Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 1 of 23 PageID #: 421
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`C.A. No. 16-290-SLR
`
`JURY TRIAL DEMANDED
`
`)))))))))
`
`GODO KAISHA IP BRIDGE I,
`
`Plaintiff,
`
`v.
`
`OMNIVISION TECHNOLOGIES, INC.,
`
`Defendant.
`
`OPENING BRIEF IN SUPPORT OF
`DEFENDANT OMNIVISION TECHNOLOGIES, INC.’S
`MOTION TO TRANSFER VENUE TO THE NORTHERN DISTRICT OF CALIFORNIA
`
`David E. Moore (#3983)
`Bindu A. Palapura (#5370)
`Stephanie E. O’Byrne (#4446)
`POTTER ANDERSON & CORROON LLP
`Hercules Plaza, 6th Floor
`1313 N. Market Street
`Wilmington, DE 19801
`Tel: (302) 984-6000
`dmoore@potteranderson.com
`bpalapura@potteranderson.com
`sobyrne@potteranderson.com
`
`Attorneys for Defendant OmniVision
`Technologies, Inc.
`
`OF COUNSEL:
`
`Edward G. Poplawski
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`633 West Fifth Street, Suite 1550
`Los Angeles, CA 90071
`Tel: (323) 210-2901
`
`James C. Yoon
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`650 Page Mill Road
`Palo Alto, CA 94304-1050
`Tel: (650) 493-9300
`
`Jennifer J. Schmidt
`Madeleine E. Greene
`WILSON SONSINI GOODRICH & ROSATI
`Professional Corporation
`One Market Street
`Spear Tower, Suite 3300
`San Francisco, CA 94105-1126
`Tel: (415) 947-2000
`
`Dated: May 16, 2016
`1222889 / 43303
`
`

`

`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 2 of 23 PageID #: 422
`
`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`III.
`
`IV.
`
`V.
`
`VI.
`
`INTRODUCTION .............................................................................................................. 1
`
`NATURE AND STAGE OF THE PROCEEDINGS ......................................................... 1
`
`SUMMARY OF ARGUMENT .......................................................................................... 1
`
`STATEMENT OF FACTS ................................................................................................. 3
`
`A.
`
`B.
`
`IP Bridge Has No Connection to Delaware. ........................................................... 3
`
`OmniVision’s Documents and Witnesses Are
`Located in the Northern District of California........................................................ 3
`
`APPLICABLE LEGAL STANDARDS ............................................................................. 4
`
`ARGUMENT...................................................................................................................... 5
`
`A.
`
`B.
`
`IP Bridge Could Have Brought Its Lawsuit in the
`Northern District of California................................................................................ 5
`
`All Relevant Factors Under 28 U.S.C 1404(a)
`Weigh Strongly in Favor of Transfer to the
`Northern District of California................................................................................ 6
`
`1.
`
`The Private Interest Factors Strongly Favor Transfer
`to the Northern District of California.......................................................... 7
`
`a.
`
`b.
`
`c.
`
`d.
`
`e.
`
`Plaintiff’s Choice of Forum Should Be Accorded
`Minimal Weight.............................................................................. 7
`
`OmniVision’s Preferred Forum Weighs in Favor of
`Transfer........................................................................................... 8
`
`Transfer Is Favored Because OmniVision’s
`Products Are Designed and Developed in the
`Northern District of California........................................................ 9
`
`The Convenience of the Parties and Witnesses
`Favors Transfer. ............................................................................ 11
`
`The Location of Books and Records Favors
`Transfer......................................................................................... 13
`
`- i -
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 3 of 23 PageID #: 423
`
`2.
`
`The Public Interest Factors Favor Transfer to the
`Northern District of California.................................................................. 14
`
`a.
`
`b.
`
`c.
`
`Practical Considerations that Could Make Trial
`Easy, Expeditious, or Inexpensive Weigh in Favor
`of Transfer..................................................................................... 14
`
`The Northern District of California Has A Local
`Interest in Deciding the Dispute. .................................................. 15
`
`The Remaining Public Interest Factors Are Neutral
`or Inapplicable. ............................................................................. 16
`
`VII.
`
`CONCLUSION................................................................................................................. 16
`
`- ii -
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 4 of 23 PageID #: 424
`
`TABLE OF AUTHORITIES
`
`CASES
`
`Page(s)
`
`Affymetrix, Inc. v. Synteni, Inc.,
`28 F. Supp. 2d 192 (D. Del. 1998).....................................................................................15
`
`Angiodynamics, Inc. v. Vascular Solutions, Inc.,
`C.A. No. 09-554-JJF, 2010 WL 3037478 (D. Del. July 30, 2010)......................................5
`
`Audatex N. Am., Inc. v. Mitchell Int’l, Inc.,
`C.A. No. 12–139 GMS, 2013 WL 3293611 (D. Del. June 28, 2013)................................11
`
`Genetic Techs. Ltd. v. Natera, Inc.,
`C.A. No. 12–1737–LPS, 2014 WL 1466471 (D. Del. Apr. 15, 2014) ................................9
`
`In re Genentech, Inc.,
`566 F.3d 1338 (Fed. Cir. 2009).................................................................................. passim
`
`In re Hoffman–La Roche, Inc.,
`587 F.3d 1333 (Fed. Cir. 2009)....................................................................................10, 15
`
`In re Link_A_Media Devices Corp.,
`662 F.3d 1221 (Fed. Cir. 2011)..............................................................................2, 7, 8, 15
`
`In re Nintendo Co.,
`589 F.3d 1194 (Fed. Cir. 2009)............................................................................................4
`
`In re TS Tech USA Corp.,
`551 F.3d 1315 (Fed. Cir. 2008)..........................................................................................14
`
`Intellectual Ventures I LLC v. Altera Corp.,
`842 F. Supp. 2d 744 (D. Del. 2012)...................................................................................10
`
`IpVenture, Inc. v. Acer, Inc.,
`879 F. Supp. 2d 426 (D. Del. 2012)...................................................................................15
`
`Ivoclar Vivadent AG v. 3M Co.,
`C.A. No. 11-1183-GMS, 2012 WL 2374657 (D. Del. June 22, 2012)............................7, 8
`
`Jumara v. State Farm Ins. Co.,
`55 F.3d 873 (3d Cir. 1995)......................................................................................... passim
`
`Linex Techs., Inc. v. Hewlett-Packard Co.,
`C.A. No. 11-400-GMS, 2013 WL 105323 (D. Del. Jan. 7, 2013).........................7, 8, 9, 10
`
`- iii -
`
`

`

`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 5 of 23 PageID #: 425
`
`McRo, Inc. v. Activision Blizzard, Inc.,
`C.A. No. 12–1508–LPS–CJB, 2013 WL 6571618 (D. Del. Dec. 13, 2013),
`adopted by 2013 WL 6869866 (D. Del. Dec. 30, 2013)....................................................10
`
`MoneyCat Ltd v. PayPal Inc.,
`C.A. No. 13-1358, 2014 WL 2042699 (D. Del. May 15, 2014)..........................................8
`
`Nalco Co. v. AP Tech Grp. Inc.,
`C.A. No. 13–1063–LPS, 2014 WL 3909114 (D. Del. Aug. 8, 2014)..................................9
`
`Papst Licensing GmbH & Co. KG v. Lattice Semiconductor Corp.,
`126 F. Supp. 3d 430 (D. Del. 2015)...................................................................9, 10, 11, 15
`
`Pennwalt Corp. v. Purex Indus., Inc.,
`659 F. Supp. 287 (D. Del. 1986)..........................................................................................7
`
`Piper Aircraft Co. v. Reyno,
`454 U.S. 235 (1981).............................................................................................................4
`
`Ricoh Co. v. Honeywell, Inc.,
`817 F. Supp. 473 (D.N.J. 1993) ...........................................................................................6
`
`S.C. Johnson & Sons, Inc. v. Gillette Co.,
`571 F. Supp. 1185 (N.D.Ill. 1983) .......................................................................................6
`
`Semcon Tech, LLC v. Intel Corp.,
`C.A. No. 12-531-RGA, 2013 WL 126421 (D. Del. Jan. 8, 2013) .........................7, 8, 9, 14
`
`Van Dusen v. Barrack,
`376 U.S. 612 (1964).............................................................................................................4
`
`Wacoh Co. v. Kionix Inc.,
`845 F. Supp. 2d 597 (D. Del. 2012)........................................................................... passim
`
`STATUTES
`
`28 U.S.C. § 1391(c)(2).....................................................................................................................5
`
`28 U.S.C. § 1404(a) .................................................................................................................1, 4, 5
`
`Fed. R. Civ. P. 45.....................................................................................................................11, 13
`
`RULES
`
`- iv -
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`

`

`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 6 of 23 PageID #: 426
`
`TABLE OF ABBREVIATIONS
`
`Plaintiff Godo Kaisha IP Bridge 1
`
`IP Bridge
`
`Defendant OmniVision Technologies, Inc.
`
`OmniVision
`
`Declaration of Ray Cisneros
`
`Declaration of Jennifer J. Schmidt
`
`U.S. Patent No. 6,583,324
`
`U.S. Patent No. 6,794,677
`
`U.S. Patent No. 6,709,950
`
`U.S. Patent No. 7,126,174
`
`U.S. Patent No. 8,084,796
`
`U.S. Patent No. 8,106,431
`
`U.S. Patent No. 8,378,401
`
`U.S. Patent No. 7,279,727
`
`U.S. Patent No. 7,709,900
`
`U.S. Reissue Patent No. 41,867
`
`the ’324 patent, the ’677 patent, the ’950 patent,
`the ’174 patent, the ’796 patent, the ’431 patent,
`the ’401 patent, the ’727 patent, the ’900 patent,
`and the ’867 patent, collectively
`
`OmniVision OV8858, OV23850, OV4689,
`OV8850, OV5650, OV10640, and OV4689
`image sensors, collectively
`
`Cisneros Decl.
`
`Schmidt Decl.
`
`the ’324 patent
`
`the ’677 patent
`
`the ’950 patent
`
`the ’174 patent
`
`the ’796 patent
`
`the ’431 patent
`
`the ’401 patent
`
`the ’727 patent
`
`the ’900 patent
`
`the ’867 patent
`
`the asserted patents
`
`the accused products
`
`Taiwan Semiconductor Manufacturing
`Company Ltd.
`
`TSMC
`
`Shanghai Huali Microelectronics Corporation
`
`HLMC
`
`- v -
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 7 of 23 PageID #: 427
`
`I.
`
`INTRODUCTION
`
`The facts of this case strongly favor transfer to the Northern District of California. The
`
`only apparent connections between this case and the District of Delaware are (1) IP Bridge’s choice
`
`to bring suit here and (2) OmniVision’s incorporation in Delaware. Both IP Bridge’s and
`
`OmniVision’s connections to California are significantly stronger: All principal places of business
`
`are in California or are more closely located to California, the alleged claims arose in California,
`
`and the bulk of witnesses and evidence resides in California or is nearer to California. Courts in
`
`this District have transferred cases under similar circumstances and, in view of all the relevant
`
`factors, should do so here as well.
`
`II.
`
`NATURE AND STAGE OF THE PROCEEDINGS
`
`IP Bridge filed a Complaint For Patent Infringement on April 22, 2016, accusing
`
`OmniVision of infringement the asserted patents.
`
`(D.I. 1.) The Complaint accuses certain
`
`OmniVision back side illumination (“BSI”) image sensors, specifically accusing OmniBSI,
`
`OmniBSI-2, PureCel, and/or PureCel-S technologies of infringing one or more of the asserted
`
`patents. (D.I. 1 at ¶¶ 30, 38, 46, 54, 62, 70, 78, 86, 94, and 102.) Pursuant to 28 U.S.C. § 1404(a),
`
`OmniVision requests transfer of this action to the Northern District of California. This is
`
`OmniVision’s Opening Brief in support of that motion.
`
`III.
`
`SUMMARY OF ARGUMENT
`
`1.
`
`Transfer in this case is proper, and both the private and public interest factors
`
`strongly weigh in favor of transfer from the District of Delaware to the Northern District of
`
`California. As a threshold matter, IP Bridge could have brought its lawsuit in the Northern District
`
`of California because OmniVision’s principal place of business is in the Northern District of
`
`California. Cisneros Decl., ¶ 4.
`
`

`

`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 8 of 23 PageID #: 428
`
`2.
`
`The private interest factors strongly favor transfer to the Northern District of
`
`California. Plaintiff’s choice of forum should be accorded minimal weight. The only connections
`
`to the District of Delaware are:
`
`(1) Plaintiff filed suit in Delaware and (2) OmniVision is
`
`incorporated in Delaware. These facts are insufficient by themselves to keep this case in Delaware.
`
`See, e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221, 1224 (Fed. Cir. 2011); infra Section
`
`VI.B.1.a. In contrast, OmniVision’s principal places of business and relevant witnesses, books,
`
`records, and other evidence are all located in the Northern District of California. Cisneros Decl.,
`
`¶¶ 4, 10-16.
`
`In addition, IP Bridge’s principal place of business is located in Japan, which is
`
`located more closely to California. (D.I. 1, ¶ 1.) Further, many likely third-party witnesses who
`
`are named inventors of prior art references are located in the Northern District of California. See
`
`infra Section VI.B.1.d. Finally, the alleged claims of infringement arose in the Northern District
`
`of California because the design, development, and engineering of the accused products occur in
`
`the Northern District of California—not in the District of Delaware. See infra Section VI.B.1.c.
`
`Aside from incorporation and the current location of the suit—facts that should be accorded
`
`minimal weight—there are no ties to Delaware.
`
`3.
`
`The public interest factors also favor transfer to the Northern District of California.
`
`Practical considerations that could make the trial easy, expeditious, or inexpensive strongly favor
`
`transfer in this case because key witnesses and documents are likely all located in the Northern
`
`District of California and are easier to access there than in Delaware. Cisneros Decl., ¶¶ 10-16.
`
`In contrast, no relevant witnesses or evidence appear to be located in Delaware. Id.; (D.I. 1, ¶¶ 1-
`
`2.) The Northern District of California also has an interest in deciding disputes that call into
`
`question the work of its residents. The remaining public interest factors are neutral or inapplicable.
`
`- 2 -
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 9 of 23 PageID #: 429
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`Thus, OmniVision’s motion to transfer should be granted because both the private and public
`
`factors strongly favor transfer to the Northern District of California.
`
`IV.
`
`STATEMENT OF FACTS
`
`A.
`
`IP Bridge Has No Connection to Delaware.
`
`IP Bridge is a Japanese corporation with a principal place of business in Tokyo, Japan.
`
`(Id., 1, ¶ 1.)
`
`IP Bridge has no other listed offices or locations, and its listed chairperson and
`
`shareholders appear to reside in Japan. Schmidt Decl., Ex. A.
`
`B.
`
`OmniVision’s Documents and Witnesses Are Located in the Northern
`District of California.
`
`The headquarters for OmniVision are located in the Northern District of California and
`
`operate as its strategic center of business. Cisneros Decl., ¶ 4. In addition, relevant documents
`
`and evidence for the OmniVision image sensor products accused by IP Bridge of infringing the
`
`asserted patents are located in the Northern District of California. (D.I. 1, ¶¶ 21, 22, 30, 38, 46,
`
`54, 62, 70, 78, 86, 94, and 102.); Id., ¶ 11. Moreover, OmniVision has no offices or other facilities
`
`in Delaware. Id., ¶ 21.
`
`OmniVision is headquartered in Santa Clara, California in the Northern District of
`
`California.
`
`Id., ¶ 4. The majority of development for the accused image sensor products took
`
`place at OmniVision’s headquarters in Santa Clara, California. Id., ¶ 10. OmniVision’s engineers
`
`who are most knowledgeable regarding the accused image sensor technology are located at
`
`OmniVision’s Santa Clara, California office, as are the technical documentation relating to the
`
`product design. Id., ¶ 11. OmniVision’s financial and marketing documentation for the accused
`
`products is also physically present in Santa Clara, California, or electronically accessible from that
`
`location. Id., ¶ 12-13. No OmniVision personnel, with knowledge relating to the accused products
`
`- 3 -
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 10 of 23 PageID #: 430
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`or otherwise, nor any associated technical or financial documentation, are located in the District
`
`of Delaware. Id., ¶ 16.
`
`OmniVision outsources its wafer fabrication to manufacturers in Taiwan and China,
`
`namely TSMC and HLMC, respectively. Id., ¶ 7. TSMC’s American subsidiary, TSMC North
`
`America, is located in San Jose, California, in the Northern District of California.
`
`Id., ¶ 8.
`
`HLMC’s U.S. office is located in Fremont, California, also in the Northern District of California.
`
`Id., ¶ 9. No manufacturing of the accused products takes place in Delaware. Id., ¶ 26.
`
`V.
`
`APPLICABLE LEGAL STANDARDS
`
`The Federal Circuit requires transfer when “the transferee venue is ‘clearly more
`
`convenient’ than the venue chosen by the plaintiff.” In re Nintendo Co., 589 F.3d 1194, 1197
`
`(Fed. Cir. 2009) (citing In re Genentech, Inc., 566 F.3d 1338, 1342 (Fed. Cir. 2009) (granting
`
`mandamus and requiring transfer). In deciding whether to transfer an action under § 1404(a), a
`
`court must determine: (1) whether the transferee district is a district in which the action might
`
`have been brought; and (2) whether the action should be transferred for purposes of convenience,
`
`judicial economy, or in the interest of justice. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964).
`
`Whether transfer is in the interests of justice and the convenience of parties and witnesses involves
`
`a consideration of both public and private factors. Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241
`
`(1981).
`
`“[S]ection 1404(a) was intended to vest district courts with broad discretion to determine,
`
`on an individualized, case-by-case basis, whether convenience and fairness considerations weigh
`
`in favor of transfer.” Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir. 1995). The Third
`
`Circuit has enumerated a non-exhaustive set of private and public factors that the court may
`
`consider pursuant to § 1404(a). Id. The private interest factors are: (1) the plaintiff’s choice of
`
`forum; (2) the defendant’s preferred forum; (3) where the claim arose; (4) the convenience of the
`
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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 11 of 23 PageID #: 431
`
`parties; (5) the convenience of the witnesses to the extent the witnesses may be unavailable for
`
`trial in one of the fora; and (6) the location of books and records to the extent they may not be
`
`available in one of the fora. Id. at 879. The public interest factors are: (1) the enforceability of
`
`the judgment; (2) practical considerations that could make the trial easy, expeditious, or
`
`inexpensive; (3) the relative administrative difficulty in the two fora resulting from court
`
`congestion; (4) the local interest in deciding local controversies at home; and (5) the familiarity of
`
`the trial judge with the applicable state law in diversity cases. Id. at 879-80.
`
`Transfer is particularly appropriate where, as here, there are no potential witnesses and no
`
`relevant evidence in the district deciding the transfer motion and the most relevant evidence is
`
`concentrated in and around the transferee district. Angiodynamics, Inc. v. Vascular Solutions, Inc.,
`
`C.A. No. 09-554-JJF, 2010 WL 3037478, at *4 (D. Del. July 30, 2010) (transferring case because
`
`“Delaware has a limited connection to this litigation” and “most of the potential and identified
`
`witnesses, and relevant records and evidence are located in [proposed transferee district]”).
`
`VI.
`
`ARGUMENT
`
`A.
`
`IP Bridge Could Have Brought Its Lawsuit in the Northern District of
`California.
`
`As a threshold matter, “[t]he first question is, could the case have been brought in the Court
`
`to which transfer is sought?” Wacoh Co. v. Kionix Inc., 845 F. Supp. 2d 597, 600 (D. Del. 2012).
`
`The relevant inquiry for corporate defendants is whether the defendant is subject to personal
`
`jurisdiction in the transferee district. See 28 U.S.C. § 1391(c)(2). OmniVision’s headquarters are
`
`in the Northern District of California. Cisneros Decl., ¶ 4. This is not in dispute. (See D.I. 1, ¶
`
`2.) Thus, OmniVision is subject to personal jurisdiction in the Northern District of California, and
`
`this case could have been brought there as required by Section 1404(a).
`
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 12 of 23 PageID #: 432
`
`B.
`
`All Relevant Factors Under 28 U.S.C 1404(a) Weigh Strongly in Favor of
`Transfer to the Northern District of California.
`
`Courts in the Third Circuit have consistently recognized that “[i]n patent infringement
`
`actions, ‘as a general rule, the preferred forum is that which is the center of gravity of the accused
`
`activity.’” Ricoh Co. v. Honeywell, Inc., 817 F. Supp. 473, 482 n.17 (D.N.J. 1993) (quoting S.C.
`
`Johnson & Sons, Inc. v. Gillette Co., 571 F. Supp. 1185, 1188 (N.D.Ill. 1983) (emphasis
`
`added)). “[A] district court ‘ought to be as close as possible to the milieu of the infringing device
`
`and the hub of activity centered around its production.’” Id. (emphasis added). In determining the
`
`location of the “hub of activity,” courts are encouraged to consider “the location of a product’s
`
`development, testing, research and production” along with “the place where marketing and sales
`
`decisions were made, rather than where limited sales activity has occurred.” Id. In this case, there
`
`can be no question that the “center of gravity” for the patent infringement claims is the Northern
`
`District of California.
`
`Each of the image sensors accused by IP Bridge are designed, developed, and engineered
`
`at OmniVision’s Santa Clara, California offices. Cisneros Decl., ¶ 11. Additionally, IP Bridge
`
`accuses OmniVision of facilitating the alleged infringement by “the creation and dissemination of
`
`promotional and marketing materials, instructional materials, product manuals, and/or technical
`
`materials to manufacturers and/or distributors.” (D.I. 1 at ¶¶ 32, 40, 48, 56, 64, 72, 80, 88, 96, and
`
`104.) The creation and dissemination of such materials takes place at OmniVision’s Santa Clara,
`
`California offices. Cisneros Decl., ¶ 12. Thus, all allegedly infringing actions occur in the
`
`Northern District of California, as research and development of the accused products, along with
`
`sales and marketing of the accused products, takes place at OmniVision’s headquarters in the
`
`Northern District of California. Id., ¶¶ 11-13. All OmniVision employees knowledgeable about
`
`the same are located in the Northern District of California. Id. at ¶ 10. Further, records, documents,
`
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`

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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 13 of 23 PageID #: 433
`
`and evidence related to the allegedly infringing products are located in the Northern District of
`
`California. Id.
`
`The following specific considerations under the Third Circuit’s Jumara factors confirm
`
`that the Northern District of California, as the epicenter of this dispute, is the proper forum.
`
`1.
`
`The Private Interest Factors Strongly Favor Transfer to the Northern
`District of California.
`
`a.
`
`Plaintiff’s Choice of Forum Should Be Accorded Minimal
`Weight.
`
`Although the Jumara factors place weight on a plaintiff’s choice of forum, “[w]hen a
`
`plaintiff initiates a lawsuit in a venue that is not its home forum, the plaintiff’s choice of forum is
`
`afforded less deference.” Ivoclar Vivadent AG v. 3M Co., C.A. No. 11-1183-GMS, 2012 WL
`
`2374657, at *9 (D. Del. June 22, 2012) (citing Link_A_Media, 662 F.3d at 1223) (“When a
`
`plaintiff brings its charges in a venue that is not its home forum, . . . that choice of forum is entitled
`
`to less deference.”); Semcon Tech, LLC v. Intel Corp., C.A. No. 12-531-RGA, 2013 WL 126421,
`
`at *2 (D. Del. Jan. 8, 2013) (“[P]laintiff’s choice of forum [is] not as compelling if it is not
`
`plaintiff’s ‘home turf.’”) (citation and internal quotation marks omitted); see also Pennwalt Corp.
`
`v. Purex Indus., Inc., 659 F. Supp. 287, 289 (D. Del. 1986) (“A defendant’s burden with respect to
`
`plaintiff’s choice of forum is easier to meet where the plaintiff has not brought suit on its ‘home
`
`turf.’”). “[T]he term ‘home forum’ [means] the jurisdiction in which a party physically resides . .
`
`. .” Linex Techs., Inc. v. Hewlett-Packard Co., C.A. No. 11-400-GMS, 2013 WL 105323, at *3
`
`(D. Del. Jan. 7, 2013) (emphasis added). Defendant’s state of incorporation is irrelevant to this
`
`analysis. See Link_A_Media, 662 F.3d at 1224 (“Neither § 1404 nor Jumara list a party’s state of
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`incorporation as a factor for a venue inquiry.”).
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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 14 of 23 PageID #: 434
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`Here, IP Bridge’s “home turf” is in Japan where its principal place of business is located.
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`(D.I. 1, ¶ 1.) Similarly, OmniVision’s “home turf” is not in Delaware because its principal place
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`of business is in California. See supra Section IV.B.1.a. Because IP Bridge’s only connection to
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`this District is that it chose Delaware as its forum, IP Bridge’s forum choice should be given less
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`deference. See Ivoclar Vivadent AG, 2012 WL 2374657, at *9. OmniVision’s incorporation in
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`Delaware does nothing to tip the scale against transfer. See Link_A_Media, 662 F.3d at 1224.
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`Courts in this District have granted motions to transfer in similar situations where neither
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`plaintiff nor defendant’s home turf was in Delaware, regardless of any party’s state of
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`incorporation. See, e.g., MoneyCat Ltd v. PayPal Inc., C.A, No. 13-1358, 2014 WL 2042699, at
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`*6 (D. Del. May 15, 2014) (granting motion to transfer where neither foreign plaintiff nor
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`defendant incorporated in Delaware had significant physical connection to the forum); Semcon
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`Tech, 2013 WL 126421, at *2, 5, 8 (granting motions to transfer where defendants were Delaware
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`corporations with principal places of business in Texas and the Northern District of California);
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`Linex Techs., 2013 WL 105323, at *1 (granting motion to transfer where plaintiff and defendants
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`were both incorporated in Delaware and where defendants had their principal places of business
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`in Northern District of California). Thus, plaintiff’s choice of forum should be accorded minimal
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`weight.
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`b.
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`OmniVision’s Preferred Forum Weighs in Favor of Transfer.
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`As is apparent from this motion, OmniVision’s preference is the Northern District of
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`California. This is a rational and legitimate choice informed by the fact that OmniVision’s
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`headquarters and principal place of business are in the Northern District of California. Cisneros
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`Decl., ¶ 4. OmniVision’s witnesses and evidence are at its principal place of business in the
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`Northern District of California. Id., ¶ 10. Indeed, the bulk of the relevant evidence for this case
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`is in the Northern District of California. See supra Section IV.B1.e.; see also Wacoh, 845 F. Supp.
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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 15 of 23 PageID #: 435
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`2d at 602-03 (“In patent infringement cases, the bulk of the relevant evidence usually comes from
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`the accused infringer.”) (citing In re Genentech, Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009)).
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`Furthermore, likely third-party witnesses, such as prior art witnesses, reside within the trial
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`subpoena power of the Northern District of California. See infra Section VI.B.1.d. Given the
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`Northern District of California’s close connections to this case, OmniVision’s “decision to seek to
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`litigate in that District is rational and legitimate.” See Semcon Tech, 2013 WL 126421, at *2. “As
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`this Court has often held, the physical proximity of the proposed transferee district to a defendant’s
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`principal or key place of business (and relatedly, to witnesses and evidence potentially at issue in
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`the case) is a clear, legitimate basis for seeking transfer.” Papst Licensing GmbH & Co. KG v.
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`Lattice Semiconductor Corp., 126 F. Supp. 3d 430, 439 (D. Del. 2015) (granting transfer where
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`foreign plaintiff had no ties to forum and defendant had significant ties to Northern District of
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`California including location of headquarters, witnesses, evidence, and development of accused
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`product) (citing Nalco Co. v. AP Tech Grp. Inc., C.A. No. 13–1063–LPS, 2014 WL 3909114, at
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`*1 (D. Del. Aug. 8, 2014); Genetic Techs. Ltd. v. Natera, Inc., C.A. No. 12–1737–LPS, 2014 WL
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`1466471, at *1 (D. Del. Apr. 15, 2014)). Thus, OmniVision’s forum preference weighs in favor
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`of transfer.
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`c.
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`Transfer Is Favored Because OmniVision’s Products Are
`Designed and Developed in the Northern District of California.
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`Patent cases arise wherever someone has committed acts of infringement. Linex Techs.,
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`2013 WL 105323, at *4. In evaluating this factor, courts in this District “[have] recognized that
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`infringement claims have even deeper roots in the forum where the accused products were
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`developed. Therefore, the ‘design, development, and marketing’ of the defendants’ products in
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`the Northern District of California leads this factor to weigh slightly in favor of transfer.” Linex
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`Techs., 2013 WL 105323, at *4 (citations omitted) (citing in part Wacoh, 845 F. Supp. 2d at 602
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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 16 of 23 PageID #: 436
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`(“To some extent, the claims arose where the allegedly infringing products were designed and
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`manufactured.”)); see also Papst Licensing, 126 F. Supp. 3d at 439 (The court “typically focuses
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`on the location of the production, design and manufacture of the accused instrumentalities.”)
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`(citing McRo, Inc. v. Activision Blizzard, Inc., C.A. No. 12–1508–LPS–CJB, 2013 WL 6571618,
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`at *5 (D. Del. Dec. 13, 2013), adopted by 2013 WL 6869866 (D. Del. Dec. 30, 2013)); Intellectual
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`Ventures I LLC v. Altera Corp., 842 F. Supp. 2d 744, 755 (D. Del. 2012) (“‘[I]f there are significant
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`connections between a particular venue and the events that gave rise to a suit, this factor should be
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`weighed in that venue's favor.’”) (quoting In re Hoffman–La Roche, Inc., 587 F.3d 1333, 1338
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`(Fed. Cir. 2009)).
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`In this case, the accused OmniVision image sensors are designed, developed, and marketed
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`from OmniVision headquarters located in the Northern District of California. Cisneros Decl., ¶¶
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`11-13; see also supra Section IV.B. Moreover, OmniVision does not have any offices or other
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`facilities in Delaware. Id., ¶ 21. See Intellectual Ventures I, 842 F. Supp. 2d at 755 (“The record
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`so far indicates that at least some of the research and development activities relating to the
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`allegedly infringing products occurred in the Northern District, and none in Delaware. This factor
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`weighs in favor of transfer.”) (internal citations omitted).
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`It is also of minimal relevance that the accused OmniVision products are offered for sale
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`nationwide or incorporated into products for use nationwide. See Papst Licensing, 126 F. Supp.
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`3d at 439-40 (“Although some accused products may be used to perform the patented methods in
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`Delaware (after sale here), it is clear that the allegedly infringing acts at issue have a far stronger
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`connection to the Northern District of California than they do with Delaware (or any other district).
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`In such a circumstance, the Court finds that this factor weighs in favor of transfer.”); see also
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`Intellectual Ventures I, 842 F. Supp. 2d at 755 (finding this factor weighed in favor of transfer
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`Case 1:16-cv-00290-MN Document 11 Filed 05/16/16 Page 17 of 23 PageID #: 437
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`where, inter alia, some research and development of allegedly infringing products had occurred in
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`the proposed transferee district and none in Delaware, although the allegedly infringing products
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`were sold nationwide). With regard to the alleged acts of indirect infringement, any such acts
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`“would emanate from the Northern District of California” where OmniVision is headquartered and
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`makes its sales and marketing decisions. Papst Licensing, 126 F. Supp. 3d at 439; D.I. 1 at ¶¶ 32,
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`40, 48, 56, 64, 72, 80, 88, 96, and 104; see also supra Section IV.B. As a result, none of the
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`relevant or alleged infringing activity occurs within this District. Thus, because the alleged claim
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`arose in the Northern District of California, by virtue of the location of OmniVision’s design,
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`development, and engineering of the accused feature, this factor weighs in favor of transfer.
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`d.
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`The Convenience of the Parties and Witnesses Favors
`Transfer.
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`“The convenience of the witnesses is probably the single most important factor in the
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`transfer analysis.”1 In re Genentech, 566 F.3d at 1343. Here,