United States District Court, D. Delaware
Gregory E. Stuhlman, Stephanie H. Dallaire, Chipman Brown
Cicero & Cole, LLP, Wilmington, DE; Arnold Shokouhi,
Christopher M. Barkley, James E. Sherry, McCathern, PLLC,
Dallas – Attorneys for Plaintiff.
W. Poff, Robert M. Vrana, Young Conaway Stargatt &
Taylor, LLP, Wilmington, DE; Matthew B. Lowrie, Lucas I.
Silva, Foley & Lardner LLP, Boston, MA – Attorneys
NOREIKA, U.S. DISTRICT JUDGE:
the Court is Defendant Omron Healthcare, Inc.’s
(“Defendant” or “Omron”) “Rule
12(b)(6) Motion to Dismiss, or In the Alternative, Motion to
Stay, or In the Alternative, 28 U.S.C. § 1404(a) Motion
for Transfer to the Northern District of Illinois.”
(D.I. 9). Plaintiff LoganTree LP (“Plaintiff or
“LoganTree”) opposes Omron’s motion. (D.I.
13). For the reasons set forth below, the Court
grants-in-part and denies-in-part Omron’s
October 18, 2019, LoganTree filed the present action,
accusing Omron’s wearable accelerometer-based activity
trackers of infringing various claims of U.S. Patent No.
6,059,576 (“the ’576
Patent”). (D.I. 1 ¶¶ 1, 17-26). The
’576 Patent, entitled “Training and Safety
Device, System and Method to Aid in Proper Movement During
Physical Activity,” issued on May 9, 2000, with three
independent claims and twenty-six dependent claims.
(Id. ¶¶ 7, 11). In March of 2015, the
United States Patent and Trademark Office
(“USPTO”) issued a reexamination certificate for
the ’576 Patent, bearing U.S. Patent No. 6,059,576
(Id. ¶ 8). Through reexamination, the three
independent claims, claims 1, 13, and 20, were amended and an
additional 156 dependent claims were issued, “for a
total of 185 patented claims.” (Id. ¶
11). The ’576 Patent expired on November 21, 2017.
See ’576 Patent.
to Omron’s motion to transfer, LoganTree is a Nevada
partnership. (Id. ¶ 2). Its sole general
partner is Gulfstream Ventures, LLC, a Nevada limited
liability company, which is owned and managed by
Theodore and Anne Brann of Boerne, Texas.
(Id.). Omron is a Delaware corporation with a
principal place of business in Illinois. (Id. ¶
Motion to Dismiss Under Rule 12(b)(6)
ruling on a motion to dismiss under Federal Rule of Civil
Procedure 12(b)(6), the Court must accept all well-pleaded
factual allegations in the complaint as true and view them in
the light most favorable to the plaintiff. See Mayer v.
Belichick, 605 F.3d 223, 229 (3d Cir. 2010); see
also Phillips v. Cty. of Allegheny, 515 F.3d 224, 232-33
(3d Cir. 2008). “[A] court need not ‘accept as
true allegations that contradict matters properly subject to
judicial notice or by exhibit,’ such as the claims and
the patent specification.” Secured Mail Sols. LLC
v. Universal Wilde, Inc., 873 F.3d 905, 913 (Fed. Cir.
2017) (quoting Anderson v. Kimberly-Clark Corp., 570
Fed.Appx. 927, 931 (Fed. Cir. 2014)). Nor is the Court
required to accept as true bald assertions, unsupported
conclusions or unwarranted inferences. See TriPlay, Inc.
v. WhatsApp Inc., No. 13-1703 (LPS) (CJB), 2018 WL
1479027, at *3 (D. Del. Mar. 27, 2018). Dismissal under Rule
12(b)(6) is only appropriate if a complaint does not contain
“sufficient factual matter, accepted as true, to
‘state a claim to relief that is plausible on its
face.’” Ashcroft v. Iqbal, 556 U.S. 662,
678 (2009) (quoting Bell Atl. Corp. v. Twombly, 550
U.S. 544, 570 (2007)); see also Fowler v. UPMC
Shadyside, 578 F.3d 203, 210 (3d Cir. 2009). This
plausibility standard obligates a plaintiff to provide
“more than labels and conclusions, and a formulaic
recitation of elements of a cause of action.”
Twombly, 550 U.S. at 555. Instead, the pleadings
must provide sufficient factual allegations to allow the
Court to “draw the reasonable inference that the
defendant is liable for the misconduct alleged.”
Iqbal, 506 U.S. at 678.
Motion to Transfer Pursuant to 35 U.S.C. §
courts have 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).
However, “[a] plaintiff, as the injured party,
generally ha[s] been ‘accorded [the] privilege of
bringing an action where he chooses,” Helicos
Biosciences Corp. v. Illumina, Inc., 858 F.Supp.2d 367,
371 (D. Del. 2012) (quoting Norwood v. Kirkpatrick,
349 U.S. 29, 31 (1955)), and this choice “should not be
lightly disturbed,” Jumara v. State Farm Ins.
Co., 55 F.3d 873, 879 (3d Cir. 1995).
Third Circuit has recognized 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
Jumara, 55 F.3d at 879 (citation omitted). The
Jumara court went on to describe twelve (12)
“private and public interests protected by the language
of § 1404(a).” Id. The private interests
plaintiff’s 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. at 879 (citations omitted). The public interests
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.
party seeking transfer bears the burden “to establish
that a balancing of proper interests weigh[s] in favor of
transfer.” Shutte v. Armco Steel Corp., 431
F.2d 22, 25 (3d Cir. 1970). Moreover, though courts have
“broad discretion to determine, on an individualized,
case-by-case basis, whether convenience and fairness
considerations weigh in favor of transfer,”
Jumara, 55 F.3d at 883, the Third Circuit has held
that “unless the balance of convenience of the parties
is strongly in favor of [the] defendant, the
plaintiff’s choice of forum should prevail.”
Shutte, 431 F.2d at 25.
argues that the Court should dismiss LoganTree’s
Complaint because LoganTree fails to plausibly allege that
the Accused Products infringe the ’576 Patent. (D.I. 10
at 2). In the alternative, Omron asks the Court to transfer
this case to the Northern District of Illinois. (Id.
at 2-3). As discussed below, the Court will grant-in-part and
deny-in-part Omron’s motion to dismiss and will deny
Omron’s motion to transfer.