, 363 U.S. 335, 344, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960); see also Agilent, 316 F.Supp.2d at 324. If the claims could have been brought in the transferee court initially, the subsequent decision to transfer venue is within the discretion of the court. One Beacon Ins. Co. v. JNB Storage Trailer Rental Corp., 312 F.Supp.2d 824, 828 (E.D.Va.2004) (citing Verosol B.V. v. Hunter Douglas, Inc., 806 F.Supp. 582, 591 (E.D.Va.1992)).

Under 28 U.S.C. § 1400(b), venue in patent infringement lawsuits is proper in any “district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U.S.C. § 1400(b) (emphasis added). A corporate defendant resides in any district in which it is subject to personal jurisdiction. 28 U.S.C. § 1391(c).

Both parties agree that VIS's patent infringement claims could have been brought in the District of New Jersey. Defs.' Br. in Supp. of Mot. to Transfer at 5, ECF No. 30; Pl.'s Resp. to Defs.' Mot. to Transfer at 4, ECF No. 41. SEA is a wholly owned subsidiary of SEC with its principal place of business in New Jersey. Additionally, at the status conference, Defendants represented that, although SEC and STA are not headquartered in New Jersey, their employees regularly travel to New Jersey and that the companies maintain offices there. Therefore, it is clear that this civil action “might have been brought” in the District of New Jersey. See28 U.S.C. § 1404(a); 28 U.S.C. § 1391(c).

B. Purposes Served by Transfer

Having determined that this action could have been brought in the transferee forum, the Court next considers whether the interestof justice and the convenience of the parties and witnesses justify transfer to the District of New Jersey. Koh, 250 F.Supp.2d at 630. This second prong of the analysis under Section 1404(a) requires the Court to balance four principal factors: “(1) plaintiff...