Searching over 5,500,000 cases.


searching
Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.

GE Healthcare Bio-Sciences AB v. Bio-Rad Laboratories, Inc.

United States District Court, D. Delaware

May 6, 2019

GE HEALTHCARE BIO-SCIENCES AB, GE HEALTHCARE BIO-SCIENCES CORPORATION, and GENERAL ELECTRIC COMPANY Plaintiffs,
v.
BIO-RAD LABORATORIES, INC., Defendant.

          John 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

          Bindu 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

          MEMORANDUM OPINION

          Connolly, United States District Judge.

         Defendant 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 Bio-Rad's motion.

         I. Background

         Bio-Rad 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.

         In 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).

         II. Whether the Case May Be Transferred to the Southern District of New York

         Section 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.

         A 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 plaintiff.

Id. at 342-44.

         Because § 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 New York.

         III. Whether the Case Should be Transferred to the Northern District of California

         It is 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).

         The 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; [2] the defendant's preference; [3] whether the claim arose elsewhere; [4] the convenience of the parties as indicated by their relative physical and financial condition; [5] 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 [6] 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:

[7] the enforceability of the judgment; [8] practical considerations that could make the trial easy, expeditious, or inexpensive; [9] the relative administrative difficulty in the two fora resulting from court congestion; [10] the local interest in deciding local controversies at home; [II] the public policies of the fora; and [12] ...

Buy This Entire Record For $7.95

Download the entire decision to receive the complete text, official citation,
docket number, dissents and concurrences, and footnotes for this case.

Learn more about what you receive with purchase of this case.