Mitel Networks Corp. v. Facebook, Inc.

943 F. Supp. 2d 463, 2013 WL 1856457, 2013 U.S. Dist. LEXIS 62117
CourtDistrict Court, D. Delaware
DecidedMay 1, 2013
DocketC.A. No. 12-cv-325 (GMS)
StatusPublished
Cited by22 cases

This text of 943 F. Supp. 2d 463 (Mitel Networks Corp. v. Facebook, Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Delaware primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Mitel Networks Corp. v. Facebook, Inc., 943 F. Supp. 2d 463, 2013 WL 1856457, 2013 U.S. Dist. LEXIS 62117 (D. Del. 2013).

Opinion

MEMORANDUM OPINION

GREGORY M. SLEET, Chief Judge.

I. INTRODUCTION

On March, 16, 2012, the plaintiffs, Mitel Networks Corporation (“Mitel Networks”) and Mitel (Delaware), Inc. (“Mitel Delaware”) (collectively, “Mitel” or “the plaintiffs”), initiated the instant action against Facebook, Inc. (“Facebook”). (D.I. 1.) The plaintiffs allege infringement of U.S. Patent Nos. 5,940,834 (“the '834 Patent”) and 7,292,685 (“the '685 Patent”). (Id. at ¶¶ 9-22.) Presently before the court is Face-book’s Motion to Transfer this action to the Northern District of California pursuant to 28 U.S.C. § 1404(a). (D.I. 18.) For the reasons that follow, the court will grant Facebook’s Motion to Transfer. (Id.)

II. BACKGROUND

As described in the Complaint and the parties’ briefing, Mitel Networks is a Canadian corporation with its principal place of business in Ontario, Canada. (D.I. 1 at ¶ 1.) Mitel Delaware is a Delaware corporation with its principal place of business in Chandler, Arizona. (Id. at ¶ 2.) Mitel Delaware is a subsidiary of Mitel Networks and, according to the Complaint, is responsible for U.S. operations, including sales and marketing, for Mitel Networks. (Id. at ¶ 2.) Facebook is a Delaware corporation with its principal place of business in Menlo Park, California. (Id. at ¶ 3.)

III. STANDARD OF REVIEW

Under 28 U.S.C. § 1404(a), a district court has “broad discretion to determine, on an individualized, case-by-case basis, whether the convenience and fairness considerations weigh in favor of transfer.”1 Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir.1995). The court engages in a two-step inquiry. It first determines whether the action could have been brought originally in the proposed transferee forum and then asks whether transfer would best serve the convenience of the parties and witnesses as well as the interests of justice. Smart Audio Techs., LLC v. Apple, Inc., No. 12-134-GMS, 910 F.Supp.2d 718, 723-24 (D.Del.2012). It is the defendant’s responsibility to demonstrate that transfer is appropriate at each step, Jumara, 55 F.3d at 879-80, and, “unless the balance of convenience of the parties is strongly in favor of defendant, the plaintiffs choice of forum should prevail.” Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970).

IV. DISCUSSION

A. The Propriety of the Transferee Forum

The court may only transfer an action to a “district or division where it [468]*468might have been brought.” 28 U.S.C. § 1404(a). Accordingly, the court may only grant the defendant’s motion to transfer to the Northern District of California if venue would have been proper there and if that district court could have exercised personal and subject matter jurisdiction over this action. 17 James Wm. Moore et al., Moore’s Federal Practice § 111.12[b] (3d ed. 2012).

The defendant argues, and the plaintiffs do not dispute, that this action could have been brought in the Northern District of California. (D.I. 19; D.I. 24; D.I. 29.) Indeed, Facebook’s principal place of business and headquarters is in Menlo Park, California and was established in Palo Alto in June 2004. (D.I. 19 at 3.) In addition, Facebook filed suit against Mitel Networks and Mitel Delaware in the proposed transferee forum on August 10, 2012 alleging infringement of two of Facebook’s unrelated patents. (Id. at 4.) Under 28 U.S.C. § 1400(b), “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” Venue, therefore, would have been proper in the Northern District of California, because Facebook’s headquarters and principal place of business are located in that District. Likewise, personal jurisdiction would have existed due to the Facebook’s presence in California, and subject matter jurisdiction would have existed under 28 U.S.C. § 1338.2 Thus, the court finds that this action might have been brought originally in the proposed transferee forum and proceeds to the second stop of the transfer analysis.

B. The Jumara Analysis

The court next must consider whether transfer to the Northern District of California would serve the interests of convenience and justice. In the Third Circuit, this requires- an individualized analysis, considering the various private and public interests guarded by § 1404(a). See Jumara, 55 F.3d at 879. To this end, the court does not apply any “definitive formula,” but, instead, considers each of these “Jumara factors” on a case-by-case basis. See id. The private interests may include:

plaintiffs forum preference as maintained in the original choice; the defendant’s preference; whether the claim arose elsewhere; the convenience of the parties as indicated by their relative physical and financial condition; the convenience of the witnesses — but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).

Id. The public interests may include:

the enforceability of the judgment: practical considerations that could make the trial easy, expeditious, or inexpensive; the relative administrative difficulty in the two fora resulting from court congestion; the local interest in deciding local controversies at home; the public policies of the fora; and the familiarity of the trial judge with the applicable state law in diversity cases.

Id. at 879-80. The court addresses each of these “Jumara factors” in turn.

1. Private Interest Factors

a. Plaintiffs forum preference

The first private interest factor is the “plaintiffs forum preference as mani[469]*469fested in the original choice.” Jumara, 55 F.3d at 879. Facebook argues that Mitel’s choice of forum is entitled to little weight, because Mitel has chosen to litigate in Delaware, which is not its “home turf,” and is a forum with little connection to this case. (D.I. 19 at 6-7; D.I. 29 at 3-4.) Facebook also asserts that Mitel Networks, not Mitel Delaware, is the real party in interest in this case and that Mitel Delaware was added as a co-plaintiff simply for jurisdictional purposes due to its incorporation in Delaware. (D.I.

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943 F. Supp. 2d 463, 2013 WL 1856457, 2013 U.S. Dist. LEXIS 62117, Counsel Stack Legal Research, https://law.counselstack.com/opinion/mitel-networks-corp-v-facebook-inc-ded-2013.