United States District Court, E.D. Virginia, Richmond Division
E. Payne, Senior United States District Judge
matter is before the Court on DEFENDANTS' MOTION TO
TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA, SAN
FRANCISCO DIVISION, PURSUANT TO 28 U.S.C. § 1404(a)
(Docket No. 26) . For the reasons set forth below, the motion
will be granted.
Macronix International Co., Ltd. ("Macronix") is a
Taiwan corporation with its principal place of business in
Hsin-chu, Taiwan. Macronix's subsidiary has an office in
Milpitas, California, where it employs engineering,
management, and administrative personnel. Macronix designs
and develops non-volatile memory semiconductor solutions.
Presently, it holds more than 1, 700 United States patents,
including the seven patents at issue in this case.
alleges that the defendants, Spansion, Inc. and Spansion LLC
("Spansion"), "have committed acts of willful
patent infringement" and "sold infringing products
to downstream customers" in the Eastern District of
Virginia, among other locations in the United States.
Spansion, Inc. is the parent company of Spansion LLC. Both
are Delaware corporations with their headquarters in
Sunnyvale, California. Neither Defendant has any employees or
facilities in Virginia. Macronix has identified six
downstream customers to whom the Defendants have sold the
allegedly infringing products.
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 . . . ."28 U.S.C. § 1404(a). Section
1404(a) imbues the district court with discretion 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 (1988) (quoting Van
Dusen v. Barrack, 376 U.S. 612, 622 (1964)). The moving
party bears the burden of proving that the facts warrant a
transfer of venue. Samsung Elec. Co. v. Rambus,
Inc., 386 F.Supp.2d 708, 715 (E. D. Va. 2005); see
Cognitronics Imaging Sys., Inc. v. Recognition Research
Inc., 83 F.Supp.2d 689, 696 (E.D. Va. 2000).
determining whether to grant a motion to transfer venue,
district courts follow a two-step inquiry. First, section
1404(a) directs the court to determine whether the civil
action could have been brought in the proposed forum.
Jaffe v. LSI Corp., 874 F.Supp.2d 499, 502 (E.D. Va.
2012). Second, the court considers: (1) the plaintiff's
choice of forum; (2) the convenience of the witnesses; (3)
access to evidence; (4) the convenience of the parties; and
(5) the interest of justice. Rambus, 386 F.Supp.2d
at 716 (referring to the aforementioned factors as the
"principal factors") (citing Koh v. Microtek
Int'l, Inc., 250 F.Supp.2d 627, 633 (E.D. Va.
undisputed that this action could have been brought in the
Northern District of California, the proposed transferee
forum. Thus, the resolution of the motion depends on whether,
considering the foregoing five factors Spansion has met its
burden to prove that transfer is appropriate under §
Plaintiff s Choice of Forum
begin, it is necessary to determine the level of deference to
be given to Macronix's choice of forum. Generally, the
"initial choice of forum, from among those possible
under the law, is a privilege given to the plaintiff."
Koh, 250 F.Supp.2d at 633 (citing Medicenters of
America, Inc. v. T & V Realty & Equipment Corp.,
371 F.Supp. 1180, 1184 (E.D. Va. 1974)). Typically, courts
accord the plaintiff's choice of forum substantial
weight. "'[H]owever, if a plaintiff chooses a
foreign forum and the cause of action bears little or no
relation to that forum, the plaintiff's chosen venue is
not entitled to such substantial weight.'"
Rambus, 386 F.Supp.2d at 716 (quoting
Telepharmacy Solutions, Inc. v. Pickpoint Corp., 238
F.Supp.2d 741, 743 (E.D. Va. 2003)).
Eastern District of Virginia is not Macronix's home
forum. Indeed, Macronix does not have a home forum in the
United States. Macronix is incorporated in Hsin-Chu, Taiwan,
and it maintains its headquarters there. Its subsidiary,
Macronix America, Inc., does have an office in the United
States, which is located in Milpitas, California, a suburb of
patent infringement case, the nucleus of operative facts
forms at or near the "center of the allegedly infringing
activities, " primarily where the accused products were
designed, developed, and manufactured. Koh, 250 F.Supp.2d at
636; see Lycos, Inc. v. TiVo, Inc., 499 F.Supp.2d
685, 693 (E.D. Va. 2007). The record shows that
Spansion's production activities took place in Austin,
Texas, and that most of the relevant research and development
for the product occurred in Sunnyvale, California. Neither of
the locations identified by the parties implicate the Eastern
District of Virginia. Thus, the "nucleus of operative
facts" has little to no connection with the Eastern
District of Virginia. Rambus, 386 F.Supp.2d at 716.
takes the view that Spansion's sales activity in Virginia
alone creates an adequate "factual nexus" to this
district. But, in its complaint, Macronix identified only
five Virginia customers to which Spansion sold allegedly
infringing products. (Amended Compl., at ¶ 7). Further,
the record shows that, since 2008, sales to those five
Virginia customers represent .026% of Spansion's domestic
sales. It does appear that sales to those customers have
since increased ...