Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 1 of 24 Page ID #:314
`
`JEFFER MANGELS BUTLER & MITCHELL LLP
`STANLEY M. GIBSON (Bar No. 162329)
`sgibson@jmbm.com
`GREGORY S. CORDREY (Bar No. 190144)
`gcordrey@jmbm.com
`ANDREW S. DALLMANN (Bar No. 206771)
`adallmann@jmbm.com
`3 Park Plaza, Suite 1100
`Irvine, California 92614-2592
`Telephone: (949) 623-7200
`Facsimile:
`(949) 623-7202
`Attorneys for Defendants
`CHIMEI INNOLUX CORPORATION,
`CHIMEI OPTOELECTRONICS USA, INC.,
`ACER AMERICA CORPORATION,
`VIEWSONIC CORPORATION,
`VIZIO, INC.
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`SEMICONDUCTOR ENERGY
`LABORATORY CO., LTD.,
`Plaintiff,
`
`v.
`CHIMEI INNOLUX CORPORATION,
`CHI MEI OPTOELECTRONICS USA,
`INC., ACER AMERICA
`CORPORATION, VIEWSONIC
`CORPORATION, VIZIO, INC., and
`WESTINGHOUSE DIGITAL, LLC,
`Defendants.
`
`CASE NO. SACV12-0021-JST (JPRx)
`DEFENDANTS' NOTICE OF
`MOTION AND MOTION TO
`TRANSFER VENUE;
`MEMORANDUM OF POINTS AND
`AUTHORITIES
`Date:
`June 11, 2012
`Time:
`10:00 AM
`Courtroom: 10A
`Judge:
`Honorable Josephine Staton
`Tucker
`[Declarations of Andrew S. Dallmann and
`Todd Middleton filed concurrently
`herewith]
`
`___________________________________________________________________________________________
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 2 of 24 Page ID #:315
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`TABLE OF CONTENTS
`
`Page
`
`I.
`
`II.
`
`INTRODUCTION...........................................................................................2
`
`STATEMENT OF FACTS..............................................................................6
`
`A.
`
`B.
`
`The Parties' Prior Litigation Before Judge Patel...................................6
`
`SEL’s Current Allegations Involve the Same Patents or Patents
`Related to the Prior Litigation...............................................................8
`
`III. ARGUMENT ..................................................................................................9
`
`A.
`
`This Case Should be Transferred to the Northern District of
`California...............................................................................................9
`
`1.
`
`2.
`
`3.
`
`The Interest of Justice Weighs in Favor of Transfer to the
`Northern District of California Because That Court is
`Already Familiar with the Patents and Claims at Issue............10
`
`The Jones Convenience Factors Also Favor Transfer to the
`Northern District.......................................................................13
`
`Plaintiff’s Choice of Forum Should Be Afforded No Weight..15
`
`IV. CONCLUSION .............................................................................................18
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 3 of 24 Page ID #:316
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`TABLE OF AUTHORITIES
`
`Page(s)
`
`CASES
`Allen v. Scribner,
`812 F.2d 426 (9th Cir. 1987)..............................................................................11
`
`Applied Vision, Inc. v. Optical Coating Laboratory, Inc.,
`1997 WL 601425 (N.D. Cal. July 27, 1997) ......................................................11
`
`Broadcast Data Retrieval Corp. v. Sirius Satellite Radio, Inc.,
`2006 U.S. Dist. LEXIS 37641 (C.D. Cal. 2006) ....................................10, 15, 16
`
`Capitol Records, Inc. v. Optical Recording Corp.,
`810 F.Supp. 1350 (S.D.N.Y. 1992) ..............................................................11, 12
`
`Caroline Cas. Co. v. Data Broadcasting Corp.,
`158 F.Supp.2d 1044 (N.D. Cal. 2001)..................................................................6
`
`Decker Coal Co. v. Commonwealth Edison Co.,
`805 F.2d 834 (9th Cir. 1986)..............................................................................10
`
`Garcia v. 3M Company,
`2009 U.S. Dist. LEXIS 112247 (N.D. Cal. 2009)..........................................6, 16
`
`J2 Global Communications, Inc. v. Protus IP Solutions, Inc.,
`2008 WL 5378010 (E.D. Tex. Dec. 23, 2008) ...................................................11
`
`Jones v. GNC Franchising, Inc.,
`211 F.3d 495 (9th Cir. 2000)..................................................................10, 13, 15
`
`Logan v. Hormel Foods Corp.,
`2004 WL 5216126 (E.D. Tex. 2004)............................................................16, 17
`
`Pacific Car & Foundry Co. v. Pence,
`403 F.2d 949 (9th Cir. 1968)..............................................................................15
`
`Reese v. CNH America LLC,
`574 F.3d 315 (6th Cir. 2009)..............................................................................11
`
`The Regents of the University of California v. Eli Lilly and Company,
`119 F.3d 1559 (Fed. Cir. 1997) ....................................................................10, 11
`
`Wham-O, Inc. v. SLB Toys, Inc.,
`2006 U.S. Dist. LEXIS 74768 (N.D. Cal. 2006)................................................16
`
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 4 of 24 Page ID #:317
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`TABLE OF AUTHORITIES
`[CONTINUED]
`
`Page(s)
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`STATUTES
`
`28 U.S.C. § 1404(a) .........................................................................................1, 9, 10
`
`OTHER AUTHORITIES
`
`L.R. 7-3 ......................................................................................................................1
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 5 of 24 Page ID #:318
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`NOTICE OF MOTION AND MOTION
`TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
`PLEASE TAKE NOTICE THAT ON June 11, 2012 at 10:00 a.m., or as soon
`thereafter as the matter may be heard before the Honorable Josephine Staton Tucker
`in Courtroom 10A of the United States District Court for the Central District of
`California, Southern Division, located at 411 West Fourth Street, Santa Ana, CA
`92701-4516, defendants Chimei Innolux Corporation ("CMI"), Chi Mei
`Optoelectronics USA, Inc. ("CMO USA"), Acer America Corporation ("Acer"),
`ViewSonic Corporation ("ViewSonic"), VIZIO, Inc. ("VIZIO"), and Westinghouse
`Digital, LLC ("Westinghouse") (collectively, the "Defendants") will and hereby do
`move the Court to transfer venue of plaintiff Semiconductor Energy Laboratory Co.,
`Ltd.'s ("SEL") Complaint for Patent Infringement (Case No. SACV12-0021-JST
`(JPRx)).
`Defendants seek an order transferring SEL's Case No. SACV12-0021-JST
`(JPRx) to the Northern District of California. The Motion is made on the grounds
`that the interest of justice, judicial economy and the convenience of the parties
`militate a transfer of this action to the Northern District.
`The Motion is made pursuant to 28 U.S.C. § 1404(a) and is based on this
`Notice, the attached Memorandum of Points and Authorities, all matters which this
`Court takes judicial notice, the Court's files in this matter, and any other evidence and
`argument as may be presented at the hearing on the Motion.
`This Motion is further made following the conference of counsel pursuant to
`L.R. 7-3 which took place on April 19, 2012. Although counsel for Westinghouse
`did not participate in the conference, counsel for the remaining defendants informed
`counsel for SEL that Westinghouse would join in the motion.
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 6 of 24 Page ID #:319
`
`MEMORANDUM OF POINTS AND AUTHORITIES
`Chimei Innolux Corporation, Chi Mei Optoelectronics USA, Inc., Acer
`America Corporation, ViewSonic Corporation, VIZIO, Inc., and Westinghouse
`Digital, LLC, (collectively, the “Defendants”) respectfully submit this Memorandum
`in Support of Motion to Transfer Venue of the complaint presented by plaintiff
`Semiconductor Energy Laboratory Co., Ltd. (“SEL”).
`I.
`INTRODUCTION
`This patent lawsuit is the third patent lawsuit by SEL against principal
`defendants Chimei Innolux ("CMI")1 and Chi Mei Optoelectronics USA, Inc. ("CMO
`USA"). CMI is the manufacturer of the liquid crystal display ("LCD") modules
`accused of infringement and alleged to have been sold by the other named
`defendants. CMO USA is the sales liaison between CMI and all of its U.S.
`customers, including the remaining defendants. In the present lawsuit ("CD
`Litigation"), SEL has re-asserted US Patent Nos. 6,404,480 (the "'480 patent"), and
`has added US Patent Nos. 7,697,102 (the "'102 patent"), 7,876,413 (the "'413
`patent"), 8,068,204 (the "'204 patent"), 7,923,311 (the "'311 patent") and 7,956,978
`(the "'978 patent"). As explained below, all of these patents were previously asserted
`or are closely related to the patents previously asserted by SEL in the Northern
`District of California.
`SEL filed the first lawsuit in 2004 in the Northern District of California, before
`then Chief Judge Marilyn Patel alleging infringement of the '480 patent, US Patent
`Nos. 5,885,189 (the "'189 patent"), 6,756,258 (the "'258 patent"), and 4,691,995 (the
`"'995 patent"). See Case No. 3:04-cv-04675-MHP (the "ND Litigation I"), which is
`attached to the Declaration of Andrew Dallmann, ("Dallmann Dec.") ¶ 1, Ex. 1. SEL
`filed a second lawsuit in 2007, again in the Northern District of California, again
`
`1 In 2010, Chi Mei Optoelectronics Corp. merged with Innolux Display
`Corporation to form defendant Chimei Innolux Corporation.
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 7 of 24 Page ID #:320
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`before then Chief Judge Patel, asserting infringement by CMO USA's LCD modules
`of other SEL patents. See Case No. 3:07-cv-01667-MHP (the "ND Litigation II"),
`Dallmann Dec.¶ 2, Ex. 2. Now, in an apparent effort to avoid Judge Patel's prior
`adverse summary judgment and claim construction rulings in ND Litigation I, SEL
`filed this third lawsuit in the Central District alleging infringement of the same or
`related patents on the same facts as in ND Litigation I. The table below illustrates the
`overlap in the patents in this case with those asserted in ND Litigation I:
`CD Litigation
`Related ND Litigation I
`Relationship
`Patent
`Patent
`'480 Patent
`'480 Patent
`'102 Patent
`'480 Patent
`'978 Patent
`'189 Patent
`'311 Patent
`'258 Patent
`'413 Patent
`Not asserted
`
`'204 Patent
`
`Not asserted
`
`Same Patent
`Divisional2 of the '480 Patent
`Divisional of the '189 Patent
`Divisional of the '258 Patent
`Subject matter closely related
`to '978/'189 Patents
`Subject matter closely related
`to '978/'189 Patents
`
`The ND Litigation I lawsuit was extensively litigated before Judge Patel for
`about three years, as demonstrated by the 432 docket entries, two rounds of summary
`judgments brought by the defendants and one round brought by SEL. In ND
`Litigation I, SEL accused Chi Mei Optoelectronics Corp., International Display
`Technology Co., International Display Technology USA, Inc., Westinghouse Digital
`Electronics, LLC and CTX Technology Corp. of infringing the '480 patent, the '189
`patent, the '258 patent, and the '995 patent by the manufacture and sale of LCD
`
`2 A "divisional" patent means that both patents share the same patent
`specification and figures. Specifically, for a divisional to claim "the benefit of the
`filing date of the prior application … [t]he divisional application should set forth at
`least the portion of the earlier disclosure that is germane to the invention as claimed
`in the divisional application." Manual of Patent Examining Procedure § 201.06.
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 8 of 24 Page ID #:321
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`modules, which form the flat viewing surface of LCD televisions, computer monitors
`and laptops. As explained below, by virtue of the prior litigation before Judge Patel,
`she has extensive experience with the patents and technology in this case.
`In her March 27, 2006 claim construction order, Dallmann Dec. ¶ 3, Ex. 3,
`Judge Patel described the '480 patent, also asserted in this case and which shares the
`same specification with the '102 patent asserted in this case, as follows:
`The ‘480 patent provides a way of reliably creating an electrical
`connection from the TFT substrate to the opposing substrate while
`maintaining a uniform gap between the substrates. One obstacle to
`achieving a uniform gap in the prior art is variation in thickness of the
`insulating—or “dielectric”—layer deposited just beneath the electrodes
`on the TFT substrate…. The improvement of the ‘480 patent is to locate
`the metal contact for the electrical connection on top of the dielectric
`layer, eliminating the relationship between the thickness of the dielectric
`and the size of the conductive spacers.
`
`Id. at 4:21-5:5.
`Regarding the '258 patent, which shares the same specification with the '311
`patent in this case, she stated:
`The ‘258 patent teaches a method of constructing thin-film transistors
`such that their silicon regions can be irradiated by a laser after the
`structures of their transistors are completely formed, rather than at some
`point during the middle of the fabrication process. The principal benefit
`of allowing irradiation at the end of the fabrication process is that the
`electrical characteristics of
`the transistors (which depend on the
`conductivity of
`the silicon regions) can be monitored during the
`irradiation using equipment
`that
`is connected to the transistor’s
`terminals. Thus, the conductivity can be precisely calibrated.
`
`Id. at 4:6-12 (internal citation omitted).
`As to the '189 patent, which shares the same specification with the '978 patent
`in this case, Judge Patel described the technology as follows:
`In order to contain the liquid crystal in the space between the substrates,
`the substrates must be bonded together and the edges of the LCD must
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 9 of 24 Page ID #:322
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`In order to connect the electrodes, which are located inside
`be sealed.
`the seal, to the outside of the LCD (for example, to receive power and
`the video signal to be displayed), wires must extend from the inside to
`the outside of the display, passing through the region of the seal.
`In
`some LCD panels, however, the wires do not cross the seal on all sides.
`The substrate in the areas where the wires cross the seal is thicker than
`the substrate where the wires do not cross; the resulting asymmetry can
`cause a lopsided or imperfect fit when the two substrates are brought
`together and the seal is interposed between them.
`
`The invention of the ‘189 patent addresses the asymmetry by adding a
`“substrate interval correction means” to the sides of the panel where no
`wiring crosses the seal. In the preferred embodiments of the ‘189 patent,
`the interval correction means is formed of the same material and at the
`same time in the fabrication process as the wires that cross the seal. The
`correction means, however, is not electrically connected to any circuitry.
`Id. at 5:8-21.
`Judge Patel's prior claim construction and summary judgment rulings are
`relevant to the patents asserted in this case. In particular, Judge Patel construed the
`'189 patent in a way that precluded a finding of infringement, invalidated SEL's '258
`patent and found it not infringed, denied SEL's motion for summary judgment of no
`inequitable conduct of the '480 patent, set a bench trial on the inequitable conduct of
`the '480 patent, and issued other rulings relevant to the alleged infringement. After
`these rulings, in July 2007, SEL settled the two lawsuits with the defendants that were
`pending before Judge Patel.
`Despite Judge Patel’s extensive experience with the technology and patents in
`ND Litigations I and II, SEL chose to file the instant suit in the Central District,
`presumably to avoid Judge Patel’s adverse claim construction and summary judgment
`rulings, both of which will undoubtedly be relevant here given that the CD Litigation
`involves one of the same patents, related patents and similar products from the ND
`Litigations. SEL’s effort to somehow escape those previous rulings by filing its
`closely related claims in a different district should not be permitted. It is well
`established that a plaintiff’s attempt to forum-shop vitiates any deference to which
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`that plaintiff is entitled for its choice of venue. See, e.g., Garcia v. 3M Company,
`2009 U.S. Dist. LEXIS 112247, *6 (N.D. Cal. 2009) (“the Ninth Circuit has
`established that courts should disregard a plaintiff's forum choice where the suit is a
`result of forum-shopping”), citing Alltrade, Inc. v. Uniweld Products, Inc., 946 F.2d
`622, 628 (9th Cir. 1991); Caroline Cas. Co. v. Data Broadcasting Corp., 158
`F.Supp.2d 1044, 1048 (N.D. Cal. 2001) (“If there is any indication that plaintiff's
`choice of forum is the result of forum shopping, plaintiff's choice will be accorded
`little deference.”) SEL's forum-shopping should be rejected and it should be required
`to litigate this present action in the same forum it previously chose, i.e., the Northern
`District of California.
`Even if SEL was not forum-shopping, an analysis of the interest of justice,
`judicial economy and the convenience of the parties still militate a transfer of this
`action to the Northern District. Judge Patel has already invested years in the ND
`Litigations, ruling on five summary judgment motions and writing a 41 page claim
`construction, all involving either the same patents, divisional patents, or closely
`related patents to those at issue here. It would waste valuable judicial resources
`should a new judge have to first learn the complex patents and technology at issue
`from scratch. Moreover, the fact that SEL is an alien, one of the primary defendants,
`CMO USA, is based in the Northern District, as is Acer, and all other defendants
`consent to venue there, all weigh in favor of transfer.
`Accordingly, in furtherance of the interest of justice and judicial economy and
`the convenience of the parties, this action should be transferred to the Northern
`District of California.
`
`II.
`
`STATEMENT OF FACTS
`A.
`The Parties' Prior Litigation Before Judge Patel
`On November 3, 2004, SEL filed suit against Chi Mei Optoelectronics Corp.,
`International Display Technology Co., International Display Technology USA, Inc.,
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 11 of 24 Page ID #:324
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`Westinghouse Digital Electronics, LLC and CTX Technology Corp., arising from
`their infringement of SEL's '480, '258, '995 and '189 patents. ND Litigation I
`Complaint, Dallmann Dec. ¶ 1, Ex. 1. SEL, alleges in its latest complaint that ND
`Litigation I involved three of the same defendants -- CMI, CMO USA and
`Westinghouse -- as the present action. Complaint (Dkt. 1) at ¶ 28.
`On March 27, 2006, after claim construction briefing and a half-day claim
`construction hearing held on November 29, 2005 that resulted in a 173 page hearing
`transcript, the Court issued a 41 page Claim Construction Order. Dallmann Dec. ¶ 3,
`Ex. 3. In light of the Court's claim construction, which made a finding of
`infringement impossible, on August 11, 2006, SEL dismissed its claim of
`infringement, with prejudice, as to the '189 patent. Dallmann Dec. 4, Ex. 4.
`Following extensive discovery, on November 14, 2006, defendants filed three
`separate summary judgment motions seeking a determination that SEL's '480, '258
`and '995 patents were invalid and not infringed. On April 17, 2007, Judge Patel
`issued a 44 page Memorandum & Order finding the '995 patent to be not infringed,
`but otherwise denied defendants' motions based upon a finding that material facts
`were in dispute. Dallmann Dec. ¶ 5, Ex. 5.
`On March 19, 2007, the parties filed cross motions for summary judgment
`focusing on the '480 and '258 patents. SEL moved for a finding of infringement and
`moved to dismiss defendants' various equitable defenses including SEL's inequitable
`conduct during the prosecution of the '480 and '258 patents. Defendants cross-moved
`for a finding of non-infringement and invalidity.
`During the pendency of the parties' summary judgment motions, on March 22,
`2007, SEL filed a second patent infringement suit, again naming Chi Mei
`Optoelectronics Corp. as a defendant, but also naming CMO USA, Funai Electric
`Co., Ltd., Funai Corp., Inc., Soyo Group, Inc. and Wal-Mart Stores, Inc. Dallmann
`Dec. ¶ 2, Ex. 2 (Case No. 3:07-cv-01667-MHP) ("ND Litigation II").
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`On June 19, 2007, Judge Patel issued an extensive 41 page Memorandum &
`Order on the second round of motions for summary judgment. Dallmann Dec. ¶ 6,
`Ex. 6. This time the Court found the '258 patent was not infringed and was invalid as
`being obvious in light of the prior art. As to the '480 patent, Judge Patel denied SEL's
`motion regarding inequitable conduct and ultimately set a bench trial for July 5, 2007,
`to resolve this issue. The Court denied defendants' motion as to invalidity and found
`the '480 patent infringed. Trial on the remaining issues related to the '480 patent was
`set for July 10, 2007. Dallmann Dec. ¶ 7, Ex. 7.
`Left with only one of its original four patents, and facing the possibility that the
`'480 would be found unenforceable due to inequitable conduct, SEL reached a
`settlement with the ND Litigation I defendants just prior to the July 5th bench trial.
`On July 7, 2007, SEL dismissed ND Litigation I. Dallmann Dec. ¶ 8, Ex. 8. The
`parties’ settlement also resulted in the dismissal of SEL's ND Litigation II. Id.
`Although the parties jointly moved to vacate the Court's summary judgment orders,
`on July 6, 2007, Judge Patel denied that motion. Dallmann Dec. ¶ 9, Ex. 9. Judge
`Patel stated in a telephonic hearing on July 5th that she felt it was improper to undo
`all the work the parties and the Court had put into the summary judgment motions,
`and had the parties wanted to avoid the Court's rulings, the parties should have settled
`the case prior to the Court issuing its orders.
`B.
`SEL’s Current Allegations Involve the Same Patents or Patents
`Related to the Prior Litigation
`Much as it alleged previously, the CD Litigation alleges that Defendants CMI,
`CMO USA, Acer America Corporation, ViewSonic Corporation, VIZIO, Inc., and
`Westinghouse Digital, LLC infringed six SEL patents directed to the design and
`manufacture of LCD modules. Complaint ¶¶ 13-18. SEL further alleges that
`Defendants CMI, CMO USA and Westinghouse were defendants in ND Litigation I.
`As with ND Litigation I and II, CMI is a principal defendant because it is the
`manufacturer of the accused LCD modules. Indeed, according to the Complaint, SEL
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`has communicated only with CMI about the patents at issue, and SEL acknowledges
`that the remaining defendants’ purported infringements are ancillary, limited only to
`the extent to which those defendants have incorporated CMI products into their own.
`Complaint, ¶¶ 33-36. As with ND Litigation I and II, CMO USA is another principal
`defendant as CMO USA serves as the sales liaison between CMI and its U.S.
`customers.
`Also, just as in ND Litigation I, SEL's '480 patent is asserted. SEL seemingly
`asserts various "new" patents but in fact three of these previously unasserted patents
`are related to those previously asserted in ND Litigation I. Specifically, the '102
`patent is a divisional patent of the '480 patent, with both patents sharing a common
`specification and figures. Complaint, Ex. B. Likewise, the '311 patent is a divisional
`patent of the previously asserted '258, again with both patents sharing a common
`specification and figures. Complaint, Ex. D. And again, the now-asserted '978 patent
`is a divisional of the '189 patent, with both patents sharing a common specification
`and figures. Complaint, Ex. E. Only the '413 and '204 patents are not directly related
`to those patents asserted in ND Litigation I; however, the subject matter of these
`patents, which relates to the asymmetry of LCD substrates, is closely related to the
`subject matter of the '978/'189 patents involving the use of materials correcting
`asymmetry in the sealed edges of the LCD.
`
`III. ARGUMENT
`A.
`This Case Should be Transferred to the Northern District of
`California
`The analysis involved in a motion to transfer venue pursuant to 28 U.S.C.
`§ 1404(a) is twofold. The court must first decide whether the action is one that
`“might have been brought” in the transferee court. 28 U.S.C. § 1404(a). In this
`matter, it cannot be seriously contended that this action could not have been brought
`again in the Northern District of California. SEL had already brought ND Litigations
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`Case 8:12-cv-00021-JST-JPR Document 40 Filed 04/30/12 Page 14 of 24 Page ID #:327
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`I and II involving the same or similar patents and the same or similar defendants in
`the Northern District. Moreover, SEL is a foreign corporation that does not have any
`more significant ties to the Central District of California over the Northern District of
`California. Two defendants have their principal places of business in the Northern
`District, one of whom is a principal defendant, CMO USA. And all of the
`Defendants in the present action join in this motion and explicitly consent to venue in
`the Northern District of California.
`Once the Court has determined that proper venue exists in the transferee
`district, “the Court turns to ‘the central inquiry of a § 1404(a) motion’ -- the
`convenience of the parties and witnesses and the interests of justice.” Broadcast
`Data Retrieval Corp. v. Sirius Satellite Radio, Inc., 2006 U.S. Dist. LEXIS 37641,
`at *6 (C.D. Cal. 2006). In determining the convenience of the parties and witnesses
`and the interests of justice, the Court may consider:
`(1) the location where the relevant agreements were negotiated and
`executed, (2) the state that is most familiar with the governing law, (3)
`the plaintiff's choice of forum, (4) the respective parties’ contacts with
`the forum, (5) the contacts relating to the plaintiff's cause of action in the
`chosen forum, (6) the differences in the costs of litigation in the two
`forums, (7) the availability of compulsory process to compel attendance
`of unwilling non-party witnesses, and (8) the ease of access to sources of
`proof.
`
`Jones v. GNC Franchising, Inc., 211 F.3d 495, 498-99 (9th Cir. 2000); see also,
`Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986).
`1.
`The Interest of Justice Weighs in Favor of Transfer to the
`Northern District of California Because That Court is Already
`Familiar with the Patents and Claims at Issue
`Consideration of the interest of justice, which includes judicial economy, “may
`be determinative to a particular transfer motion, even if the convenience of the
`parties and witnesses might call for a different result.” The Regents of the
`University of California v. Eli Lilly and Company, 119 F.3d 1559, 1565 (Fed. Cir.
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`1997), citing Coffey v. Van Dorn Iron Works, 796 F.2d 217, 220-21 (7th Cir. 1986)
`(emphasis added); Allen v. Scribner, 812 F.2d 426, 436-37 (9th Cir. 1987) (affirming
`denial of transfer because court’s familiarity with case after three and a half years
`counseled against change of venue despite convenience to witnesses in different
`district); Reese v. CNH America LLC, 574 F.3d 315, 320 (6th Cir. 2009) (judicial
`economy in having case decided by judge who was handling companion case and was
`familiar with factual and legal issues outweighed convenience of parties and
`witnesses in proposed transferee district.)
`“Patent litigation, particularly involving high-technology patents, is notoriously
`difficult.” Capitol Records, Inc. v. Optical Recording Corp., 810 F.Supp. 1350, 1354
`(S.D.N.Y. 1992). Consequently, courts have often held that judicial economy is best
`served in patent cases by coordinating related cases under the same judge, so that
`only one judge need be educated regarding the complex technology. See, e.g.,
`Applied Vision, Inc. v. Optical Coating Laboratory, Inc., 1997 WL 601425, *5-6
`(N.D. Cal. July 27, 1997), citing Smithkline Corp. v. Sterling Drug Inc., 486 F.Supp.
`52, 55 (D. Del. 1975); Eli Lilly, 199 F.3d at 1565 (“[I]n a case [] in which several
`highly technical factual issues are presented and the other relevant factors are in
`equipoise, the interest of judicial economy may favor transfer to a court that has
`become familiar with the issues.”)
`Indeed, “transfer is most appropriate when one court has extensive
`familiarity with the technology or the legal issues involved, a claim construction
`opinion has been prepared, and the cases involve the same or similar defendants
`with the same or similar products.” J2 Global Communications, Inc. v. Protus IP
`Solutions, Inc., 2008 WL 5378010 at *11 (E.D. Tex. Dec. 23, 2008) (citations
`omitted) (emphasis added). Capitol Records is instructive. In that patent case, the
`plaintiff filed declaratory judgment in New York, twenty days before a second suit
`was filed by defendant in the District of Delaware. Although the “first-filed” rule
`would typically dictate that venue remain in New York, the Court held that judicial
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`economy strongly favored a transfer to Delaware, where the second suit was assigned
`to the same District of Delaware judge who had presided over a previous trial
`involving the same parties and the same patents. As stated by the Capitol Records
`court: "Judge Farnan’s knowledge gained in the earlier [] suit will allow a significant
`conservation of scarce judicial resources. In addition, his experience and familiarity
`with the patents reduces the possibility of a mistake at trial, and the consequent use of
`additional judicial resources to correct the problem."
`Such is the case here. Judge Patel’s extensive experience learning about the
`patents and technology at issue in the ND Litigations I and II included the following:
` November 29, 2005: Judge Patel adjudicated a claim construction briefing and a
`half-day claim construction hearing that resulted in a 173 page hearing transcript;
` March 27, 2006: Judge Patel issued a 41 page Claim Construction Order;
` November 14, 2006: Defendants filed three separate summary judgment motions
`seeking a determination that SEL's