Yesterday, Judge Noreika transferred a trademark, false advertising, false designation of origin, and unfair competition case to the Northern District of Illinois. See Rockwell Automation, Inc. v. EU Automation, Inc., C.A. No. 21-1162-MN (D. Del. Oct. 27, 2022).
This is interesting because, to my knowledge, Judge Noreika has transferred few if any patent cases out of the District of Delaware—including when both parties are have strong ties to the transferee forum.
I thought it would be interesting to see how the Jumara factors played out in this trademark case compared to one of Judge Noreika's recent patent transfer cases where transfer was denied, P Tech, LLC v. Arthrex, Inc., C.A. No. 21-968-MN (D. Del. May 11, 2022).
Defendant's Briefing Issue Cancels Out Plaintiff's Potentially Ill-Advised Admission
Most of the factors were the same between the cases.But in the trademark case, Judge Noreika found that "whether the claims arose elsewhere" slightly favored transfer in the trademark action, where it had not in the patent action, based on an apparent admission by the plaintiff:
Plaintiff argues there is “no evidence regarding acts of infringement” that Defendant committed in Illinois – instead, there is only evidence of unauthorized sales in Delaware. (D.I. 39 at 5). Yet Plaintiff then concludes by asserting that “the acts underlying Rockwell’s claims arose in Delaware and across the United States.” . . . Given that Plaintiff apparently admits that its claims are based on conduct from all over the United States, the Court cannot conclude the claims at issue in this case arose in Delaware or that Delaware is the only convenient forum.
But this evened out, in a sense. Judge Noreika went on to fault the defendant for failing to "meaningfully address" the "location of books and records" factor, finding it neutral even though it had slightly favored transfer in the patent action. Thus both sides potentially lost one "slightly favors transfer" factor.
No Delaware Incorporation + Court Congestion = Transfer Granted
The biggest difference seems to be that in the trademark action, the defendant was not a Delaware entity, unlike the patent action. Thus the "convenience of the parties" favored transfer; in contrast, where both parties were Delaware entities, the "public policies of the fora" weighed slightly against transfer. Another big difference is that the Court accounted for weighted case filings in reviewing court congestion in the trademark action:
And as for weighted filings, the District of Delaware has 873 per judgeship compared to 366 per judgeship in the Northern District of Illinois. . . . [T]here is a significant difference between the two fora in civil judicial workload when accounting for weighted filings. . . . That metric, which factors in how complex and time-consuming civil actions are, suggests that the Northern District of Illinois is a much less congested forum because it has about 500 fewer weighted filings per judgeship than Delaware. In the Court’s view, this factor weighs in favor of transfer.
Judge Noreika also noted that the national average in weighted filings is 501 per judgeship.
State Law Claims Did Not Save Plaintiff
Interestingly, Judge Noreika found that familiarity with state law was "largely neutral" despite plaintiff asserting Delaware statutory and common law unfair competition claims. The Court discounted its familiarity with those claims over an Illinois court:
Although it is true that this Court would be more familiar with Delaware law than a court in the Northern District of Illinois, the standards for proving the state law claims here mirror the federal claims. . . . Therefore, the Court finds that there is unlikely to be any entirely Delaware-specific law at issue in this case such that this forum has any great advantage over the Northern District of Illinois. This factor is largely neutral in this case.
What Does This Mean for Patent Actions?
Since TC Heartland, most plaintiffs come to Delaware because both they and their targets are incorporated here. When both parties are incorporated in Delaware, I don't think this decision is going to move the needle too much, although it would likely be worth citing to show that the Court should consider weighted rather than unweighted case filings.
Thus, I expect the prevailing view will remain that Judge Noreika is unlikely to grant a motion to transfer in a patent action where both parties are Delaware entities—but we'll have to see.
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