Case 1:11-cv-00797-RGA Document 94-4 Filed 12/19/11 Page 1 of 5 PageID #: 567
`Case 1:11—cv—OO797—RGA Document 94-4
`Filed 12/19/11 Page 1 of 5 Page|D #: 567
`
`TAB 4
`
`TAB 4
`
`

`
`Case 1:11-cv-00797-RGA Document 94-4 Filed 12/19/11 Page 2 of 5 PageID #: 568
`
`--- F.3d ----, 2011 WL 6004566 (C.A.Fed. (Del.)), 100 U.S.P.Q.2d 1865
`(Cite as: 2011 WL 6004566 (C.A.Fed. (Del.)))
`
`Page 1
`
`United States Court of Appeals,
`Federal Circuit.
`In re LINK_A_MEDIA DEVICES CORP., Peti-
`tioner.
`
`Misc. No. 990.
`Dec. 2, 2011.
`
`Background: Alleged infringer moved for transfer of
`venue of patent infringement action brought against
`it. The United States District Court for the District of
`Delaware, 2011 WL 2293999, denied motion. Al-
`leged infringer petitioned for writ of mandamus di-
`recting district court to vacate its order denying mo-
`tion and to transfer case to the United States District
`Court for the Northern District of California. Patentee
`opposed petition.
`
`Holding: The Court of Appeals held that district
`court failed to balance public and private interest
`factors fairly in deciding motion to transfer venue,
`warranting mandamus relief.
`
`Petition granted with directions.
`
`West Headnotes
`
`[1] Mandamus 250
`
`26
`
`250 Mandamus
` 250II Subjects and Purposes of Relief
` 250II(A) Acts and Proceedings of Courts,
`Judges, and Judicial Officers
` 250k26 k. Exercise of Judicial Powers and
`Functions in General. Most Cited Cases
`
`Mandamus 250
`
`28
`
`250 Mandamus
` 250II Subjects and Purposes of Relief
` 250II(A) Acts and Proceedings of Courts,
`Judges, and Judicial Officers
` 250k28 k. Matters of Discretion. Most
`
`Cited Cases
`
`Remedy of mandamus is available only in ex-
`traordinary situations to correct a clear abuse of dis-
`cretion or usurpation of judicial power.
`
`[2] Courts 106
`
`96(7)
`
`106 Courts
` 106II Establishment, Organization, and Procedure
` 106II(G) Rules of Decision
` 106k88 Previous Decisions as Controlling
`or as Precedents
` 106k96 Decisions of United States
`Courts as Authority in Other United States Courts
` 106k96(7) k. Particular Questions or
`Subject Matter. Most Cited Cases
`
`In reviewing district court's ruling on motion to
`transfer venue for convenience of parties and wit-
`nesses in patent infringement action, Court of Ap-
`peals for the Federal Circuit applies the law of the
`regional circuit. 28 U.S.C.A. § 1404(a).
`
`[3] Mandamus 250
`
`44
`
`250 Mandamus
` 250II Subjects and Purposes of Relief
` 250II(A) Acts and Proceedings of Courts,
`Judges, and Judicial Officers
` 250k44 k. Change of Venue and Transfer
`of Causes. Most Cited Cases
`
`Standard allowing mandamus to be used to cor-
`rect improper transfer order where petitioner can es-
`tablish a clear and indisputable right to writ is exact-
`ing one, requiring petitioner to establish that district
`court's decision amounted to failure to meaningfully
`consider merits of transfer motion. 28 U.S.C.A. §
`1404(a).
`
`[4] Mandamus 250
`
`44
`
`250 Mandamus
` 250II Subjects and Purposes of Relief
` 250II(A) Acts and Proceedings of Courts,
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Case 1:11-cv-00797-RGA Document 94-4 Filed 12/19/11 Page 3 of 5 PageID #: 569
`Page 2
`
`--- F.3d ----, 2011 WL 6004566 (C.A.Fed. (Del.)), 100 U.S.P.Q.2d 1865
`(Cite as: 2011 WL 6004566 (C.A.Fed. (Del.)))
`
`Judges, and Judicial Officers
` 250k44 k. Change of Venue and Transfer
`of Causes. Most Cited Cases
`
`In deciding alleged infringer's motion to transfer
`venue, for convenience of parties and witnesses, of
`patent infringement action brought against it, district
`court failed to balance public and private interest
`factors fairly, and therefore mandamus relief direct-
`ing district court to vacate its order denying transfer
`of venue and to transfer venue was warranted; in con-
`sidering private interests, district court placed too
`much weight on patentee's choice of forum and fact
`that alleged infringer was incorporated in state in
`which district court sat, making these factors effec-
`tively dispositive and refusing to consider conven-
`ience of witnesses and location of parties' books and
`records, and district court erroneously noted alleged
`infringer's state of incorporation in evaluating public
`interest factors. 28 U.S.C.A. § 1404(a).
`
`[5] Federal Courts 170B
`
`105
`
`170B Federal Courts
` 170BII Venue
` 170BII(B) Change of Venue
` 170BII(B)1 In General; Venue Laid in
`Proper Forum
` 170Bk105 k. Plaintiff's Choice of Fo-
`rum; Forum Shopping. Most Cited Cases
`
`When plaintiff brings its claims in a venue that is
`not its home forum, plaintiff's choice of forum is enti-
`tled to less deference in deciding motion to transfer
`venue for convenience of parties and witnesses. 28
`U.S.C.A. § 1404(a).
`
`Deanne E. Maynard, Morrison & Foerster LLP, of
`Washington, DC, for petitioner. With her on the peti-
`tion were Brian R. Matsui and Adam A. Eltoukhy;
`and Harold J. McElhinny and Mark W. Danis, of San
`Francisco, CA.
`
`Indranil Mukerji, Fish & Richardson PC, of Wash-
`ington, DC, for respondent. With him on the response
`were Ruffin B. Cordell and William Sekyi; Thomas
`L. Halkowski, of Wilmington, DE; David Barkan, of
`Redwood City, CA; and John Dragseth, of Minnea-
`polis, MN.
`
`Before RADER, Chief Judge, DYK and O'MALLEY,
`Circuit Judges.
`
`ON PETITION
`
`PER CURIAM.
`
`ORDER
`*1 Link_A_Media Devices Corp. (LAMD) seeks
`a writ of mandamus directing the United States Dis-
`trict Court for the District of Delaware to vacate its
`order denying LAMD's motion to transfer venue, and
`to direct the Delaware district court to transfer the
`case to the United States District Court for the North-
`ern District of California. Marvell International Ltd.
`(Marvell) opposes. LAMD replies. Because the dis-
`trict court abused its discretion in denying LAMD's
`motion to transfer venue under 28 U.S.C. § 1404(a),
`this court grants LAMD's petition for a writ of man-
`damus.
`
`I.
`The petition for writ of mandamus arises out of a
`suit brought by Bermuda-based Marvell charging
`LAMD with patent infringement. LAMD is incorpo-
`rated under the laws of the state of Delaware where
`this suit was brought in federal district court.
`
`LAMD moved to transfer the case to the North-
`ern District of California, where it maintains its prin-
`cipal place of business, pursuant to 28 U.S.C. §
`1404(a). That section authorizes a district court of
`proper jurisdiction to nonetheless transfer a case
`“[f]or the convenience of the parties and witnesses, in
`the interest of justice.”
`
`In its motion, LAMD stated that “Delaware had
`no discernable connection to this case beyond it be-
`ing LAMD's state of incorporation.” Petitioner's Ap-
`pendix Materials at 15–16. LAMD further stated that
`Marvell is a holding company, and that a related en-
`tity, which is headquartered in the Northern District
`of California, employs the inventors of the patents-in-
`suits and presumably houses all of Marvell's relevant
`documents to this matter. Id.
`
`Nearly all of LAMD's 130 employees work in its
`headquarters in the Northern District of California,
`and none work in Delaware. LAMD therefore argued
`that it would be more convenient for the witnesses
`and the parties to try this case in the Northern District
`of California. In addition, LAMD asserted that the
`district court failed to apply some of the factors rele-
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Case 1:11-cv-00797-RGA Document 94-4 Filed 12/19/11 Page 4 of 5 PageID #: 570
`Page 3
`
`--- F.3d ----, 2011 WL 6004566 (C.A.Fed. (Del.)), 100 U.S.P.Q.2d 1865
`(Cite as: 2011 WL 6004566 (C.A.Fed. (Del.)))
`
`vant to a venue consideration.
`
`Marvell responded that its choice of forum
`should be entitled to substantial deference because it
`selected Delaware for the legitimate reason that
`“LAMD is incorporated in Delaware and, thus, can-
`not claim surprise at being brought into the Delaware
`courts for litigation.” Id. at 121. Marvell added that
`“LAMD is a global company” as opposed to a re-
`gional enterprise, and should be expected to defend
`itself where those products are sold and has the re-
`sources to do so. Id. at 127.
`
`Agreeing with Marvell, the Delaware district
`court denied LAMD's motion to transfer. LAMD then
`filed this petition for a writ of mandamus.
`
`II.
`[1][2] The remedy of mandamus is available
`only in extraordinary situations to correct a clear
`abuse of discretion or usurpation of judicial power. In
`re Calmar, Inc., 854 F.2d 461, 464 (Fed.Cir.1988). In
`reviewing a district court's ruling on a motion to
`transfer pursuant to § 1404(a), we apply the law of
`the regional circuit, in this case the Third Circuit. See
`Storage Tech. Corp. v. Cisco Sys., Inc., 329 F.3d 823,
`836 (Fed.Cir.2003).
`
`*2 [3][4] The Third Circuit has held that man-
`damus may be used to correct an improper transfer
`order if the petitioner can establish a “clear and in-
`disputable” right to the writ. See Sunbelt Corp. v.
`Noble, Denton & Assocs., Inc., 5 F.3d 28, 30 (3d
`Cir.1993). That standard is an exacting one, requiring
`the petitioner to establish that the district court's deci-
`sion amounted to a failure to meaningfully consider
`the merits of the transfer motion. See Swindell–
`Dressler Corp. v. Dumbauld, 308 F.2d 267, 272 (3d
`Cir.1962). We find that this standard is satisfied here.
`
`The Third Circuit has identified various private
`and public interest factors to be considered in a §
`1404 transfer analysis. Jumara v. State Farm Ins.
`Co., 55 F.3d 873, 879 (3d Cir.1995). In this case, the
`district court failed to balance those factors fairly and
`instead elevated two considerations to overriding
`importance. With respect to private interests, the dis-
`trict court's fundamental error was making Marvell's
`choice of forum and the fact of LAMD's incorpora-
`tion in Delaware effectively dispositive of the trans-
`fer inquiry. See Minstar, Inc. v. Laborde, 626 F.Supp.
`
`142, 146 (D.Del.1985) (“[T]he mere fact that Dela-
`ware is the plaintiffs' choice of forum and ... the de-
`fendants' state of incorporation will not, standing
`alone, prevent this Court from transferring this suit to
`another forum.” (quoting Kaiser Indus. Corp. v.
`Wheeling–Pittsburgh Steel Corp., 328 F.Supp. 365,
`369 (D.Del.1971))).
`
`[5] First, the district court placed far too much
`weight on the plaintiff's choice of forum. To be sure,
`the Third Circuit places significance on a plaintiff's
`choice of forum. When a plaintiff brings its charges
`in a venue that is not its home forum, however, that
`choice of forum is entitled to less deference. See gen-
`erally Sinochem Int'l Co. v. Malaysia Int'l Shipping
`Corp., 549 U.S. 422, 430, 127 S.Ct. 1184, 167
`L.Ed.2d 15 (2007) (stating that when a plaintiff files
`a suit outside of its home forum, the presumption that
`its choice of forum is convenient and appropriate
`applies with “less force”); see also Piper Aircraft Co.
`v. Reyno, 454 U.S. 235, 256, 102 S.Ct. 252, 70
`L.Ed.2d 419 (1981) (stating that when a plaintiff is
`foreign, the presumption of favor for its choice of
`forum is “much less reasonable”).
`
`Many district courts in the Third Circuit have
`recognized this distinction. See, e.g., High River Ltd.
`P'ship v. Mylan Labs., Inc., 353 F.Supp.2d 487, 498–
`99 (M.D.Pa.2005) (“[T]he plaintiff's choice is ‘enti-
`tled to less weight where the plaintiff chooses a fo-
`rum which is neither his home nor the situs of the
`occurrence upon which the suit is based.’ ” (quoting
`Reed v. Weeks Marine, Inc., 166 F.Supp.2d 1052,
`1057 (E.D.Pa.2001)); Tischio v. Bontex, Inc., 16
`F.Supp.2d 511, 521 (D.N.J.1998) (explaining that a
`plaintiff's choice of forum is entitled to less weight
`“where the plaintiff has not chosen his or her home
`forum” and “where the choice of forum by a plaintiff
`has little connection with the operative facts of the
`lawsuit”)); Pennwalt Corp. v. Purex Indus., Inc., 659
`F.Supp. 287, 289 (D.Del.1986) (“A defendant's bur-
`den with respect to plaintiff's choice of forum is eas-
`ier to meet where the plaintiff has not brought suit on
`its ‘home turf.’ ”).
`
`*3 The court's heavy reliance on the fact that
`LAMD was incorporated in Delaware was similarly
`inappropriate. See Koster v. Lumbermens Mut. Cas.
`Co., 330 U.S. 518, 527–28, 67 S.Ct. 828, 91 L.Ed.
`1067 (1947) (explaining that the “[p]lace of corporate
`domicile in such circumstances might be entitled to
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.
`
`

`
`Case 1:11-cv-00797-RGA Document 94-4 Filed 12/19/11 Page 5 of 5 PageID #: 571
`Page 4
`
`--- F.3d ----, 2011 WL 6004566 (C.A.Fed. (Del.)), 100 U.S.P.Q.2d 1865
`(Cite as: 2011 WL 6004566 (C.A.Fed. (Del.)))
`
`little consideration under the doctrine of forum non
`conveniens, which resists formalization and looks to
`the realities that make for doing justice.”). Neither §
`1404 nor Jumara list a party's state of incorporation
`as a factor for a venue inquiry. It is certainly not a
`dispositive fact in the venue transfer analysis, as the
`district court in this case seemed to believe.
`
`The district court also refused to consider two of
`the private interest factors in a Third Circuit venue
`inquiry: the convenience of the witnesses and the
`location of the books and records. Jumara, 55 F.3d at
`879. Rather than analyze the merits of the parties'
`arguments relating to these factors, the district court
`stated that these issues are “outdated, irrelevant, and
`should be given little weight, if any, except for those
`rare exceptions where truly regional defendants are
`litigating.” Marvell Int'l Ltd. v. Link–A–Media De-
`vices Corp., Case No. 10–cv–869, 2011 WL
`2293999, *2 (D.Del. June 8, 2011). While advances
`in technology may alter the weight given to these
`factors, it is improper to ignore them entirely.
`
`The district court also erred when it found that
`consideration of the public interest factors did not
`favor either forum. Jumara lists six public interest
`factors: (i) the enforceability of the judgment, (ii)
`practical considerations that could make the trial
`easy, expeditious, or inexpensive, (iii) court conges-
`tion, (iv) the local interest in deciding local contro-
`versies at home, (v) the public policies of the fora,
`and (vi) the familiarity of the trial judge with the ap-
`plicable state law in diversity cases. 55 F.3d at 879–
`80.
`
`When reviewing the public interest factors, the
`district court, again, noted LAMD's incorporation in
`Delaware. The defendant's state of incorporation,
`however, should not be dispositive of the public in-
`terest analysis. Aside from LAMD's incorporation in
`Delaware, that forum has no ties to the dispute or to
`either party. LAMD is headquartered in the Northern
`District of California, where its relevant witnesses
`and evidence are located. Marvell is a holding com-
`pany that is incorporated in Bermuda and has its
`principal place of business there. The named inven-
`tors of the patents-in-suit, moreover, are employed by
`a Marvell affiliate, Marvell Semiconductor, Inc.,
`which is headquartered in Santa Clara, California,
`only three miles from LAMD.
`
`Finally, Marvell argues to this court that the case
`should remain in Delaware because “the District of
`Delaware's judges are highly experienced in patent
`infringement litigation.” Answer to Petition for Writ
`of Mandamus 19. It appears that Marvell is confusing
`the public interest factor relating to a trial court's fa-
`miliarity with “applicable state law,” Jumara, 55
`F.3d at 879–80, which is not relevant here. Marvell's
`claims arise under the federal patent laws, for which
`there is uniformity nationwide, and which the North-
`ern District of California is equally equipped to ad-
`dress.
`
`*4 We have, by comparison, considered a district
`court's concurrent litigation involving the same patent
`to be a relevant consideration, if the court's experi-
`ence was not tenuous and the cases were co-pending.
`In re Verizon Bus. Network Servs. Inc., 635 F.3d 559,
`562 (Fed.Cir.2011); In re Vistaprint Ltd., 628 F.3d
`1342, 1346–47 (Fed.Cir.2010). Here, the asserted
`experience is with patent cases generally and not with
`the patents at issue. There is no evidence, moreover,
`that the District of Delaware's acknowledged experi-
`ence in this area translates to speedier resolution of
`patent cases than occurs in the Northern District of
`California.
`
`Accordingly,
`
`IT IS ORDERED THAT:
`
`The petition for a writ of mandamus is granted.
`The United States District Court for the District of
`Delaware is directed to vacate its order denying peti-
`tioner's motion to transfer venue, and to direct trans-
`fer to the United States District Court for the North-
`ern District of California.
`
`C.A.Fed. (Del.),2011.
`In re Link_A_Media Devices Corp.
`--- F.3d ----, 2011 WL 6004566 (C.A.Fed. (Del.)),
`100 U.S.P.Q.2d 1865
`
`END OF DOCUMENT
`
`© 2011 Thomson Reuters. No Claim to Orig. US Gov. Works.