Western District of Virginia Court Transfers Venue of Patent Suit Brought by a Virginia Company
A Virginia-based patentee which chooses to bring suit in Virginia federal court can typically defeat a challenge to venue under 28 U.S.C. § 1404. The deference to a home-state plaintiff’s choice of forum, however, is not absolute, and Judge Moon’s recent decision in Schrader-Bridgeport Int’l., Inc. v. Continental Automotive Sys. US, Inc., 2012 U.S. Dist. LEXIS 18607 (W.D.Va. Feb. 15, 2012) (found here), illustrates when a home plaintiff’s choice of forum may be overcome.
In Schrader-Bridgeport, Judge Moon cited the following factors that weighed against the plaintiff’s choice of forum:
- One of the plaintiffs, Schrader-Bridgeport, was located in Altavista and sold a product covered by the patent-in-suit, but the owner of the patent was a sister company, Schrader Electronics, which was based in Michigan;
- The patent-in-suit listed six inventors, all of whom lived in Michigan;
- The lawyer who prosecuted the patent lived in Michigan;
- The original assignee of the patent was located in Michigan;
- The accused infringer conducted its research, development and testing for the accused product in Michigan;
- While the accused infringer had facilities in Virginia , none of those facilities had any connection to the accused product.
Citing Eastern District of Virginia authority, Judge Moon emphasized that the level of deference to a plaintiff’s home forum varies with the significance of the contacts between the venue and the underlying cause of action – not the contacts between the venue and the plaintiff.
Thus, Judge Moon focused on the location of the defendant’s allegedly – discounting factors such as harm caused to the Virginia plaintiff and the Virginia plaintiff’s status as the licensee of the patent-in-suit.
Because several other factors – such as the presence of the patent owner and non-party witnesses in Michigan – also favored transfer, it is difficult to tell how significant the location of infringing activities played in Judge Moon’s decision. His focus on infringing activities rather than the location of the plaintiff, however, provides out-of-state defendants with a powerful argument when seeking to overcome a Virginia plaintiff’s choice of forum.