United States District Court, D. Delaware
REPORT AND RECOMMENDATION
R. Fallon UNITED STATES DISTRICT JUDGE.
before the court in this patent infringement action are the
following motions: (1) a motion to dismiss for failure to
state a claim upon which relief can be granted pursuant to
Federal Rule of Civil Procedure 12(b)(6), filed by defendants
Apple Inc., Visa Inc., and Visa U.S.A., Inc. (collectively
"defendants") (D.I. 16); and (2) defendants'
motion to transfer venue to the Northern District of
California pursuant to 28 U.S.C. § 1404 (D.I. 21). For
the following reasons, I recommend that the court deny
defendants' motions to dismiss and transfer.
Universal Secure Registry, LLC ("USR") is a limited
liability company organized and existing under the laws of
Massachusetts with its principal place of business in Newton,
Massachusetts. (D.I. 1 at ¶ 4) USR develops
technological solutions for identity authentication, computer
security, and digital and mobile payment security which allow
users to securely authenticate their identity using
technology built into a personal electronic device combined
with the users' biometric information. (Id. at
¶ 21) USR is the owner by assignment of United States
Patent Nos. 8, 577, 813 ("the '813 patent"); 8,
856, 539 ("the '539 patent"); 9, 100, 826
("the '826 patent"); and 9, 530, 137 ("the
'137 patent") (collectively, the "patents-in-
suit"). (Id. at ¶¶ 2-3) The
patents-in-suit allow a user to employ an electronic device
as an "electronic wallet" capable of interacting
with point-of-sale devices to authorize payments.
(Id. at ¶ 22)
Inc. ("Apple") is incorporated in California and
maintains its headquarters in Cupertino in the Northern
District of California. (Id. at ¶ 5) Apple
maintains a retail store in Delaware. (Id. at ¶
13) Visa Inc. and Visa U.S.A., Inc. ("Visa") are
Delaware corporations maintaining a principal place of
business in Foster City, California. (Id. at
¶¶ 6-7) USR accuses defendants of infringing the
patents-in-suit by providing the Apple Pay service.
(Id. at ¶¶ 8-9) Specifically, USR
identifies the following allegedly infringing devices which
support Apple Pay:
Apple iPhone 7, iPhone 7 Plus, iPhone 6s, iPhone 6s Plus,
iPhone 6, iPhone 6 Plus, iPhone SE, iPhone 5, 5s, and 5c
(paired with Apple Watch), iPad (5thgeneration),
iPad Pro (12.9 inch), iPad Pro (9.7 inch), iPad Air 2, iPad
mini 4, iPad mini 3, Apple Watch Series 2, Apple Watch Series
1, Apple Watch (1stgeneration), MacBook Pro with
Touch ID, and all Mac models introduced in 2012 or later
(with an Apple Pay-enabled iPhone or Apple Watch)
(collectively, the "Accused Products")....
(Id. at ¶ 39)
filed this patent infringement action on May 21, 2017,
asserting claims for infringement regarding the
patents-in-suit. (D.I. 1 at ¶ 2) The '813 and
'539 patents are both entitled "Universal Secure
Registry" and list Dr. Kenneth P. Weiss as the sole
inventor. (Id. at ¶¶ 25-26) The '813
patent issued on November 5, 2013, and the '539 patent
was granted on October 7, 2014. (Id.) The '826
and '137 patents are both entitled "Method and
Apparatus for Secure Access Payment and Identification,"
and list Dr. Weiss as the sole inventor. (Id. at
¶¶ 27- 28) The '826 patent issued on August 14,
2015, and the '137 patent issued on December 27, 2016.
2010, USR sent Apple multiple letters describing its patented
technology and seeking to partner with Apple to jointly
develop a payment method involving a software-modified
payment phone and the use of biometric identity
authentication. (D.I. 1 at ¶ 33) USR also pursued a
partnership with Visa during this time, engaging in a series
of confidential discussions with senior Visa representatives
which included detailed presentations of the patented
technology under the protection of a non-disclosure
agreement. (Id. at ¶34) Instead of partnering
with USR, Apple and Visa ultimately partnered with each other
and other payment networks and banks as early as January 2013
to allegedly incorporate the patented technology into the
Apple Pay service. (Id. at ¶ 35) Apple publicly
launched Apple Pay on September 9, 2014. (Id. at
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. Illumina,
Inc., 858 F.Supp.2d 367 (D. Del. 2012).
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 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).
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
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)."
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).
these "jurisdictional guideposts," the court turns
to the "difficult issue of federal comity"
presented by transfer motions. E.E.O.C. v. Univ. of
Pa., 850 F.2d 969, 976 (3d Cir. 1988). USR has not
challenged defendants' assertion that venue would also be
proper in the Northern District of California. (D.I. 31 at 3)
As such, the court does not further address the
appropriateness of the proposed transferee
forum. See 28 U.S.C. § 1404(a).
Plaintiffs forum preference
have historically been accorded the privilege of choosing
their preferred venue for pursuing their claims. See C.
R. Bard, Inc. v. Angio Dynamics, Inc., 156 F.Supp.3d
540, 545 (D. Del. 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, the Federal
Circuit has recognized that "[w]hen a plaintiff brings
its charges in a venue that is not its home forum ... that
choice of forum is entitled to less deference, In re
Link_A_Media Devices Corp., 662 F.3d 1221, 1223 (Fed.
Cir. 2011), and judges within this district have defined a
party's "home forum" as its principal place of
business, see Mitel Networks Corp. v. Facebook,
Inc., 943 F.Supp.2d 463, 469-70 (D. Del. 2013).
present action, USR does not allege that it has facilities,
employees, or operations in Delaware. USR's choice of
Delaware as a forum weighs in USR's favor, but not as
strongly as it would if USR had a place of business in
Delaware. See IpVenture, Inc. v. Acer, Inc., 879
F.Supp.2d 426, 431 (D. Del. 2012); see also Symantec
Corp. v. Zscaler, Inc., C.A. No. 17-806-MAK, D.I. 25 at
3-4 (D. Del. July 31, 2017) (citing Memory Integrity, LLC
v. Intel Corp., C.A. No. 13-1804-GMS, 2015 WL 632026, at
*3 (D. Del. Feb. 13, 2015) (concluding that a non-practicing
entity's choice of forum should receive limited deference
because it had no physical presence in Delaware)).
Consequently, USR's forum preference weighs slightly
Defendant's forum preference
preference to litigate in the Northern District of
California, where defendants maintain their principal places
of business, weighs in favor of transferring venue. However,
defendants' preference is accorded less weight than
USR's preference. See Stephenson v. Game Show
Network, LLC,933 F.Supp.2d 674, 678 (D. Del. 2013)