Troutman Sanders LLP: How Important is Timing to the Venue Transfer Analysis?

Troutman Sanders LLP: How Important is Timing to the Venue Transfer Analysis?

by Stan Hammer

In a recent opinion and order denying two separate venue transfer motions, Judge Doumar indicates timing may be an important issue to weigh in deciding whether to grant a patent infringement defendant's motion to transfer venue.

As we have noted before, Virginia district courts are reluctant to transfer venue where a plaintiff-patentee can credibly claim that the Commonwealth is its home forum. But when a plaintiff cannot establish a strong connection to Virginia, a number of other factors may prove decisive.

Judge Doumar's opinion in Innovative Communications Technologies, Inc. v. Vivox, Inc., No. 2:12-CV-7 (E.D. Va. Oct. 3, 2012) (Doumar, J.) [enhanced version available to lexis.com subscribers], indicates timing may be one such important factor. After determining that the infringement suit could have been brought in the transferee forum, Eastern District of Virginia courts apply a familiar four-part test which balances (1) the plaintiff's forum choice, (2) the convenience to the parties, (3) the convenience to witnesses, and (4) the interests of justice.

Judge Doumar's decision is noteworthy because it indicates district courts may be reluctant to transfer a multi-defendant case prior to conducting claim construction. This is especially true, reasoned Judge Doumar, where "[t]he matter . . . before the Court involves the same patents, and pertains to the same underlying technology and services."

In Vivox, two codefendants separately moved for transfer shortly before the scheduled Markman hearing. While one defendant was able to show witnesses and evidence in Massachusetts and the other in California-facts that ordinarily militate in favor of transfer-Judge Doumar noted that the witnesses and evidence were irrelevant to the Markman hearing. Judge Doumar also deemed significant that the parties submitted identical or near-identical proposed claim constructions; indeed, all three defendants filed a joint claim construction brief.

Despite these facts, Judge Doumar expressly left open the question whether a transfer of venue might be appropriate after the Markman hearing. That hearing was held on October 10. We'll stay tuned to see if Judge Doumar changes course upon any renewed motions to transfer filed in the case.

Copyright © 2012, Troutman Sanders LLP

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