Invitrogen Corp. v. General Elec. Co., 2009 WL 331891(E.D.Tex. Feb 09, 2009) (NO. CIV A 6:08CV112)
Invitrogen Corp. v. General Elec. Co., 2009 WL 331889(E.D.Tex. Feb 09, 2009) (NO. CIV A 6:08CV113)
Judge: John Love
As my wife and I can tell you, there are two kinds of twins, identical, and fraternal. Ours (Parker and Collin, show above in the quiet moment from a vacation a couple of years back) are fraternal, which means that despite being born at the same time and in the same place, and even involving the same "parties," so to speak, there are differences, and they can be major - in fact they usually are. (Their teachers vouch for this as well).
Judge Love faced the question of determining whether these two cases, filed on the same day and with the same parties, but different patents, were identical or fraternal, with respect to the defendant's motions to transfer venue. These two opinions are, respectively, the granting of one motion to transfer venue, and the denying of another. In the first, the '112 case, the defendant GE sought transfer to Maryland, where half of the patents asserted in the Texas case had been asserted by the plaintiff's predecessor in interest against GE over an 11 year period. The second case, the '113 case involves a different patent, and had no prior litigation. Judge Love began his analysis in the first case pointing out one of the truisms in venue cases, which is that " the court must exercise its discretion in light of the particular circumstances of the case,"
In the first case, Judge Love found persuasive GE's claim that this case should be transferred to the District of Maryland in order to preserve judicial economy, noting that there was "substantial overlap" between the Texas case and the now-settled Maryland case. "[A] Maryland court has had extensive involvement with three of the six patents at issue and a settlement agreement was entered into in the Maryland litigation that forms the basis of Defendant's patent exhaustion defense. Based on this analysis, the Court finds that Defendant has shown that transfer to the District of Maryland would be clearly more convenient."
But in the second case, the '113 case, Judge Love denied the motion to transfer, noting that that case lacked the decade-long prior litigation involving the patents in Maryland, and that it had little in common with the other litigation. "At this stage, the Court finds few similarities between the patents at issue in the 112 case and the '272 patent other than the fact that they both relate to the field of DNA technology. The mere fact that both cases involve the same parties and some sort of DNA technology is not sufficient to weigh in favor of transfer." Nor did the '113 case involve interpretation of a settlement agreement entered into in Maryland. Judge Love concluded that only a couple of factors weighed slightly in favor of transfer, and accordingly denied the motion, finding that the defendant had not under these facts shown that the proposed transferee forum was "clearly more convenient."
This brings the post-VW Tech world of venue opinions to 3-2 - for the mathematically impaired, that's a win rate of 60% for motions to transfer in the few reported opinions thus far involving patent case.
