Plaintiff brought suit in the United States District Court for the District of Delaware against defendants asserting declaratory judgment, antitrust, Lanham Act and state tort claims based on two patents co-owned by the defendants. The defendants moved to transfer the case to the United States District Court for the Central District of California, primarily because a related case involving the same patents was in the Central District. The District Court granted the motion to transfer.
In opposing the motion to transfer, the plaintiff argued that the case could not be transferred to the Central District of California because the Central District did not have personal jurisdiction over the plaintiff. In rejecting this contention, the district court noted that Section 1404(a) requires that "the party moving for transfer bear the burden of proving that the action properly could have been brought in the transferee court in the first instance."
Because the defendants conceded that they were subject to personal jurisdiction in the Central District, the district court in Delaware found that the plaintiff could have brought the action in the Central District even if the plaintiff would not have been subject to personal jurisdiction had the defendants initiated the litigation in the Central District.
The district court concluded that the plaintiff "had the option to sue Defendants in the Central District, as there is personal jurisdiction over Defendants there. This is so even assuming the Central District lacks personal jurisdiction over [plaintiff] . . . because plaintiff would have conceded to personal jurisdiction in the Central District by filing suit there." The district court also cited several cases and treatises for the proposition that there is no requirement that a transferee court have jurisdiction over the plaintiff or that there must be sufficient minimum contacts with the plaintiff. Rather, there is only a requirement that the transferee court have jurisdiction over the defendants in the transferred complaint.
Finally, after going through the various factors weighing in favor or against transfer, the district court concluded that the Central District's familiarity with a related matter involving some of the same parties and some of the same patents weighed decisively in favor of transferring the case to the Central District of California.
* * * The case is a worthwhile reminder to be careful when instituting a declaratory judgment action, as you may find yourself transferred to another jurisdiction, even one where you could not have been sued for infringement in the fist place due a lack of personal jurisdiction. It also shows that where a court has extensive experience with a related matter involving the same patents it is likely that a district court will want to transfer the case to the court that is already familiar with the technology and the patents.
Human Genome Sciences, Inc. v. Genentech, Inc. and City of Hope, Case No. 11-082-LPS (D. Del. July 18, 2021)