United States District Court, D. Delaware
GE HEALTHCARE BIO-SCIENCES AB, GE HEALTHCARE BIO-SCIENCES CORPORATION, and GENERAL ELECTRIC COMPANY Plaintiffs,
BIO-RAD LABORATORIES, INC., Defendant.
W. Shaw, Nathan R. Hoeschen, SHAW KELLER LLP, Wilmington,
Delaware; Jennifer Sklenar, Ryan N. Nishimoto, ARNOLD &
PORTER KAYE SCHOLER LLP, Los Angeles, California; Jeffrey A.
Miller, ARNOLD & PORTER KAYE SCHOLER LLP, Palo Alto,
California; Matthew M. Wolf, ARNOLD & PORTER KAYE SCHOLER
LLP, Washington, District of Columbia, Counsel for Plaintiffs
A. Palapura, Alan R. Silverstein, Jennifer Penberthy Buckley,
POTTER ANDERSON & CORROON LLP, Wilmington, Delaware;
Kevin P.B. Johnson, QUINN EMANUEL URQUHART & SULLIVAN,
LLP, Redwood Shores, California; David Bilsker, Felipe
Corredor, Andrew E. Naravage, QUINN EMANUEL URQUHART &
SULLIVAN, LLP, San Francisco, California; Anne S. Toker,
QUINN EMANUEL URQUHART & SULLIVAN, LLP, New York, New
York, Counsel for Defendant
Connolly, United States District Judge.
Bio-Rad Laboratories, Inc. ("Bio-Rad") has moved
pursuant to 28 U.S.C. § 1404(a) to transfer to the
Southern District of New York this patent action filed by
Plaintiffs GE Healthcare Bio-Sciences AB ("Bio-Sciences
AB"), GE Healthcare Bio-Sciences Corporation
("Bio-Sciences Corp.")* and General Electric
Company ("GE Company") (collectively,
"GE"). D.I. 10. In the alternative, Bio-Rad has
moved for transfer to the Northern District of California.
Id. For the reasons discussed below, I will deny
is a Delaware corporation. D.I. 1 at ¶ 6. Bio-Sciences
AB, Bio-Sciences Corp., and GE Company, respectively, are
incorporated in Sweden, Delaware, and New York. Id.
at ¶¶ 2-4. GE filed this action on November 30,
2018, alleging that Bio-Rad's Next Generation
Chromatography ("NGC") system infringes four
patents (the "GE Patents"). Id. at
¶¶ 1, 28.
2014, GE filed suit against Bio-Rad in the Southern District
of New York, alleging infringement of a patent related to the
GE Patents. D.I. 11 at 1, 4. The New York action was stayed
pending inter partes review of the asserted patent.
D.I. 16 at 4. In December 2018, GE sought to have the stay
lifted because PTAB proceedings regarding the asserted patent
had concluded. Id. at 5. On March 18, 2019, the New
York court ordered that the stay would remain in place
pending the resolution of Bio-Rad's motion to transfer in
the instant case. See GE Healthcare Bio-Sciences
AB, et al., v. Bio-Rad Labs., Inc., No. 14-7080, D.I.
223 at 6 (S.D.N.Y. Mar. 18, 2019).
Whether the Case May Be Transferred to the Southern District
of New York
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). Under § 1404(a), an action
"might have been brought" in the transferee forum
"only if the plaintiff had an 'unqualified
right' to bring the action in the transferee forum at the
time of the commencement of the action." Shutte v.
Armco Steel Corp., 431 F.2d 22, 24 (3d Cir. 1970).
"If there is a 'real question' whether a
plaintiff could have commenced the action originally in the
transferee forum, it is evident that [the plaintiff] would
not have an unqualified right to bring [its] cause in the
transferee forum." Id. (citation omitted). In
Shutte, the Third Circuit considered there to be a
"real question" about whether suit could have been
brought in the proposed transferee forum against one of the
two defendants moving for transfer, because although
jurisdiction over the defendant was proper under
Missouri's long-arm statute, "the legality of that
statute had not been adjudicated, and there were strong
doubts as to its validity." Id.
patent infringement case "may be brought in the judicial
district where the defendant resides, or where the defendant
has committed acts of infringement and has a regular and
established place of business." 28 U.S.C. §
1400(b). It is undisputed that Bio-Rad meets neither of these
criteria. Bio-Rad is a Delaware corporation and therefore
resides in Delaware, see TC Heartland LLC v. Kraft Foods
Grp. Brands LLC, 137 S.Ct. 1514, 1521 (2017); and
Bio-Rad does not even argue that it has a regular and
established place of business in New York. Ignoring §
1400(b), Bio-Rad argues instead that this action could have
been brought in the Southern District of New York because
Bio-Rad has "made clear [ ] that it is waiving and
will therefore not raise any improper venue defense in the
[Southern District of New York]." D.I. 11 at 6. But
Bio-Rad's post-hoc offer to waive any objections to venue
in New York is irrelevant to the dispositive question under
§ 1404(a) of whether GE could have sued Bio-Rad in New
York when it filed this lawsuit. Indeed, the Supreme Court
expressly rejected Bio-Rad's argument in Hoffman v.
Blaski, 363 U.S. 335 (1960), a case not cited by Bio-Rad
in its opening brief. As the Court held in Hoffman:
We do not think the § 1404(a) phrase "where it
might have been brought" can be interpreted to mean, as
petitioners' theory would require, "where it may
now be rebrought, with defendant's consent."
... Of course, venue, like jurisdiction over the person, may
be waived.... But the power of a District Court under §
1404(a) to transfer an action to another district is made to
depend not upon the wish or waiver of the defendant but,
rather, upon whether the transferee district was one in which
the action "might have been brought" by the
Id. at 342-44.
§ 1400(b) would have precluded GE from bringing this
suit against Bio-Rad in the Southern District of New York, it
cannot be said that GE had an "unqualified right"
to bring the suit in that district at the time of the
commencement of this action, and therefore Shutte
bars the transfer of this action to the Southern District of
Whether the Case Should be Transferred to
the Northern District of California
undisputed that Bio-Rad's principal place of business is
in the Northern District of California and that, therefore,
GE could have brought this suit against Bio-Rad in that
district under § 1400(b). As the party seeking transfer,
Bio-Rad has the burden "to establish that a balancing of
proper interests weigh[s] in favor of the transfer."
Shutte, 431 F.2d at 25. 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:
[I] 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; [II] the
public policies of the fora; and  ...