Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 1 of 19 PageID #: 1090
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
`
`COLLABO INNOVATIONS, INC.,
`
`Plaintiff,
`
`v.
`
`OMNIVISION TECHNOLOGIES, INC.,
`
`Defendant.
`
`)
`)
`)
`)
`)
`)
`) ·
`)
`)
`
`Civil Action No. 16-197-SLR-SRF
`
`REPORT AND RECOMMENDATION
`
`I.
`
`INTRODUCTION
`
`On March 29, 2016, plaintiff Collabo Innovations, Inc. ("Collabo" or "plaintiff') filed
`
`this action against defendant OmniVision Technologies, Inc. ("OmniVision" or "defendant"),
`
`alleging infringement of United States Patent Nos. 7,411,180 ("the '180 patent"), 8,592,880 ("the
`
`'880 patent"), 7,944,493 ("the '493 patent"), 7,728,895 ("the '895 patent"), and 8,004,026 ("the
`
`'026 patent") (collectively, the "patents-in-suit"). (D.I. 1) Pending before the court are
`
`OmniVision's motion to transfer venue to the Northern District of California pursuant to 28
`
`U.S.C. § 1404(a) (D.I. 8), and OmniVision's motion to dismiss for failure to state a claim
`
`pursuant to Federal Rule of Civil Procedure 12(b)(6) (D.I. 19). For the following reasons, I
`
`recommend that the court deny OmniVision's motion to transfer and grant-in-part OmniVision's
`
`motion to dismiss Collabo' s claims for indirect infringement.
`
`II.
`
`BACKGROUND
`
`Collabo is a Delaware corporation with its principal place of business in Costa Mesa,
`
`California. (D.I. 14 at~ 1) OmniVision is a Delaware corporation maintaining its principal
`
`place of business in Santa Clara, California. (Id at~ 2) On August 12, 2008, the' 180 patent,
`
`entitled "Solid state image sensor with transparent film on micro-lenses and offsetting positions
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 2 of 19 PageID #: 1091
`
`of micro-lenses and color filters from a central portion of a corresponding light receiving area,"
`
`was issued by the U.S. Patent and Trademark Office ("PTO"). (Id at~ 6) On November 26,
`
`2013, the '880 patent, entitled "Solid-State Imaging Device," was issued by the PTO. (Id at~ 7)
`
`The '493 patent, entitled "Solid-State Imaging Device with Specific Contact Arrangement," was
`
`issued by the PTO on May 17, 2011. (Id. at~ 8) On June 1, 2010, the PTO issued the '895
`
`patent, entitled "Solid-state image sensing device having shared floating diffusion portions." (Id.
`
`at~ 9) The '026 patent, entitled "Solid-State Imaging Device," was issued by the PTO on
`
`August 23, 2011. (Id. at~ 10) Collabo is the sole owner by assignment of the patents-in-suit.
`
`(Id. at ~~ 6-10)
`
`Collabo filed its original complaint against OmniVision in this case on March 29, 2016,
`
`alleging direct and indirect infringement of the patents-in-suit. (D.I. 1) On May 17, 2016,
`
`OmniVision filed a motion to dismiss Collabo's claims for indirect infringement. (D.I. 5)
`
`Collabo responded by filing an amended complaint on June 3, 2016, alleging direct and indirect
`
`infringement of the patents-in-suit. (D.I. 14) OmniVision filed the pending motion to dismiss
`
`the claims for indirect infringement set forth in the amended complaint on June 20, 2016. (D.I.
`
`19) For each of the five asserted patents, Collabo makes identical allegations regarding induced
`
`and contributory infringement:
`
`Upon information and belief, Defendant has been and continues to actively and
`knowingly induce, with specific intent, infringement of the '180 patent under 3 5
`U.S.C. § 271(b) and contributes to the infringement of the '180 patent under 35
`U.S.C. § 271(c), by making, using, offering for sale, selling, and/or importing
`image sensors, including, but not limited to, the OmniVision OV7740 Image
`Sensor, and related products and technologies, including, but not limited to,
`camera modules in products such as the Nintendo Wii U Gamepad Console.
`
`2
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 3 of 19 PageID #: 1092
`
`(D.1. 14 at if 18; see also ifif 25 ['880 patent], 32 ['493 patent], 39, 41 ['895 patent], 48, 50 ['026
`
`patent]). TQ.e amended complaint sets forth the following allegations regarding Collabo's
`
`knowledge of the patents-in-suit:
`
`Upon information and belief, the products containing these semiconductor devices
`have no substantial non-infringing uses, and Defendant had.knowledge of the
`non-staple nature of the products containing these semiconductor devices and the
`'180 patent at least by the filing of the Original Complaint identifying the '180
`patent and products accused of infringement.
`
`(Id at if 19; see also ifif 26 ['880 patent], 33 ['493 patent], 42 ['895 patent], 51 ['026 patent])
`
`III.
`
`STANDARDS OF REVIEW
`
`A.
`
`Transfer of Venue
`
`Section 1404(a) of Title 28 of the United States Code grants district courts the authority
`
`to transfer venue "[f]or the convenience of parties and witnesses, in the interests of justice ... to
`
`any other district or division where it might have been brought." 28 U.S.C. § 1404(a). Much has
`
`been written about the legal standard for motions to transfer under 28 U.S.C. § 1404(a). See,
`
`e.g., In re Link_A_Media Devices Corp., 662 F.3d 1221 (Fed. Cir. 2011); Jumara v. State Farm
`
`Ins. Co., 55 F.3d 873 (3d Cir. 1995); Helicos Biosciences Corp. v. fllumina, Inc., 858 F. Supp. 2d
`
`367 (D. Del. 2012).
`
`Referring specifically to the analytical framework described in Helicos, the court starts
`
`with the premise that a defendant's state of incorporation has always been "a predictable,
`
`legitimate venue for bringing suit" and that "a plaintiff, as the injured party, generally ha[s] been
`
`'accorded [the] privilege of bringing an action where he chooses."' 858 F. Supp. 2d at 371
`
`(quoting Norwood v. Kirkpatrick, 349 U.S. 29, 31 (1955)). Indeed, the Third Circuit in Jumara
`
`reminds the reader that "[t]he burden of establishing the need for transfer ... rests with the
`
`3
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 4 of 19 PageID #: 1093
`
`movant" and that, "in ruling on defendants' motion, the plaintiffs choice of venue should not be
`
`lightly disturbed." 55 F.3d at 879 (citation omitted).
`
`The Third Circuit goes on to recognize that,
`
`[i]n ruling on§ 1404(a) motions, courts have not limited their consideration to the
`three enumerated factors in§ 1404(a) (convenience of parties, convenience of
`witnesses, or interests of justice), and, indeed, commentators have called on the
`courts to "consider all relevant factors to determine whether on balance the
`litigation would more conveniently proceed and the interests of justice be better
`served by transfer to a different forum."
`
`Id (citation omitted). The Court then describes some of the "many variants of the private and
`
`public interests protected by the language of§ 1404(a)." Id
`
`The private interests have included: plaintiffs forum of preference as manifested
`in the original choice; the defendant's preference; whether the claim arose
`elsewhere; the convenience of the parties as indicated by their relative physical
`and financial condition; the convenience of the witnesses - but only to the extent
`that the witnesses may actually be unavailable for trial in one of the fora; and the
`location of books and records (similarly limited to the extent that the files could
`not be produced in the alternative forum).
`
`The public interests have included: the enforceability of the judgment; practical
`considerations that could make the trial easy, expeditious, or inexpensive; the
`relative administrative difficulty in the two fora resulting from court congestion;
`the local interest in deciding local controversies at home; the public policies of
`the fora; and the familiarity of the trial judge with the applicable state law in
`diversity cases.
`
`Id (citations omitted).
`
`B.
`
`Failure to State a Claim
`
`Rule 12(b)(6) permits a party to move to dismiss a complaint for failure to state a claim
`
`upon which relief can be granted. Fed. R. Civ. P. 12(b)(6). -When considering a Rule 12(b)(6)
`
`motion to dismiss, the court must accept .as true all factual allegations in the complaint and view
`
`them in the light most favorable to the plaintiff. Umland v. Planco Fin. Servs., 542 F.3d 59, 64
`
`(3d Cir. 2008).
`
`4
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 5 of 19 PageID #: 1094
`
`To state a claim upon which relief can be granted pursuant to Rule 12(b)(6), a complaint
`
`must contain a "short and plain statement of the claim showing that the pleader is entitled to
`
`relief." Fed. R. Civ. P. 8(a)(2). Although detailed factual allegations are not required, the
`
`complaint must set forth sufficient factual matter, accepted as true, to "state a claim to relief that
`
`is plausible on its face." Bell At!. Corp. v. Twombly, 550 U.S. 544, 570 (2007); see also Ashcroft
`
`v. Iqbal, 556 U.S. 662, 663 (2009). A claim is facially plausible when the factual allegations
`
`allow the court to draw the reasonable inference that the defendant is liable for the misconduct
`
`alleged. Iqbal, 556 U.S. at 663; Twombly, 550 U.S. at 555-56.
`
`When determining whether dismissal is appropriate, the court must take three steps. 1 See
`
`Santiago v. Warminster Twp., 629 F.3d 121, 130 (3d Cir. 2010). First, the court must identify
`
`the elements of the claim. Iqbal, 556 U.S. at 675. Second, the court must identify and reject
`
`conclusory allegations. Id at 678. Third, the court should assume the veracity of the well-
`
`pleaded factual allegations identified under the first prong of the analysis, and determine whether
`
`they are sufficiently alleged to state a claim for relief. Id; see also Malleus v. George, 641 F.3d
`
`560, 563 (3d Cir. 2011). The third prong presents a context-specific inquiry that "draw[s] on
`
`[the court's] experience and common sense." Id at 663-64; see also Fowler v. UPMC
`
`Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). As the Supreme Court instructed in Iqbal, "where
`
`the well-pleaded facts do not permit the court to infer more than the mere possibility of
`
`· misconduct, the complaint has alleged - but it has not 'show[ n]' - 'that the pleader is entitled to
`
`relief."' Iqbal, 556 U.S. at 679 (quoting Fed. R. Civ. P. 8(a)(2)).
`
`1 Although Iqbal describes the analysis as a "two-pronged approach," the Supreme Court
`observed that it is often necessary to "begin by taking note of the elements a plaintiff must plead
`to state a claim." 556 U.S. at 675, 679. For this reason, the Third Circuit has adopted a three(cid:173)
`pronged approach. See Santiago v. Warminster Twp., 629 F.3d 121, 130 n.7 (3d Cir. 2010);
`Malleus v. George, 641F.3d560, 563 (3d Cir. 2011).
`
`5
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 6 of 19 PageID #: 1095
`
`IV.
`
`ANALYSIS
`
`A.
`
`Transfer of Venue
`
`With the "jurisdictional guideposts" described at § III.A, supra, in mind, the court turns
`
`to the "difficult issue of federal comity" presented by transfer motions. E.E. 0. C. v. Univ. of Pa.,
`
`850 F.2d 969, 976 (3d Cir. 1988). Collabo has not challenged OmniVision's assertion that venue
`
`would also be proper in the Northern District of California. (D.I. 17) As such, the court does not
`
`further address the appropriateness of the proposed transferee forum. 2 See 28 U.S.C. § 1404(a).
`
`Turning to the Jumara factors, the court notes that the parties do not dispute several of
`
`the public interest factors: (1) the enforceability of the judgment, (2) the relative administrative
`
`difficulty in the two fora resulting from court congestion, (3) the public policies of the fora, and
`
`(4) the familiarity of the trial judge with the applicable state law in diversity cases. (D.I. 9 at 16;
`
`D.I. 17 at 10) These factors are therefore neutral.
`
`1.
`
`Private Interests
`
`(a)
`
`Plaintiff's forum preference
`
`According to Omni Vision, Collabo' s forum preference should be given less weight in
`
`this case because Delaware is not Collabo's "home turf." (D.I. 9 at 7-8) In response, Collabo
`
`contends that its choice of forum should be afforded significant deference, particularly because
`
`both parties are incorporated in Delaware. (D .I. 1 7 at 2-3)
`
`2 The first step in the transfer analysis is to determine whether the movant has demonstrated that
`the action could have been brought in the proposed transferee venue in the first instance. See
`Mallinckrodt, Inc. v. E-Z-Em, Inc., 670 F. Supp. 2d 329, 356 (D. Del. 2009). This issue is not
`disputed.
`
`6
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 7 of 19 PageID #: 1096
`
`Plaintiffs have historically been accorded the privilege of choosing their preferred venue
`
`for pursuing their claims. See C.R. Bard, Inc. v. Angiodynamics, Inc., C.A. No. 15-218-SLR,
`
`2016 WL 153033, at *2--4 (D. Del. Jan. 12, 2016). "It is black letter law that a plaintiffs choice
`
`of a proper forum is a paramount consideration in any determination of a transfer request, and
`
`that choice 'should not be lightly disturbed."' Shuttle v. Armco Steel Corp., 431 F.2d 22, 25 (3d
`
`Cir. 1970) (internal citation omitted). However, courts have recognized that "when a plaintiff
`
`chooses to bring an action in a district where it is not physically located, its forum preference is
`
`entitled to something less than the paramount consideration .... " Linex Techs., Inc. v. Hewlett(cid:173)
`
`Packard Co., C.A. No. 11-400-GMS, 2013 WL 105323, at *3 (D. Del. Jan. 7, 2013).
`
`In the present action, Collabo does not allege that it has facilities in Delaware. However,
`
`even where the chosen forum is not a "home forum," courts still give a plaintiffs preference
`
`"heightened" weight. Linex, 2013 WL 105323, at *3. "The deference afforded plaintiffs choice
`
`of forum will apply as long as plaintiff has selected the forum for some legitimate reason."
`
`Cypress Semiconductor Corp. v. Integrated Circuit Sys., Inc., C.A. No. 01-199-SLR, 2001 WL
`
`1617186, at *2 (D. Del. Nov. 28, 2001) (internal citations omitted). A party's state of
`
`incorporation is a traditional and legitimate venue. See Helicos, 858 F. Supp. 2d at 371; see also
`
`ChriMar Sys., Inc. v. Cisco Sys., Inc., C.A. No. 11-1050-GMS, 2013 WL 828220, at *4 (D. Del.
`
`Mar. 6, 2013) (citing Schubert v. OSRAM AG, C.A. No. 12-923-GMS, 2013 WL 587890, at *4
`
`(D. Del. Feb. 14, 2013)); Intellectual Ventures I LLC v. Checkpoint Software Techs. Ltd, 797 F.
`
`Supp. 2d 472, 482 (D. Del. 2011) (concluding that "when a corporation chooses to incorporate in
`
`Delaware and accept the benefits of incorporating in Delaware, it cannot complain once another
`
`corporation brings suit against it in Delaware."). Delaware is a legitimate forum, as both Collabo
`
`and OmniV.ision are incorporated in Delaware. See FastVDO LLC v. Paramount Pictures Corp.,
`
`7
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 8 of 19 PageID #: 1097
`
`947 F. Supp. 2d 460, 462 (D. Del. 2013). This court does not generally elevate a defendant's
`
`choice of venue over that of a plaintiff, and "the fact that plaintiffs have historically been
`
`accorded the privilege of choosing their preferred venue for pursuing their claims remains a
`
`significant factor." Id In light of the fact that Delaware is not Collabo's home turf, but is the
`
`state of incorporation of both parties, the court awards this factor "increased weight in the
`
`Jumara analysis but less than the 'substantial' or 'paramount' weight" it would be given had
`
`Collabo filed suit in its home forum. -ChriMar, 2013 WL 828220, at *4. This factor weighs
`
`against transfer.
`
`(b)
`
`Defendant's forum preference
`
`OmniVision contends that its preference to litigate in the Northern District of California
`
`weighs in favor of transfer because both parties' principal places of business are located in
`
`California, as are the witnesses, the likely third-party witnesses, and the relevant evidence. (D.I.
`
`9 at 8-9) In response, Collabo alleges that OmniVision's preferred venue should be given less
`
`weight than Collabo' s choice because Collabo selected a legitimate forum, and no unique or
`
`unexpected burden exists that would affect OmniVision's ability to litigate in Delaware. (D.I. 17
`
`at 3-4)
`
`Courts "decline to elevate [a defendant's] convenience over the choice of a neutral forum
`
`selected by [the defendant] as the situs of [its] incorporation." Stephenson v. Game Show
`
`Network, LLC, 933 F. Supp. 2d 674, 678 (D. Del. 2013) (citing Cradle IP, LLC v. Texas
`
`Instruments, Inc., 923 F. Supp. 2d 696, 699-700 (D. Del. 2013)). Given that convenience is
`
`separately considered in the transfer analysis, the court declines to elevate Omni Vision's choice
`
`of venue over Collabo's preferred forum. C.R. Bard, 2016 WL 153033, at *2.
`
`8
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 9 of 19 PageID #: 1098
`
`( c) Where the claim arose
`
`OmniVision asserts that the case should be transferred because the design, development,
`
`and marketing of the allegedly infringing products took place at Omni Vision headquarters in the
`
`Northern District of California. (D.I. 9 at 10) According to OmniVision, the fact that its
`
`products are offered for sale nationwide or incorporated into products for use nationwide is of
`
`minimal relevance to the analysis. (Id) Collabo responds that the acts giving rise to the present
`
`action occur nationwide, and the location where OmniVision designs and develops the accused
`
`products should be given little to no weight. (D.I. 17 at 4-5)
`
`A claim for patent infringement arises wherever someone has committed acts of
`
`infringement, to wit, "makes, uses, offers to sell, or sells any patented invention" without
`
`authority. See generally 35 U.S.C. § 271(a); Red Wing Shoe Co., Inc. v. Hockerson-Halberstadt,
`
`Inc., 148 F.3d 1355, 1360 (Fed. Cir. 1998) (an infringement claim "arises out of instances of
`
`making, using, or selling the patented invention"). Because OmniVision manufactures, sells, and
`
`uses its allegedly infringing products nationwide, the asserted patent claims may be said to arise
`
`in Delaware. See C.R. Bard, 2016 WL 153033, at *2-4 (finding that a patent claim arose in
`
`Delaware because the defendant sold products there); Scientific Telecomm., LLC v. Adtran, Inc.,
`
`C.A. No. 15-647-SLR, 2016 WL 1650760, at *1 (D. Del. Apr. 25, 2016) (holding that, despite
`
`ties to Alabama, the defendant operated on a global basis, and its incorporation in Delaware
`
`precluded arguments that the forum was inconvenient absent a showing of a unique or
`
`unexpected burden). This factor is neutral.
`
`( d)
`
`Convenience of the parties and witnesses
`
`Omni Vision contends that the convenience of the parties and the witnesses weighs
`
`strongly in favor of transfer because its employees are located in the Northern District of
`
`9
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 10 of 19 PageID #: 1099
`
`California, and no witnesses are located in Delaware. (D.I. 9 at 11-12) OmniVision also
`
`indicates that numerous potential third-party witnesses are located throughout California and
`
`would only be subject to the trial subpoena power of the Northern District of California. (Id at
`
`12) In response, Collabo alleges that the convenience of the witnesses should be given little to
`
`no weight because it is only relevant to the extent that any particular witness is actually unable or
`
`unwilling to testify at trial, and OmniVision has made no such showing in the present matter.
`
`(D.I. 17 at 6-7)
`
`In evaluating the convenience of the parties, a district court should focus on the parties'
`
`relative physical and financial condition. See C.R. Bard, 2016 WL 153033, at *3 (citing Jumara
`
`v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995)). When a party "accept[s] the benefits of
`
`incorporation under the laws of the State of Delaware, 'a company should not be successful in
`
`arguing that litigation' in Delaware is 'inconvenient,' 'absent some showing of a unique or
`
`unexpected burden."' Scientific Telecomm., LLC v. Adtran, Inc., C.A. No. 15-647-SLR, 2016
`
`WL 1650760, at *1 (D. Del. Apr. 25, 2016) (quoting ADE Corp. v. KLA-Tencor Corp., 138 F.
`
`Supp. 2d 565, 573 (D. Del. 2001)). OmniVision is a large Delaware corporation with resources
`
`to litigate in this district. See Stephenson v. Game Show Network, LLC, 933 F. Supp. 2d 674,
`
`670 (D. Del. 2013) (denying a motion to transfer where the defendant was incorporated in
`
`Delaware and had the resources to litigate there); Versata Software, Inc. v. Callidus Software
`
`Inc., 944 F. Supp. 2d 357, 361 (D. Del. 2013) (transfer not warranted where both parties had
`
`experience litigating in multiple jurisdictions). This factor weighs against transfer.
`
`The relevant inquiry with respect to convenience of the witnesses is not whether
`
`witnesses are inconvenienced by litigation that matters, but rather, whether witnesses "actually
`
`may be unavailable for trial in one of the fora." Jumara, 55 F.3d at 879. The inconvenience of
`
`10
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 11 of 19 PageID #: 1100
`
`travel does not demonstrate that witnesses would "actually be unavailable for trial," as required
`
`by Jumara. 55 F.3d 873, 879 (3d Cir. 1995). The court has previously found that
`
`travel expenses and inconveniences incurred for that purpose, by a Delaware
`defendant, [are] not overly burdensome. From a practical standpoint, much of the
`testimony presented at trial these days is presented via recorded depositions, as
`opposed to witnesses traveling and appearing live. There certainly is no obstacle
`to [a party] embracing this routine trial practice.
`
`Oracle Corp. v. epicRealm Licensing, LP, No. Civ. 06-414-SLR, 2007 WL 901543, at *4 (D.
`
`Del. Mar. 26, 2007). Because OmniVision has not identified any witnesses who cannot appear
`
`in Delaware for trial, this factor is neutral.
`
`( e)
`
`Location of books and records
`
`OmniVision alleges that transfer is warranted because the bulk of documents and records
`
`are located in the Northern District of California. (D.1. 9 at 13-14) In response, Collabo
`
`contends that documents are exchanged electronically, and this factor is therefore of little
`
`consequence. (D.I. 17 at 7-8)
`
`The Third Circuit in Jumara advised that the location of books and records is only
`
`determinative if "the files c[an] not be produced in the alternative forum." 55 F.3d at 879.
`
`However, the Federal Circuit has explained that "[i]n patent infringement cases, the bulk of the
`
`relevant evidence usually comes from the accused infringer. Consequently, the place where the
`
`defendant's documents are kept weighs in favor of transfer to that location." In re Genentech,
`
`Inc., 566 F.3d 1338, 1345 (Fed. Cir. 2009). Nevertheless, courts within the District of Delaware
`
`have repeatedly recognized that recent technological advances have reduced the weight of this
`
`factor. See, e.g., Intellectual Ventures I LLC, v. Checkpoint Software Techs. Ltd., 797 F. Supp.
`
`2d 472, 485 (D. Del. 2011); Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 208 (D. Del.
`
`1998); Nihon Tsushin Kabushiki Kaisha v. Davidson, 595 F. Supp. 2d 363, 372 (D. Del. 2009).
`
`Today, "virtually all businesses maintain their books and records in electronic format readily
`
`11
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 12 of 19 PageID #: 1101
`
`available for review and use at any location." C. R. Bard, 2016 WL 153033, at *3; see also
`
`Quest Integrity USA, LLC v. Clean Harbors Indus. Servs., Inc., 114 F. Supp. 3d 187, 191 (D.
`
`Del. 2015).
`
`OmniVision has not shown that relevant documents cannot be transported to Delaware.
`
`See Cruise Control Techs. LLC v. Chrysler Group LLC, C.A. No. 12-1755-GMS, 2014 WL
`
`1304820, at *4 (D. Del. Mar. 31, 2014) (concluding that location of books and records is only
`
`relevant "where the Defendants show that there are books and records that cannot be transported
`
`or transmitted to Delaware."). Therefore, this factor is neutral.
`
`2.
`
`Public Interests
`
`(a)
`
`Practical considerations
`
`In support of its motion to transfer, OmniVision contends that practical considerations
`
`weigh in favor of transfer to the Northern District of California because a trial in Delaware will
`
`be more expensive and difficult due to travel considerations and expenses, including costs of
`
`local counsel. (D.I. 9 at 14-15) In response, Collabo alleges that the Northern District of
`
`California would not be significantly more convenient or cost-effective, especially given the co(cid:173)
`
`pending case against Sony Corporation in Delaware involving one of the patents-in-suit. (D.I. 17
`
`at 8-9)
`
`"In ex~ining this Jumara factor, our Court has often cited the existence of related
`
`lawsuits in one of the fora at issue as being an important practical consideration to be taken into
`
`account." Ross v. Institutional Longevity Assets LLC, C.A. No. 12-102-LPS-CJB, 2013 WL
`
`5299171, at* 13 (D. Del. Sept. 20, 2013). Maintaining the present action together with the co-
`
`12
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 13 of 19 PageID #: 1102
`
`pending case filed by Collabo against Sony Corporation, 3 which involves an overlapping patent-
`
`in-suit, would best serve the interests of judicial economy. See Good Tech. Corp. v. Air Watch,
`
`LLC, C.A. No. 14-1092-LPS-CJB, 2015 WL 296501, at *10 (D. Del. Jan. 21, 2015) ("The fact
`
`that the Court is overseeing another case involving the same patent (a case likely to involve a
`
`number of issues common to this one) should be accounted for" in the transfer analysis).
`
`Although the added cost of local counsel could make litigation here more expensive than in the
`
`proposed transferee court, this added cost weighs only slightly in favor of transfer, and does not
`
`outweigh the benefits to be gained by maintaining the co-pending cases together. See Papst
`
`Licensing GmbH & Co. KG v. Lattice Semiconductor Corp., 126 F. Supp. 3d 430, 444 (D. Del.
`
`2015) (citing Ip Venture, Inc. v. Acer, Inc., 879 F. Supp. 2d 426, 433 (D. Del. 2012); Intellectual
`
`Ventures I LLC v. Checkpoint Software Techs. Ltd., 797 F. Supp. 2d 472, 485 (D. Del. 2011);
`
`Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192, 205-06 (D. Del. 1998)). Overall, this factor
`
`weighs slightly against transfer.
`
`(b)
`
`Local interest
`
`OmniVision contends that the Northern District of California has a local interest in
`
`deciding the dispute because the work and reputation of individuals residing_ in the district are at
`
`stake. (D.I. 9 at 15-16) In response, Collabo alleges that patent litigation does not constitute a
`
`local interest. (D.I. 17 at 10)
`
`"Local interest in deciding local controversies is not a dispositive factor, as patent
`
`litigation does not constitute a local controversy in most cases." C.R. Bard, 2016 WL 153033,
`
`at *4. Indeed, the claims may be said to arise in Delaware, among other states. See§
`
`3 See Collabo Innovations, Inc. v. _Sony Corporation et al., C.A. No. 15-1094-RGA (D. Del. Nov.
`25, 2015).
`
`13
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 14 of 19 PageID #: 1103
`
`IV(A)(l)(c), supra. Additionally, "patent litigation implicates constitutionally protected property
`
`rights, is governed by federal law reviewed by a court of appeals of national (as opposed to
`
`regional) stature, and affects national (if not global) markets." C.R. Bard, 2016 WL 153033, at
`
`*4 (citing Cradle IP v. Texas Instruments, Inc., 923 F. Supp. 2d 696, 700-01 (D. Del. 2013)).
`
`Therefore, this factor is neutral.
`
`3.
`
`Transfer Analysis Summary
`
`OmniVision has not shown that the Jumara factors as a whole weigh strongly in favor
`
`transfer. Only OmniVision's forum preference weighs in favor of transfer, and that preference
`
`does not warrant maximum deference. On the other hand, the remaining factors are neutral or
`
`weigh in favor of Collabo. "Defendant has the burden of persuading the court that transfer is
`
`appropriate, not only for its convenience but in the interests of justice." C. R. Bard, 2016 WL
`
`153033, at *4. In the present action, Collabo chose a legitimate forum because Delaware is the
`
`state of incorporation of both parties. See id. "Although Delaware is not the locus of any party's
`
`business activities, it is a neutral forum, and the action does not implicate the laws of another
`
`state. Id.; see also Hologic, Inc. v. Minerva Surgical, Inc., C.A. No. 15-1031-SLR, 2016 WL
`
`789349, at *2 (D. Del. Feb. 29, 2016) (declining "to elevate the convenience of one party over
`
`another" where the action involved Delaware corporations and did not implicate the state laws of
`
`another jurisdiction).
`
`The court recognizes that it may be more expensive and inconvenient for OmniVision to
`
`litigate in Delaware instead of California. However, under the circumstances, the court
`
`"decline[s] to elevate the convenience of one party over the other," as "discovery is a local event
`
`and trial is a limited event." C. R. Bard, 2016 WL 153033 at *4 n.6 (noting that "[d]iscovery is
`
`largely electronic, with depositions taking place where the deponents reside or work. Moreover,
`
`14
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 15 of 19 PageID #: 1104
`
`most trials now are scheduled for less than seven days, and involve only a handful of live
`
`witnesses and a limited number of documents."); Scientific Telecomm·., LLC v. Adtran, Inc., Civ.
`
`No. 15-647-SLR, 2016 WL 1650760, at *2 (D. Del. Apr. 25, 2016). Delaware imposes no
`
`"unique or unexpected burden" on OmniVision, such that transfer is warranted in the interests of
`
`justice. Scientific Telecomm., 2016 WL 1650760, at *2 (explaining that a Delaware corporation .
`
`cannot successfully argue that Delaware is an inconvenient forum "absent some showing of a
`
`unique or unexpected burden."). Therefore, OmniVision's motion to transfer venue should be
`
`denied.
`
`B.
`
`Motion to Dismiss Claims for Indirect Infringement
`
`To establish indirect infringement, a patent owner has available two theories: active
`
`inducement of infringement and contributory infringement. See 35 U.S.C. § 271(b) & (c).
`
`Liability for indirect infringement may arise "if, but only if, [there is] ... direct infringement."
`
`Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014) (citing Aro Mfg.
`
`Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341 (1961) (emphasis omitted)).
`
`Under 35 U.S.C. § 27l(b), "whoever actively induces infringement of a patent shall be
`
`liable as an infringer." "To prove induced infringement, the patentee must show direct
`
`infringement, and that the alleged infringer knowingly induced infringement and possessed
`
`specific intent to encourage another's infringement." Toshiba Corp. v. Imation Corp., 681 F.3d
`
`1358, 1363 (Fed. Cir. 2012) (internal quotations omitted). "[I]nduced infringement under§
`
`271(b) requires knowledge that the induced acts constitute patent infringement." Global-Tech
`
`Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). The knowledge requirement can be met by a
`
`showing of either actual knowledge or willful blindness. See id "[A] willfully blind defendant
`
`is one who takes deliberate actions to avoid confirming a high probability of wrongdoing and
`
`15
`
`

`

`Case 1:16-cv-00290-MN Document 28-1 Filed 02/09/17 Page 16 of 19 PageID #: 1105
`
`who can almost be said to have actually known the critical facts." Id at 2070-71. "[I]nducement
`
`requires evidence of culpable conduct, directed to encouraging another's infringement, not
`
`merely that the inducer had knowledge of the direct infringer's activities." DSU Med Corp. v.
`
`JMS Co., Ltd, 471F.3d1293, 1306 (Fed. Cir. 2006) (citations omitted).
`
`To establish contributory infringement, the patent owner must demonstrate the following:
`
`(1) an offer to sell, sale, or import; (2) a component or material for use in a patented process
`
`constituting a material part of the invention; (3) knowledge by the defendant that the component
`
`is especially made or especially adapted for use in an infringement of such patents; and ( 4) the
`
`component is not a staple or article suitable for substantial noninfringing use. See Fujitsu Ltd v.
`
`Netgear Inc., 620 F.3d 1321, 1326 (Fed. Cir. 2010) (citing 35 U.S.C. § 271(c)). Defendant
`
`"must know 'that the combination for which his component was especially designed was both
`
`patented and infringing."' Global Tech, 131 S. Ct. at 2067 (citing Aro Mfg. Co. v. Convertible
`
`Top Replacement Co., 377 U.S. 476, 488 (1964)).
`
`In support of its motion to dismiss, Omni Vision contends that the amended complaint
`
`fails to allege the requisite pre-suit knowledge to support a post-suit claim of indirect
`
`infringement and, as such, requests that the court dismiss all claims for induced