Case 1:11-cv-00797-RGA Document 94-3 Filed 12/19/11 Page 1 of 11 PageID #: 556
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`Case 1:11-cv-00797-RGA Document 94-3 Filed 12/19/11 Page 2 of 11 PageID #: 557
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`Slip Copy, 2011 WL 2911797 (D.Del.)
`(Cite as: 2011 WL 2911797 (D.Del.))
`
`Only the Westlaw citation is currently available.
`
`United States District Court,
`D. Delaware.
`HUMAN GENOME SCIENCES, INC., Plaintiff,
`v.
`GENENTECH, INC. and City of Hope, Defendants.
`Human Genome Sciences, Inc., Plaintiff,
`v.
`Genentech, Inc., Defendant.
`Human Genome Sciences, Inc., Plaintiff,
`v.
`Genentech, Inc. and City of Hope, Defendants.
`
`C.A. Nos. 11–082–LPS, 11–156–LPS, 11–328–LPS.
`July 18, 2011.
`
`Adam W. Poff, Esq. and Monté T. Squire, Esq. of
`Young Conaway Stargatt & Taylor, LLP, Wilming-
`ton, DE, Henry B. Gutman, Esq., Aimee H. Gold-
`stein, Esq., and Noah M. Leibowitz, Esq. of Simpson
`Thatcher & Bartlett LLP, New York, NY, Harrison J.
`Frahn IV, Esq. of Simpson Thacher & Bartlett LLP,
`Palo Alto, CA, Arman Y. Oruc, Esq. of Simpson
`Thacher & Bartlett LLP, Washington, D.C., for
`Plaintiff.
`
`Philip A. Rovner, Esq. and Jonathan A. Choa, Esq. of
`Potter Anderson & Corroon LLP, Wilmington, DE,
`Daralyn Durie, Esq., Ragesh K. Tangri, Esq., Joshua
`H. Lerner, Esq., and Genevieve Rosloff, Esq. of
`Durie Tangri LLP, San Francisco, CA, Kenneth A.
`Gallo, Esq. and Craig A. Benson, Esq. of Paul,
`Weiss, Rifkind, Wharton & Garrison LLP, Washing-
`ton, D.C., for Defendant Genentech, Inc.
`
`Philip A. Rovner, Esq. and Jonathan A. Choa, Esq. of
`Potter Anderson & Corroon LLP, Wilmington, DE,
`Daralyn Durie, Esq., Ragesh K. Tangri, Esq., Joshua
`H. Lerner, Esq., and Genevieve Rosloff, Esq. of
`Durie Tangri LLP, San Francisco, CA, Kenneth A.
`Gallo, Esq. and Craig A. Benson, Esq. of Paul,
`Weiss, Rifkind, Wharton & Garrison LLP, Washing-
`ton, D.C. Daniel M. Wall, Esq. of Latham & Watkins
`LLP, San Francisco, CA, for Defendant City of
`
`Page 1
`
`Hope.
`
`MEMORANDUM OPINION
`STARK, District Judge.
`*1 Three lawsuits are pending before the Court
`in which Human Genome Sciences, Inc. (“HGS”)
`asserts declaratory judgment, antitrust, Lanham Act,
`and state
`tort claims against Genentech, Inc.
`(“Genentech”) and City of Hope (“COH”) (together,
`“Defendants”) based on two patents co-owned by
`Defendants: U.S. Patent No. 6,331,415 (the “Cabilly
`II patent”) and U.S. Patent No. 7,923,221 (the “Ca-
`billy III patent”) (collectively, “the patents-in-suit”).
`See 11–cv–082–LPS; 11–cv–156–LPS; 11–cv–328–
`LPS. Presently before the Court are Defendants' mo-
`tions to transfer venue to the Central District of Cali-
`fornia (the “Central District”), brought pursuant to 28
`U.S.C. § 1404(a). (11–cv–082–LPS D.I. 10; 11–cv–
`156–LPS D.I. 8; 11–cv–328–LPS D.I. 5) FN1 Also
`pending before the Court are: Defendants' motion to
`stay Civil Action No. 11–cv–082–LPS or dismiss
`pursuant to Rules 12(b)(2), (3), and (7) (D.I.10);
`HGS's motion for leave to supplement the complaint
`in Civil Action No. 11–cv–082–LPS (D.I.36); Genen-
`tech's motion to stay Civil Action No. 11–cv–156–
`LPS or dismiss that action pursuant to Rule 12(b)(6)
`(11–cv–156–LPS D.I. 5); Genentech's motion to con-
`solidate Civil Action No. 11–cv–156–LPS with Civil
`Action No. 11–cv–082–LPS (11–cv–156–LPS D.I.
`8); and Defendants' motion to stay Civil Action No.
`11–cv–328–LPS or dismiss that action pursuant to
`Rules 12(b)(2), (3), and (7) (11–cv–328–LPS D.I. 5).
`The Court held a hearing on the pending motions on
`May 18, 2011. See Mot. Hr'g Tr., May 18, 2011
`(D.I.43) (hereinafter “Tr.”). For the reasons set forth
`below, Defendants' motions to transfer venue are
`GRANTED and the remaining motions are DENIED
`without prejudice to renew in the Central District.
`
`FN1. Unless otherwise noted, all record cita-
`tions hereinafter refer to docket items in 11–
`cv–82–LPS.
`
`The Parties
`HGS is a corporation organized under the laws
`of Delaware. (D.I. 1 ¶ 7) HGS's principal place of
`business is Rockville, Maryland. (Id.)
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-3 Filed 12/19/11 Page 3 of 11 PageID #: 558
`Page 2
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`Slip Copy, 2011 WL 2911797 (D.Del.)
`(Cite as: 2011 WL 2911797 (D.Del.))
`
`Genentech is a corporation organized under the
`laws of Delaware. (Id. ¶ 8) Genentech's principal
`place of business is San Francisco, California. (Id.)
`COH is a not-for-profit organization formed under
`the laws of California. (Id. at ¶ 9) COH's principal
`place of business is Duarte, California. Genentech
`and COH jointly own the patents-in-suit, but COH
`has granted Genentech an exclusive license to patents
`which it owns or controls in return for royalty pay-
`ments. (See D.I. 15, Ex. F ¶¶ 1.07, 4.01) The Cabilly
`II patent has generated millions of dollars in royalty
`revenues. In 2007 and 2008, the royalty revenue was
`$256 million and $298 million respectively, of which
`COH's share was $50 million and $61 million. (D.I.
`20, Ex. B at 52)
`
`The Cabilly II patent has been involved in nu-
`merous lawsuits, all of which (other than the instant
`cases) were brought or transferred to the Central Dis-
`trict. The first suit was brought by Defendants' licen-
`see MedImmune Inc. and was dismissed in June of
`2008. See MedImmune Inc. v. Genentech, Inc.,
`2:023–cv–2567 MRP (C.D.Cal). The second was a
`declaratory judgment suit brought by Centocor, Inc.
`See Centocor Inc. v. Genentech, Inc., 2:08–cv–3573
`MRP (C.D.Cal). The third is a declaratory judgment
`action brought by Glaxo Group Ltd. in the Northern
`District of California, which was subsequently trans-
`ferred to the Central District. See Glaxo Group Ltd. v.
`Genentech, Inc., 3:10–cv–675 JSW (N.D.Cal); Glaxo
`Group Ltd. v. Genentech, Inc., 2:10–cv–2764 MRP
`(C.D.Cal.).
`
`*2 The Cabilly III patent is the subject of a law-
`suit brought by Defendants and currently pending in
`the Central District as well, Genentech, Inc. and City
`of Hope v. Glaxo Group Ltd. et al., 2:11–cv–3065
`MRP (C.D.Cal). Among the parties named as Defen-
`dants in the Central District's Cabilly III patent case
`is HGS, the Plaintiff in the instant action.
`
`Section 1404(a)
`Defendants' requests to transfer arise under 28
`U.S.C. § 1404(a), which provides: “For the conven-
`ience of the parties and witnesses, in the interests of
`justice, a district court may transfer any civil action
`to any other district or division where it might have
`been brought.” Specifically, Defendants jointly ask
`that the Court transfer the three pending actions to the
`Central District.
`
`A pplicable Legal Standards
`Section 1404(a), as the Third Circuit has ex-
`plained, “was intended to vest district courts with
`broad discretion to determine, on an individualized,
`case-by-case basis, whether convenience and fairness
`considerations weigh in favor of transfer.” Jumara v.
`State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir.1995);
`see also Stewart Org., Inc. v. Ricoh Corp., 487 U.S.
`22, 29 (1988); Cypress Semiconductor Corp. v. Inte-
`grated Circuit Sys., Inc., 2001 WL 1617186, at *2
`(D.Del. Nov. 28, 2001) (“Congress intended through
`§ 1404 to place discretion in the district court to ad-
`judicate motions to transfer according to an individu-
`alized, case-by-case consideration of convenience
`and the interests of justice.”). The Third Circuit has
`also emphasized that “the plaintiff's choice of venue
`should not be lightly disturbed.” Jumara, 55 F.3d at
`879. As a result, “a transfer is not to be liberally
`granted.” Shutte v. Armco Steel Corp., 431 F.2d 22,
`25 (3d Cir.1970) (internal quotation marks omitted).
`
`Consequently, the burden rests squarely on the
`party seeking a transfer “to establish that a balancing
`of proper interests weighs in favor of the transfer.”
`Id.; see also Jumara, 55 F.3d at 879. That burden is a
`heavy one: “unless the balance of convenience of the
`parties is strongly in favor of defendant, the plaintiff's
`choice of forum should prevail.” Shutte, 431 F.2d at
`25 (internal quotation marks omitted) (emphasis in
`original); see also CNH Am. LLC v. Kinzenbaw, 2009
`WL 3737653, at *2 (D.Del. Nov. 9, 2009); ADE
`Corp. v. KLA–Tencor Corp., 138 F.Supp.2d 565,
`567–68 (D.Del.2001). It follows that “transfer will be
`denied if the factors are evenly balanced or weigh
`only
`slightly
`in
`favor
`of
`the
`transfer.”
`Angiodynamics, Inc. v. Vascular Solutions, Inc., 2010
`WL 3037478, at *2 (D.Del. July 30, 2010) (internal
`citations omitted); see also Illumina, Inc. v. Complete
`Genomics, Inc., 2010 WL 4818083, at *2 (D.Del.
`Nov. 9, 2010).
`
`Unless the defendant “is truly regional in charac-
`ter”—that is, it operates essentially exclusively in a
`region that does not include Delaware—transfer is
`almost always inappropriate. See Praxair, Inc. v.
`ATMI, Inc., 2004 WL 883395, at *1 (D.Del. Apr. 20,
`2004). When transfer is sought by a defendant with
`operations on a national or international scale, that
`defendant “must prove that litigating in Delaware
`would pose a unique or unusual burden on [its] op-
`erations.” L'Athene, Inc. v. EarthSpring LLC, 570
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-3 Filed 12/19/11 Page 4 of 11 PageID #: 559
`Page 3
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`Slip Copy, 2011 WL 2911797 (D.Del.)
`(Cite as: 2011 WL 2911797 (D.Del.))
`
`F.Supp.2d 588, 592 (D.Del.2008) (internal citations
`and quotation marks omitted); see also In re
`TCW/Camil Holding, L.L.C., 2004 WL 1043193, at
`*1 (D.Del. Apr. 30, 2004).FN2
`
`FN2. See generally Intel v. Broadcom:
`
`[Defendant] is a multi-billion dollar com-
`pany that does business on an interna-
`tional scale. Furthermore, the conven-
`iences of modern travel and communica-
`tion technology have made it more diffi-
`cult to argue that litigating in a particular
`forum is inconvenient for the parties and
`witnesses. Therefore, to meet its burden
`[defendant] must establish that litigating
`this case in Delaware will pose a unique
`or unusual burden on [its] business opera-
`tions. It has not done so.
`
`167 F.Supp.2d 692, 706 (D.Del.2001)
`(internal quotation marks and citations
`omitted).
`
`*3 “A motion to transfer may also be granted if
`there is a related case which has been first filed or
`otherwise is the more appropriate vehicle to litigate
`the issues between the parties.” Praxair, 2004 WL
`883395, at *1; see also Mallinckrodt Inc. v. E–Z–Em,
`Inc., 670 F.Supp.2d 349, 357–58 (D.Del.2009) (“In
`an instance where related litigation in a transferee
`forum involves the same parties, similar technolo-
`gies, and a common field of prior art, this Court has
`previously held that transfer is appropriate in the in-
`terests of justice.”).
`
`fact-
`individualized,
`the necessarily
`Given
`specific, case-by-case nature of a decision whether to
`transfer venue, it is inevitable that the multitude of
`transfer opinions—including the many issued in this
`District—will not entirely harmonize with one an-
`other. As Chief Judge Sleet has explained:
`
`By definition, a transfer analysis is a thoughtful
`weighing of interests. And, as an exercise of dis-
`cretion, this process is, at least to some extent, sub-
`jective.
`
`Thus, while the Court can look to precedent for
`guidance, it reminds the parties that the weight
`
`which one court might afford to one factor on one
`day might very well differ from the weight af-
`forded to that same factor by a different court, lo-
`cated in a different district, presiding over a differ-
`ent litigation, between different parties, concerning
`a different cause of action, involving different
`facts, different witnesses, and different documents
`on a different day.
`
`Affymetrix, Inc. v. Synteni, Inc., 28 F.Supp.2d
`192, 208 (D.Del.1998). It bears emphasis that such
`differences may also be evident even among different
`judges sitting in the same District.
`
`Appropriateness of the Transferee Venue
`In determining whether transfer is appropriate,
`the Court must first determine whether this action
`could have been brought in the proposed transferee
`venue, which here is the Central District. “The party
`moving for transfer bears the burden of proving that
`the action properly could have been brought in the
`transferee district in the first instance.” Mallinckrodt,
`670 F.Supp.2d at 356 (internal citations omitted).
`Since Genentech and COH concede to personal juris-
`diction in the Central District, their place of resi-
`dence, see 28 U.S.C. § 1391(c); see also D.I. 11 at
`16, HGS could have brought these actions in the
`transferee district.
`
`HGS, however, contends that these actions could
`not have been brought in the Central District because
`that court would lack personal jurisdiction over HGS.
`The Court is unpersuaded. As the plaintiff, HGS had
`the option to sue Defendants in the Central District,
`as there is personal jurisdiction over Defendants
`there. (See D.I. 11 at 16) This is so even assuming the
`Central District lacks personal jurisdiction over HGS.
`See Shutte, 431 F.2d at 24 (stating that for transfer to
`be “authorized by the statute,” “venue must have
`been proper in the transferee district and the trans-
`feree court must have had power to command juris-
`diction over all of the defendants” ) (emphasis
`added); see also In re Genentech, Inc., 566 F.3d
`1338, 1346 (Fed.Cir.2009) (“There is no requirement
`under § 1404(a) that a transferee court have jurisdic-
`tion over the plaintiff or that there be sufficient
`minimum contacts with the plaintiff; there is only a
`requirement that the transferee court have jurisdiction
`over the defendants in the transferred complaint”);
`F.T.C. v. Watson Pharm., Inc., 611 F.Supp.2d 1081,
`1090 (C.D.Cal.2009) (“However, the inquiry into due
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Slip Copy, 2011 WL 2911797 (D.Del.)
`(Cite as: 2011 WL 2911797 (D.Del.))
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`process asks if the transferee court has jurisdiction
`over the defendants, not the plaintiffs.”) (citing 15
`Charles Alan Wright, Arthur R. Miller & Edward H.
`Cooper, Federal Practice and Procedure, § 3845 (3d
`ed.2007)). HGS would have conceded to personal
`jurisdiction in the Central District by filing suit there.
`See Adam v. Saenger, 303 U.S. 59, 67–68 (1938)
`(“The plaintiff having, by his voluntary act in de-
`manding justice from the defendant, submitted him-
`self to the jurisdiction of the court, there is nothing
`arbitrary or unreasonable in treating him as being
`there for all purposes for which justice to the defen-
`dant requires his presence. It is the price which the
`state may exact as the condition of opening its courts
`to the plaintiff.”).
`
`*4 Based on three district court cases, HGS pro-
`claims it is “the hornbook law in this circuit” that
`transfer is authorized only when the transferee court
`can exercise personal jurisdiction over the plaintiff.
`(D.I. 16 at 14) The Court does not discern within
`these cases the support HGS finds for its position.
`Moreover, as district court decisions, none of HGS's
`cases are binding on this Court.
`
`In none of the three cases on which HGS relies
`was transfer denied because the transferee court
`lacked personal jurisdiction over the plaintiff. See
`Tahir v. Avis Budget Grp., Inc., 2009 WL 4911941,
`at *3 (D.N.J. Dec. 14, 2009) (finding that action
`could have been brought in transferee district, but
`transfer was nonetheless improper given balance of
`private and public interests); Bachmann Software &
`Servs. v. Intouch Grp., Inc., 2008 WL 2875680, at
`*13–17 (D.N.J. July 22, 2008) (same); Betz Labs.,
`Inc. v. Cameron, 1997 WL 164234, at *1–2 (E.D.Pa.
`Mar. 31, 1997) (granting motion to transfer). In fact,
`in two of the three cases this issue was not before the
`Court; in the third case, the court assessed personal
`jurisdiction over the plaintiff in the transferee district
`without indicating if it was contested. See Tahir,
`2009 WL 4911941, at *3 (“[N]o party has raised an
`objection to the transfer based on lack of jurisdiction
`in the proposed transferee district. In any event, it
`appears to this Court from the information available
`to it that all parties would be subject to personal ju-
`risdiction in Virginia.”); Bachmann, 2008 WL
`2875680, at *13 (assessing and finding personal ju-
`risdiction over plaintiff with no indication if con-
`tested, but ultimately denying transfer); Betz Labs.,
`1997 WL 164234, at *1 (“[The plaintiff] does not
`
`dispute that this action ‘might have been brought’ in
`the Northern District of Illinois. Indeed, it seems that
`both venue and personal jurisdiction over all the par-
`ties could readily be established in that district.”).
`
`Additionally, two of HGS's cases cite Shutte, 431
`F.2d at 22, when stating that a transferee court must
`have personal jurisdiction over “all the parties;” the
`third makes a similar assertion without citation. See
`Tahir, 2009 WL 4911941, at *3 (citing Shutte );
`Bachmann, 2008 WL 2875680, at *12 (citing Shutte
`); Betz Labs., 1997 WL 164234, at *1 (stating “it
`seems that both venue and personal jurisdiction over
`all the parties could readily be established,” with no
`citation). But in Shutte the Third Circuit stated:
`
`[A] transfer is authorized by the statute only if the
`plaintiff had an ‘unqualified right’ to bring the ac-
`tion in the transferee forum at the time of the
`commencement of the action; i.e., venue must have
`been proper in the transferee district and the trans-
`feree court must have had power to command ju-
`risdiction over all of the defendants.... Prior to or-
`dering a transfer the district court must make a de-
`termination that the suit could have been rightly
`started in the transferee district.... If there is a ‘real
`question’ whether a plaintiff could have com-
`menced the action originally in the transferee fo-
`rum, ... it is evident that he would not have an un-
`qualified right to bring his cause in the transferee
`forum.
`
`*5 431 F.2d at 24 (emphasis added; internal cita-
`tions omitted). Shutte does not require an assessment
`of personal jurisdiction over the plaintiff in the trans-
`feree district.
`
`HGS also reads Infineon Technologies AG v.
`Fairchild Semiconductor International, Inc., 2009
`WL 3150986 (D.Del. Sept. 30, 2009), to support its
`contention. In Infineon, this Court was confronted
`with a motion for leave to amend a complaint. The
`plaintiff, Infineon, sought to add to an already pend-
`ing patent infringement action in Delaware (the
`“Delaware Action”) two declaratory judgment claims
`relating to patents that were concurrently being as-
`serted by the defendant, Fairchild, in a patent in-
`fringement action pending in Maine (the “Maine Ac-
`tion”). After analyzing the motion under the applica-
`ble standards of Federal Rule of Civil Procedure 15,
`the Court also addressed the factors that would be
`
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`Slip Copy, 2011 WL 2911797 (D.Del.)
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`applicable to a § 1404 transfer analysis. In this con-
`text, the Court observed: “Because Maine may not
`have jurisdiction over Infineon, and Fairchild has
`already conceded this District's jurisdiction over it,
`Delaware may be the only available forum anyway.”
`2009 WL 3150986, at *7. But Court was considering
`a motion for leave to amend subject to Rule 15 only,
`not a motion to transfer venue under § 1404(a). Al-
`though the Court contemplated whether its conclu-
`sion would be the same if viewed through the prism
`of a motion to transfer venue, the Court only had
`before it a motion for leave to amend, so the Court
`was not deciding whether Maine had personal juris-
`diction over Infineon, nor whether such a determina-
`tion would be necessary if a motion to transfer had
`been pending. The issue plainly was not before the
`Court and the Court was not opining on its resolution.
`
`Finally, Plaintiff's contention that, because this is
`a declaratory judgment action, it should be consid-
`ered the defendant for purposes of the jurisdictional
`analysis (D.I. 16 at 14–15; Tr. at 14) is also unper-
`suasive. As a declaratory judgement plaintiff, HGS
`chose to initiate this lawsuit and is subject to what-
`ever course the action takes. More importantly, Plain-
`tiff's argument that it is truly the defendant here
`would, if accepted, undermine its position on applica-
`tion of the Jumara factors (see below), as the Court
`would then have to give primary weight to the choice
`of forum of Defendants (i.e., the Central District), as
`they would be viewed as the “true plaintiffs” here.
`
`The Jumara Factors
`Since two proper venues have been identified,
`the Court must balance the appropriate considerations
`and determine whether, under the particular facts of
`this case, the request to transfer venue should be
`granted. The Third Circuit has observed that in un-
`dertaking such an analysis “there is no definitive
`formula or list of the factors to consider.” Jumara, 55
`F.3d at 879. Instead, courts must analyze “all relevant
`factors to determine whether on balance the litigation
`would more conveniently proceed and the interests of
`justice be better served by transfer to a different fo-
`rum.” Id.
`
`*6 Nevertheless, the Third Circuit has also iden-
`tified a set of private interest and public interest fac-
`tors for courts to consider. See id. at 879–80. The
`private factors to consider include: (1) “the plaintiff's
`forum preference as manifested in the original
`
`(3)
`(2) “the defendant's preference;”
`choice;”
`“whether the claim arose elsewhere;” (4) “the con-
`venience of the parties as indicated by their relative
`physical and financial condition;” (5) “the conven-
`ience of the witnesses—but only to the extent that the
`witnesses may actually be unavailable for trial in one
`of the fora;” and (6) “the location of books and re-
`cords (similarly limited to the extent that the files
`could not be produced in the alternative forum).” The
`public interest factors to consider include: (1) “the
`enforceablity of the judgment;” (2) “practical consid-
`erations that could make the trial easy, expeditious,
`or inexpensive;” (3) “the relative administrative diffi-
`culty in the two fora resulting from court conges-
`tion;” (4) “the local interest in deciding local contro-
`versies at home;” and (5) “the familiarity of the trial
`judge with the applicable state law in diversity
`cases.” Id. (internal citations omitted)
`
`Below, the Court considers and weighs each of
`these public and private interest factors, to the extent
`relevant in the particular circumstances presented
`here.
`
`Private Interest Factors
`
`Plaintiff's choice of forum
`
`“It is black letter law that a plaintiff's choice of a
`proper forum is a paramount consideration in any
`determination of a transfer request, and that choice
`should not be lightly disturbed.” Shutte, 431 F.2d at
`25 (internal citations and quotations omitted). That is,
`“courts normally defer to a plaintiff's choice of forum
`....“ Jumara, 55 F.3d at 880. Indeed, “[t]he deference
`afforded plaintiff's choice of forum will apply as long
`as plaintiff has selected the forum for some legitimate
`reason.” Cypress Semiconductor Corp. v. Integrated
`Circuit Sys., Inc., 2001 WL 1617186, at *2 (D.Del.
`Nov. 28, 2001) (internal citations omitted).
`
`HGS has clearly manifested its preference for
`Delaware as a forum by filing suit in this jurisdiction
`and this choice is entitled to deference. Although
`HGS is incorporated in Delaware, its principal place
`of business is in Maryland; arguably, then, Delaware
`is not its “home turf.” But HGS's choice of forum still
`deserves significant weight. See Mallinckrodt, 670
`F.Supp.2d at 356 (“Defendants contend that Plain-
`tiffs' choice of forum is due little weight because
`Delaware is not its ‘home turf.’ ... However, Plain-
`
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`tiffs' decision to litigate in Delaware is still accorded
`significant deference because Plaintiffs' choice of
`Delaware as a forum relates to their legitimate, ra-
`tional concerns as Delaware corporations.”) (internal
`citations omitted); Angiodynamics, 2010 WL
`3037478, at *2 (same).
`
`Defendants' forum preference
`*7 Defendants prefer an alternative forum: the
`Central District, Both Defendants maintain their prin-
`cipal place of business in California, although Genen-
`tech is a Delaware corporation. (D.I. 1 at ¶¶ 8, 9)
`
`Location of operative events
`“[I]f there are significant connections between a
`particular venue and the events that gave rise to a
`suit, this factor should be weighed in that venue's
`favor.” In re Hoffman–La Roche Inc., 587 F.3d 1333,
`1338 (Fed.Cir.2009). As a declaratory judgment
`plaintiff, HGS's claim arguably arose in this District
`since any injury resulting from Defendants asserting
`their patent rights would be felt here in Delaware,
`where HGS is located as a result of being formed
`here. See Millipore Corp. v. Univ. Patents, Inc., 682
`F.Supp. 227, 234 (D.Del.1987)
`(“A declaratory
`judgment action seeking to invalidate a patent arises
`where the alleged infringer is located, receives the
`damaging charges of infringement, or suffers eco-
`nomic injury as a result of the charges.”) (internal
`quotations omitted).
`
`Convenience of the parties
`The next factor to be considered is “the conven-
`ience of the parties as indicated by their relative
`physical and financial condition.” Jumara, 55 F.3d at
`879.
`
`The record contains little information about the
`physical and financial conditions of the parties, al-
`though some figures regarding Defendants' royalty
`income are of record, as is COH's non-profit status.
`(See D.I. 20, Ex. B at 52; D.I. 1 at ¶ 9) Plaintiff HGS
`and Defendant Genentech are both large for-profit
`entities. Defendants argue that Defendant COH's non-
`profit status makes litigating away from California
`particularly inconvenient, although Defendants also
`concede that “the convenience of the parties appears
`to be a wash.” (D.I. 11 at 18)
`
`As a practical matter, most of the discovery
`process will take place in California, in the offices of
`
`the parties' attorneys and in the areas where the par-
`ties maintain their documents, regardless of where
`the litigation proceeds. See Cypress Semiconductor
`Corp., 2001 WL 1617186, at *4 (“[C]onvenience
`based on expense is uncompelling especially when
`the practical realities are that discovery will likely
`take place in California regardless of the trial
`venue.”). The only events likely to occur in Delaware
`are the claim construction hearing, any hearing on
`motions (but not discovery motions, as this Court
`almost exclusively addresses such disputes by tele-
`conference), the pretrial conference, and trial. A trial
`(if this case even gets to trial) is likely to last two
`weeks at most—and, even during trial, the presence
`of key witnesses in Delaware is very unlikely to be
`required any longer than a week.
`
`Additionally, the Court also takes notice of the
`widespread prevalence of laptop, notebook, and tab-
`let computers; high-speed
`internet connections;
`smartphones; and the relative availability of video
`conferencing technologies. All of this technology
`makes it far easier today for a traveling employee to
`“keep in touch” with the “home office” and reduce
`the disruptions to her work.
`
`*8 As importantly, the Court emphasizes that
`Genentech chose
`to
`incorporate
`in Delaware.
`“[W]hen a corporation chooses to incorporate in
`Delaware and accept the benefits of incorporating in
`Delaware, it cannot complain once another corpora-
`tion brings suit against it in Delaware.” Mallinckrodt,
`670 F.Supp.2d at 357; see also Praxair, 2004 WL
`883395, at *2 (“By availing themselves of the advan-
`tages of Delaware's corporate laws, defendants have
`voluntarily exposed themselves to the risk of suit in
`Delaware.”). “[A]s the judges of this court have
`noted, one aspect of a company's decision to incorpo-
`rate in Delaware is that under our jurisdictional and
`venue statutes it is agreeing to submit itself to the
`jurisdiction of the courts in this state for the purposes
`of resolving this type of commercial dispute.” ADE
`Corp. v. KLA–Tencor Corp., 138 F.Supp.2d 565, 572
`(D.Del.2001). Thus, “absent some showing of a
`unique or unexpected burden, a company should not
`be successful in arguing that litigation in its state of
`incorporation is inconvenient.” Id. at 573.
`
`Convenience for the witnesses
`The next factor is “the convenience of the wit-
`nesses—but only to the extent that the witnesses may
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

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`Case 1:11-cv-00797-RGA Document 94-3 Filed 12/19/11 Page 8 of 11 PageID #: 563
`Page 7
`
`Slip Copy, 2011 WL 2911797 (D.Del.)
`(Cite as: 2011 WL 2911797 (D.Del.))
`
`actually be unavailable for trial in one of the fora.”
`Jumara, 55 F.3d at 879. “[I]n reviewing a motion to
`transfer, courts frequently look to the availability of
`witnesses as an important factor, as it can be relevant
`to protecting a defendant's opportunity to put on its
`case with witnesses who will appear in person at the
`trial.” ADE Corp ., 138 F.Supp.2d at 569; see also id.
`at 574 (“The court does have an interest in seeing that
`a plaintiff's choice of a forum does not deprive a de-
`fendant of its ability to put on a defense that effec-
`tively communicates the matters in issue to the judge
`and the jury.”).
`
`The Court agrees with Chief Judge Sleet, who
`held that the weight to be accorded to concerns about
`convenience for the witnesses varies depending on
`the type of witness at issue:
`
`Party witnesses or witnesses who are employed by
`a party carry no weight in the “balance of conven-
`ience” analysis since each party is able, indeed, ob-
`ligated to procure the attendance of its own em-
`ployees for trial. Expert witnesses or witnesses
`who are retained by a party to testify carry little
`weight in determining where the “balance of con-
`venience” lies (especially in an action for patent in-
`fringement) because they are usually selected [on
`the basis] of their reputation and special knowledge
`without regard to their residences and are presuma-
`bly well compensated for their attendance, labor
`and inconvenience, if any. Fact witnesses who pos-
`sess first-hand knowledge of the events giving rise
`to the lawsuit, however, have traditionally weighed
`quite heavily in the “balance of convenience”
`analysis.
`
`Affymetrix, 28 F.Supp.2d at 203 (internal cita-
`tions and quotation marks omitted). With respect to
`the last category—fact witnesses with first-hand
`knowledge—the Court should be particularly con-
`cerned not to countenance undue inconvenience to
`third-party witnesses, who have no direct connection
`to the litigation. See generally id. (explaining that
`non-party fact witnesses weigh heavily in analysis);
`see also Headon v. Colo. Boys Ranch, 2005 WL
`1126962, at *7 (E.D.Pa. May 5, 2005) (noting that
`convenience of non-party witnesses is “perhaps the
`most important factor”); 8 Charles Alan Wright, Ar-
`thur R. Miller & Edward H. Cooper, Federal Prac-
`tice and Procedure, § 3851 (3d ed. 2008) (“Often
`cited as the most important factor in passing on a
`
`motion to transfer under Section 1404(a) of Title 28
`of the United States Code, and the one most fre-
`quently mentioned by the courts, ... is the conven-
`ience of witnesses, most particularly nonparty wit-
`nesses who are important to the resolution of the
`case.”).
`
`*9 Here, the record reveals that potential wit-
`nesses are scattered around the world (e.g., Los An-
`geles, northern California, Pennsylvania, Oregon, and
`Israel). If this case turns out to be one of the statisti-
`cally rare cases to go to trial, it is always possible, if
`not likely, that third-party fact witnesses with mate-
`rial, non-cumulative evidence will voluntarily appear
`at trial. See ADE Corp., 138 F.Supp.2d at 570 (“Pre-
`vious decisions in this court have suggested that the
`better approach is to recognize that witnesses have
`and will appear here without having to be subpoe-
`naed.”).FN3 If not, then at least a deposition may be
`compelled by a court with jurisdiction over the recal-
`citrant witness, and that deposition may be used at
`trial. While deposition testimony is not a complete
`substitute for live trial testimony, see In re DVI Inc.,
`2004 WL 1498593, at *2 (D. Del. June 23, 2004)
`(“[T]he Court notes that it has previously rejected the
`argument made by Plaintiff that