United States District Court, D. Delaware
E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington,
Delaware; Morgan Chu, Ben Hattenbach, Amy E. Proctor, Dominik
Slusarczyk, Charlotte J. Wen, IRELL & MANELLA LLP,
Boston, Massachusetts Counsel for Plaintiff
B. Blumenfeld, Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
TUNNELL LLP, Wilmington, Delaware; William F. Lee, Louis W.
Tompros, WILMER, CUTLER, PICKERING, HALE AND DORR LLP,
Boston, Massachusetts; Mark D. Selwyn, WILMER, CUTLER,
PICKERING, HALE AND DORR LLP, Palo Alto, California; Amanda
L. Major, WILMER, CUTLER, PICKERING, HALE AND DORR LLP,
Washington, District of Columbia Counsel for Defendant
CONNOLLY, UNITED STATES DISTRICT JUDGE
Intel Corporation has moved pursuant to 28 U.S.C. §
1404(a) to transfer this patent case to the Northern District
of California. D.I. 8. For the reasons discussed below, I
will deny Intel's motion.
Intel and the Plaintiff, VLSI Technology, Inc., are Delaware
corporations. VLSI filed this action on June 28, 2018,
alleging that Intel infringed five patents (the
"Delaware patents"). VLSI has also sued Intel in
the Northern District of California, alleging that Intel
infringed eight other patents (the "California
patents"). The parties dispute whether the subject
matters of the Delaware patents and the California patents
are the same. They also dispute the extent to which
discovery, evidence, and legal arguments in the two actions
1404(a) provides that "[f]or the convenience of the
parties and witnesses, in the interests of justice, a
district court may transfer any civil action to any other
district or division where it might have been brought."
28 U.S.C. § 1404(a). It is undisputed that this action
could have been brought in the Northern District of
California, where Intel has its headquarters and principal
place of business. Thus, the only issue before me is whether
I should exercise my discretion under § 1404(a) to
transfer the case to California.
movant, Intel has the burden "to establish that a
balancing of proper interests weigh[s] in favor of the
transfer." Shutte v. Armco Steel Corp., 431
F.2d 22, 25 (3d Cir. 1970). This burden is heavy.
"[U]nless the balance of convenience of the parties is
strongly in favor of [the] defendant, the plaintiffs
choice of forum should prevail." Id. (emphasis
in original) (internal quotation marks and citation omitted).
proper interests to be weighed in deciding whether to
transfer a case under § 1404(a) are not limited to the
three factors recited in the statute (i.e., the convenience
of the parties, the convenience of the witnesses, and the
interests of justice). Jumara v. State Farm Ins.
Co., 55 F.3d 873, 879 (3d Cir. 1995). Although there is
"no definitive formula or list of the factors to
consider" in a transfer analysis, the court in
Jumara identified 12 interests "protected by the
language of § 1404(a)." Id. Six of those
interests are private:
 plaintiffs forum 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).
Id. (citations omitted). The other six interests are
public in nature:
 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. at 879-80 (citations omitted). As the parties
have not identified relevant factors beyond these 12
interests, I will balance the Jumara factors in
deciding whether to exercise the discretion afforded me by
Plaintiff's Forum Preference
factor clearly weighs against transfer. The parties agree on
that much. They disagree, however, about the amount of weight
I should give this factor in conducting the balancing of
interests called for by Jumara. Intel argues that
VLSFs forum choice "deserves little weight," D.I. 9
at 11; VLSI contends that I should give its forum choice
"paramount consideration." D.I. 23 at 3.
Shutte, the Third Circuit held that "[i]t is
black letter law that a plaintiffs choice of a proper forum
is a paramount consideration in any determination of a
transfer request" brought pursuant to § 1404(a),
and that this choice "should not be lightly
disturbed." 431 F.2d at 25 (internal quotation marks and
citation omitted). The parties have not cited and I am not
aware of any Third Circuit or United States Supreme Court
case that overruled Shutte. Jumara cited
Shutte favorably and reiterated
Shutte's admonition that "the plaintiffs
choice of venue should not be lightly disturbed."
Jumara, 55 F.3d at 879 (internal quotation marks and
citation omitted). Thus, I agree with VLSI that binding Third
Circuit law compels me to treat its forum choice as "a
paramount consideration" in the § 1404(a) balancing
however, asks me to ignore Shutters unambiguous
language (and Jumara's endorsement of
Shutte), and instead give VLSI's forum choice
"little weight" because (1) VLSI allegedly had an
"improper forum shopping motive" in filing suit in
this district; (2) VLSI has no facilities, operations, or
employees in Delaware; and (3) the facts underlying the
parties' dispute did not occur in Delaware. D.I. 9 at
Improper Forum Shopping Motive
cites a line of cases in which district court and magistrate
judges in the Third Circuit looked to "the reasons
behind" a plaintiffs forum choice and gave reduced or
even no weight to a plaintiffs forum selection if the
plaintiff had an "improper forum shopping motive."
See D.I. 9 at 11-12 (citations omitted). I find,
however, that these cases are not consistent with Shutte,
Jumara, or Supreme Court precedent.
Shutte nor Jumara hold or even intimate
that a plaintiffs motive in selecting its forum choice is
relevant for § 1404(a) purposes. Putting aside the
practical difficulty of accurately discerning a plaintiffs
motives, to my knowledge the Third Circuit has not held, and
I do not believe, that a plaintiffs motive in selecting a
forum is relevant to the transfer inquiry.
availability of multiple lawful venues is a fundamental
feature of our federal system that invites competent counsel
to advise their clients to select the litigation forum that
best aligns with the clients' interests. When choosing
among available venues, plaintiffs understandably-and
legitimately-weigh a host of considerations, including, for
example, the laws that would apply in the competing venues,
the relative speed with which the venues move cases, the
manner in which the venues handle discovery disputes, the
scope of discovery allowed by the venues, and the
plaintiffs' assessments of the venues' judges and the
likelihood those judges would rule in the plaintiffs'
favor. Every sophisticated plaintiff that can bring a lawsuit
in multiple venues engages in forum shopping when it chooses
a particular venue. The Court's concern is whether the
venue choice is permitted by statute, not what motivated the
plaintiff to select the venue.
principle that a plaintiff can lawfully engage in forum
shopping is sufficiently fundamental to our federal system
that the Supreme Court has called the plaintiffs choice of
forum a "venue privilege." SeeAtl Marine
Constr. Co. v. U.S. Dist. Court for the W. Dist. of
Texas, 571 U.S. 49, 63 (2013) ("Because plaintiffs
are ordinarily allowed to select whatever forum they consider
most advantageous (consistent with jurisdictional and venue
limitations), we have termed their selection the
'plaintiffs venue privilege.'"). And twice in
the context of a § 1404(a) transfer motion, the Court
has recognized the legitimacy of forum shopping by a
Van Dusen v. Barrack, 376 U.S. 612 (1964), the Court
held that when a diversity suit is transferred under §
1404(a) at the request of the defendant, the transferee court
is required to follow the choice-of-state-law rules that
would have existed in the transferor court. Id. at
639. The Court reasoned that § 1404(a) should not
deprive the plaintiff of state-law advantages it would have
enjoyed in the transferor court. Id. at 633-34. The
Court explained that "[section] 1404(a) was not designed
to narrow the plaintiffs venue privilege ... but rather the
provision was simply to counteract the inconveniences that
flowed from the venue statutes by permitting transfer to a
convenient federal court." Id. at 635.
Ferens v. John Deere Co., 494 U.S. 516 (1990), the
Court extended Van Dusen's holding to §
1404(a) transfers made at a plaintiffs request. Id.
at 519. Ferens, who had been injured in a Pennsylvania farm
accident, failed to file a tort action in Pennsylvania within
the applicable two-year statute of limitations. Id.
In the third year after the accident, Ferens and his wife
filed a diversity contract case against John Deere
in the Western District of Pennsylvania and then filed a
second diversity tort action against John Deere in
the Southern District of Mississippi, where, under
Mississippi choice-of law rules, a six-year statute of
limitations applied. Id. at 519-20. At this point,
to use the Supreme Court's words, "the Ferenses took
their forum shopping a step further," as they requested
and obtained a § 1404(a) transfer of the Mississippi
action to the Western District of Pennsylvania. Id.
at 520. The Pennsylvania district court consolidated the
actions but held that because the Ferenses had moved for the
transfer as plaintiffs, the Van Dusen rule
did not apply and therefore Pennsylvania's two-year
statute of limitations barred the Ferenses' tort claims.
Id. at 520-21. The Third Circuit affirmed the
district court's holding. Id. at 521.
reversing the Third Circuit's decision, the Supreme Court
explained in relevant part:
The text of § 1404(a) may not say anything about choice
of law, but we think it not the purpose of the section to
protect a party's ability to use inconvenience as a
shield to discourage or hinder litigation otherwise proper.
The section exists to eliminate ...