Papst Licensing GmbH & Co. KG v. Lattice Semiconductor Corp.

126 F. Supp. 3d 430, 2015 WL 5138154
CourtDistrict Court, D. Delaware
DecidedSeptember 1, 2015
DocketCivil Action No. 14-1375-LPS-CJB, Civil Action No. 14-1376-LPS-CJB, Civil Action No. 15-162-LPS-CJB
StatusPublished
Cited by30 cases

This text of 126 F. Supp. 3d 430 (Papst Licensing GmbH & Co. KG v. Lattice Semiconductor Corp.) 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
Papst Licensing GmbH & Co. KG v. Lattice Semiconductor Corp., 126 F. Supp. 3d 430, 2015 WL 5138154 (D. Del. 2015).

Opinion

MEMORANDUM ORDER

Christopher J. Burke, UNITED STATES MAGISTRATE JUDGE

Plaintiff Papst Licensing GmbH & Co. KG (“Papst” or “Plaintiff’) filed the instant three actions for patent infringement against Defendants Lattice Semiconductor, Corp. (“Lattice”), Xilinx, Inc. (“Xilinx”) and Altera Corporation (“Altera”) (collectively, “Defendants”). Presently pending before the Court are Defendants’ motions to transfer venue to the Northern District of California (“Motions” or “motions to transfer”). For the reasons that follow, Defendants’ Motions are GRANTED.

I. BACKGROUND

A. The Parties

Plaintiff Papst is a German corporation with its principal place of business in St. Georgen, Germany. (D.I. 1 at ¶ 1, Civil Action No. 14-1375-LPS-CJB)1 According to Plaintiff, Papst is “a patent licensing company protecting its own and others’ intellectual property rights.” (Id. at ¶ 6)

Defendants are all companies active in the programmable logic devices industry and are all incorporated in Delaware. [435]*435(D.I. 1 at ¶ 2; D.I. 18 at ¶ 3; D.I. 14 at 3, D.I. 16 at ¶ 6, Civil Action No. 14-1376-LPS-CJB; D.I. 13 at ¶ 2, D.I. 14, ex. 1 at ¶ 1, Civil Action No. 15-162-LPSCJB) None of the Defendants have any offices or employees within Delaware. (D.I. 18 at ¶4; D.I. 16 at ¶6, Civil Action No. 14-1376-LPS-CJB; D.I. 13 at ¶ 11, Civil Action No. 15-162-LPSCJB) Lattice is headquartered in Oregon, and has its primary research and development facility located in San Jose, California, in the Northern District of California. (D.I. 18 at ¶ 3) Xi-linx and Altera are both headquartered and have their principal places of business in San Jose, California. (D.I. 16 at ¶ 2, Civil Action No. 14-1376-LPS-CJB; D.I. 13 at ¶ 2, Civil Action No. 15-162-LPS-CJB)

B. Procedural Background

The instant cases are three of a group of five related cases that were filed in late 2014. Three of those five cases — the instant three cases — were filed in this District (“the Delaware Actions”); the other two were filed in the Northern District of California (together, “the California Actions”).

The first of the five related cases to be filed was a declaratory judgment action, which Altera filed against Papst on October 28, 2014 in the Northern District of California (the “Altera California Action”). (Altera Corp. v. Papst Licensing GmbH & Co. KG (“Altera Corp. ”), D.I. 1, Civil Action No. 14-04794-LHK (N.D.Cal.)) Papst then filed the two infringement actions in this District against Lattice and Xilinx, respectively, on November 7, 2014. (D.I. 1; D.I. 1, Civil Action No. 14-1376-LPS-CJB) Next, within hours of Papst filing its action against Xilinx, Xilinx filed a declaratory judgment action against Papst in the Northern District of California (the “Xilinx California Action”). (Xilinx, Inc. v. Papst Licensing GmbH & Co. KG (“Xilinx ”), D.I. 1, Civil Action No. 14-04963-LHK) Finally, Papst brought an infringement suit against Altera in this District months later, on February 17, 2015. (D.I. 1, CM Action No. 15-162-LPS-CJB)

The California Actions both sought declaratory judgments of noninfringement and invalidity as to United States Patent Nos. 6,574,759 and 6,704,891. (Xilinx, D.I. 1 at ¶ 1; Altera Corp., D.I. 1 at ¶ 4) Papst is the current owner and assignee of the patents-in-suit, having ultimately acquired them from Rambus, Inc. (“Rambus”), (D.I. 1 at ¶ 7), apparently in 2012, (D.I.19, exs. D-E). The patents-in-suit are “generally directed towards methods for generating and verifying tests for memory.” (D.I. 1 at ¶ 8)

The Delaware Actions all concern these same two patents (hereinafter, the “patents-in-suit”). Papst alleges that Defendants have directly infringed the patent-in-suits in Delaware and elsewhere by “making, having made, using, offering for sale, and/or selling the claimed methods for generating and verifying a test of memory.” (See, e.g., D.I. 1 at ¶¶ 13, 19) It alleges that Defendants have indirectly infringed the patents as well, through the provision of their design software, the sale of their Field Programmable Gate Array (or “FGPA”) semiconductor devices and related equipment, and their provision of instruction to their customers. (See, e.g., id. at ¶¶ 15, 21)

All of the Delaware Actions are assigned to Chief Judge Leonard P. Stark; all have been referred to the Court by Chief Judge Stark for all matters relating to scheduling and for resolution of any motions to dismiss, stay, and/or transfer venue. (See, e.g., D.I. 5) Lattice, Xilinx and Altera filed their motions to transfer on March 2, 2015, February 2, 2015 and March 31, 2015, respectively. (D.I. 16; D.I. 13, Civil Ac[436]*436tion No. 14-1376-LPS-CJB; D.I. 11, Civil Action No. 15-162-LPS-CJB) Altera’s motion to transfer was a bit different than those of the other two Defendants; it was styled as a motion to dismiss the case against it in light of the “first-filed” Altera California Action, or, in the alternative, as a motion to stay or transfer. (D.I. 11, Civil Action No. 15-162-LPS-CJB)

Briefing on all of the motions to transfer was completed by April 27, 2015. (D.I. 18, Civil Action No. 15-162-LPS-CJB) The Court subsequently held a Case Management Conference on June 1, 2015, and issued a Scheduling Order on June 8, 2015. {See, e.g., D.I. 32)

II. DISCUSSION

A. Legal Standard

1. Motion to Transfer Venue

Section 1404(a) of Title 28 provides the statutory basis for a transfer inquiry. It provides that “[f]or the convenience of 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).

The party seeking a transfer has the burden “to establish that a balancing of proper interests weights] in favor of the transfer[.]” Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970) (citation omitted); see also Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir.1995).2 That burden is a heavy one; “unless the balance of convenience of the parties is strongly in favor of defendant, the plaintiffs choice of forum should prevail.” Shutte, 431 F.2d at 25 (internal quotation marks and citation omitted) (emphasis added); see also CNH Am. LLC v. Kinzenbaw, C.A. No. 08-945(GMS), 2009 WL 3737653, at *2 (D.Del. Nov. 9, 2009).

The Third Circuit has observed that courts must analyze “all relevant factors” to determine whether “the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum.” Jumara, 55 F.3d at 879 (internal quotation marks and citation omitted). Nevertheless, it has identified a set of private interest and public interest factors that are appropriate to account for in this analysis (the “Jumara factors”). The private interest factors to consider include:

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126 F. Supp. 3d 430, 2015 WL 5138154, Counsel Stack Legal Research, https://law.counselstack.com/opinion/papst-licensing-gmbh-co-kg-v-lattice-semiconductor-corp-ded-2015.