United States District Court, E.D. Virginia, Richmond Division
MEMORANDUM OPINION (Motion to Transfer)
HENRY E. HUDSON, District Judge.
This matter is before the Court on Defendants' Motion to Transfer (ECF No. 37), filed on July 25, 2014. Plaintiff has filed its response, and this matter is ripe for disposition. Pursuant to 28 U.S.C. § 1404(a) ("§ 1404(a)"), Defendants request that this Court transfer the case to the Northern District of California. For the following reasons, the motion is granted.
Plaintiff Corning Optical Communications Wireless, Ltd. ("Plaintiff' or "Corning Optical") filed suit on May 23, 2014, alleging that Defendants Solid, Inc. ("Solid") and Reach Holdings, LLC d/b/a Solid Technologies ("Reach" or "Solid Technologies") (collectively "Defendants") are infringing Plaintiffs patents in violation of 35 U.S.C. §§ 271(a), (b), and (c). The asserted patents are U.S. Patent No. 7, 483, 504 ("the '504 Patent"), entitled "MIMO-Adapted Distributed Antenna System, " which issued on January 27, 2009, and U.S. Patent No. 5, 969, 837 ("the '837 Patent"), entitled "Communications System, " which issued on October 19, 1999 (collectively "the Patents"). (Comp'. ¶¶ 25-26, ECF No. 1.)
Corning Optical is an Israeli company that is in the business of developing, marketing, distributing, installing, and supporting Distributed Antenna Systems ("DAS") products. ( Id ¶¶ 3, 23.) DAS products are often installed inside buildings and other large venues such as stadiums, airports, and campuses to enhance the reliability of wireless coverage. ( Id. ¶ 23.) Corning Optical is organized under the laws of Israel and has its principal place of business in Airport City, Israel. ( Id ¶ 3.) Solid is a Korean supplier and Reach is an American distributor. ( Id ¶¶ 4, 10, 11.) Reach is doing business as Solid Technologies. ( Id Introduction.) Reach is organized under the laws of Oregon and its principal place of business is in Sunnyvale, California. ( Id ¶ 10.) Solid has in the past conducted business under the name, Solid Technologies. ( Id ¶ 5.) Reach competes with Corning Optical in the market for DAS products. ( Id ¶ 16.)
Solid makes, uses, offers to sell, sells, and/or imports into the U.S. telecommunications products, including DAS products. ( Id ¶ 6.) One of these products is the ALLIANCE Multi-Carrier DAS - which in at least some installations, is configured to propagate multiple input multiple output ("MIMO") signals over the DAS. ( Id. ¶¶ 7-8.) Solid Technologies is the exclusive distributor of Solid's DAS products (including the ALLIANCE Multi-Carrier DAS) in the U.S. ( Id. ¶ 11.) Solid and Solid Technologies have provided an ALLIANCE Multi-Carrier DAS that is installed at the Arlington Mill Community Center in Arlington, Virginia. ( Id ¶ 18.)
Plaintiff alleges that from 2003 until at least 2009, TriPower Group, Inc. ("TriPower") was a reseller of DAS products manufactured and sold by Mobile Access, a predecessor-in-interest to Corning Optical. ( Id ¶ 28.) Plaintiff alleges that Seth Buechley was an executive officer of TriPower from about 2001 to about 2009, and that he became familiar with Plaintiff's DAS products and intellectual property in his capacity at TriPower. ( Id ¶¶ 29-31.) According to Plaintiff, Buechley became president of Solid Technologies from 2010 to present, and informed Solid of the '504 and '837 patents and their contents. ( Id ¶¶ 34-36.) In addition, Plaintiff alleges that Ken Sandfeld, another TriPower employee, was familiar with Plaintiff's DAS products and intellectual property by virtue of his position. ( Id ¶¶ 37-39.) Sandfeld has allegedly been an executive vice president of Solid Technologies from 2010 to present. ( Id. ¶ 42.) Plaintiff alleges that Sandfeld also informed Solid of the Patents and their contents. ( Id ¶¶ 43-44.)
II. STANDARD OF REVIEW
"For 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." § 1404(a). In a patent infringement action, motions to transfer venue pursuant to § 1404(a) are governed by the law of the regional circuit in which the Court sits. See Winner Int'l Royalty Corp. v. Wang, 202 F.3d 1340, 1352 (Fed. Cir. 2000).
Provided that the plaintiff's claims could initially have been brought in the transferee forum, "[t]he decision whether to transfer an action pursuant to § 1404(a) is committed to the sound discretion of the district court.'" BHP Int'l Inv., Inc. v. Online Exch., Inc., 105 F.Supp.2d 493, 498 (E.D. Va. 2000) (quoting Verosol B. V. v. Hunter Douglas, Inc., 806 F.Supp. 582, 591 (E.D. Va. 1992)); see also Southern Ry. Co. v. Madden, 235 F.2d 198, 201 (4th Cir. 1956), cert. denied, 352 U.S. 953 (1956). § 1404(a) "is intended to place discretion in the district court to adjudicate motions for transfer of venue 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)).
Thus, upon consideration of Defendants' motion, this Court must make two inquiries: (1) whether the claims might have been brought in the Northern District of California, and (2) whether the interest of justice and the convenience of the parties justify transfer to that district. See, e.g., Corry v. CFM Majestic Inc., 16 F.Supp.2d 660, 663, 666 (E.D. Va. 1998).
A. Venue and Jurisdiction
Under the first prong of the Court's inquiry into a motion to transfer, the Court must consider whether: "(1) venue would have been proper in the transferee district, and (2) the transferee court could exercise personal jurisdiction over all the defendants." L.G. Elecs., Inc. v. Advance Creative Computer Corp., 131 F.Supp.2d 804, 809 (E.D. Va. 2001) (citing Shutte v. Armco Steel Corp., 431 F.2d 22. 24 (3rd Cir. 1970)). The venue provision for patent infringement actions states, in relevant part, that "[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." 28 U.S.C. § 1400(b). With respect to corporations, "[for purposes of venue... a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced." 28 U.S.C. § 1391(c). "Therefore, if a ...