Affymetrix, Inc. v. Synteni, Inc.

• Decision Date: 18 November 1998
• Docket Number: No. CIV. A. 98-006-GMS.,No. 98-520-GMS.,CIV. A. 98-006-GMS.,98-520-GMS.
• Citation: 28 F.Supp.2d 192
• Parties: AFFYMETRIX, INC., Plaintiff, v. SYNTENI, INC. and Incyte Pharmaceuticals, Inc., Defendants.
• Court: U.S. District Court — District of Delaware

Page 192

28 F.Supp.2d 192

AFFYMETRIX, INC., Plaintiff, v. SYNTENI, INC. and Incyte Pharmaceuticals, Inc., Defendants.

No. CIV. A. 98-006-GMS.

No. 98-520-GMS.

United States District Court, D. Delaware.

November 18, 1998.

Stewart B. Young, Matt Denn, Martin S. Lessner, John W. Shaw, Young, Conaway, Stargatt & Taylor, Wilmington, DE, William L. Anthony, Shelley J. Sandusky, Craig R. Kaufman, Elizabeth A. Howard, Orrick, Herrington & Suttcliffe, Menlo Park, CA, for Plaintiff.

William J. Marsden, Jr., Joan Taft Kluger, Potter, Anderson & Coroon, Wilmington, DE, Robert P. Taylor, Teresa M. Corbin, N. Thane Bauz, Jenifer A. Tipsord, Sharmini N. Green, Howrey & Simon, Menlo Park, CA, for Defendants.

OPINION

SLEET, District Judge.

I. INTRODUCTION.

Plaintiff, Affymetrix, Inc. ("Affymetrix"), has filed two actions for patent infringement against Defendants Synteni, Inc. ("Synteni") and Incyte Pharmaceuticals, Inc. ("Incyte") with this Court.

On January 6, 1998, Affymetrix filed the first of these two lawsuits, Civil Action No. 98-6, alleging the willful infringement of U.S. Patent No. 5,445,934 ("the '934 patent") by Synteni and Incyte. Eight months later, on September 1, 1998, Affymetrix filed a second lawsuit, Civil Action No. 98-520, for the alleged infringement of U.S. Patent Nos. 5,744,305 ("the '305 patent") and 5,800,992 ("the '992 patent"). Both complaints seek injunctive relief as well as money damages.

This Court has jurisdiction pursuant to 35 U.S.C. §§ 101, et seq. and 28 U.S.C. §§ 1331 and 1338.

In both instances, before answering, Synteni and Incyte moved under 28 U.S.C. § 1404(a) to transfer these actions from the District of Delaware to the Northern District of California. For the reasons discussed below, the Court grants both of these motions.

II. THE PARTIES AND THEIR INVENTIONS.

Affymetrix, a wholly-owned subsidiary of Affymax N.V. ("Affymax"), first began operating in the early 1990s to pursue research in the field of high density arrays. These arrays contain thousands of sequences of genetic material and are used by medical and scientific researchers in their search to discover the causes of (and cures for) diseases such as cancer and AIDS.

In developing this technology, Affymetrix has obtained a number of patents. Those in suit are the '934, '305, and '992 patents. These patents describe the process that Affymetrix uses in manufacturing its high density arrays which are sold under the trademark "GeneChip."

At the same time that Affymetrix was conducting its research into high density arrays, Incyte broke ground on its own development —the creation of a portfolio of "genomic" databases which catalogued millions (if not billions) of series of genetic information. These databases were (and still are) used by the research and development divisions of major pharmaceutical companies to not only perfect existing drugs but also create new ones.

In 1996, Affymetrix and Incyte joined forces to develop a set of customized high density arrays, sold under the trademark "LifeChips." However, in January of 1998, Incyte acquired Synteni and began to market its own competing (the accused) product — the Gene Expression Micro-Array (or "GEM").

At the time, Synteni was a privately-held company. Originally incorporated under California law in 1994, Synteni reincorporated under Delaware law in 1997 (one year before it was acquired by Incyte). Presently, Synteni holds the exclusive world-wide rights from Stanford University ("Stanford") to commercialize the GEM array technology. The GEM array is a "high density array of DNA molecules bonded onto a small glass surface." Synteni markets the GEM array to companies in the agricultural and pharmaceutical industries.

Shortly after Incyte acquired Synteni, Affymetrix filed these two lawsuits.

III. THE RELEVANT FACTS.

At the time that both of these actions were filed, Affymetrix was a California corporation with its principal place of business in Santa Clara, California.¹ Synteni and Incyte, on the other hand, were (and, in fact, still are) Delaware corporations² with their principal places of business in the respective cities of Fremont and Palo Alto, California.

A. Their Connection (Or Lack Thereof) To The District of Delaware.

None of the parties maintain any facilities or employ any personnel in Delaware. They manufacture none of their products (accused or otherwise) and conduct none of their research or development here. Moreover, they maintain no warehouses or other storage facilities in Delaware. Additionally, they store no relevant files, records, or other documents in the District. Finally, none of them keeps any mail drops, bank accounts, or telephone numbers in Delaware.

B. Their Connection To The Northern District Of California.

The headquarters and laboratories of all of three of these companies are located within roughly twenty miles of each other in the area of northern California known as Silicon Valley. Synteni and Incyte maintain all of their research laboratories, sequencing facilities, and administrative buildings in either Fremont or Palo Alto. All of their employees reside in California, and all of their records are kept there. Affymetrix maintains all of its corporate offices and research facilities in Santa Clara. All of its employees and records are located in California as well. Thus, the overwhelming majority of the witnesses whom the parties intend to call at trial as well as all of the relevant documents (including numerous laboratory notebooks) are located in the Northern District of California.

1. The inventors.

Five of the six inventors named in the patents in suit reside in the Northern District. While the sixth permanently resides in North Carolina, for the next eight months (or so) he will be living in southern California.

Specifically, three of the four inventors listed on the '934 and '305 patents (Stephen Fodor, Leighton Read, and Lubert Stryer) reside in the Northern District of California. The fourth (Michael Pirrung) is a professor at Duke University and resides in North Carolina. He, however, is currently on sabbatical, teaching at the University of California in San Diego. He thus lives approximately 500 miles South of the Northern District. Of the remaining two inventors³ listed on'992 patent (Denis Solas, and William Dower), both reside in the Northern District.

Dr. Fodor is the Chief Executive Officer of Affymetrix and, therefore, a party witness. In their affidavits, Dr. Read and Professor Stryer have pledged that they will make themselves available for trial. They only ask sufficient notice in order to make proper arrangements with respect to their teaching and research obligations. Finally, in both of their declarations, Mr. Solas and Mr. Dower aver their willingness to voluntarily attend trial if needed.

2. Other witnesses.

In addition to these six inventors, Synteni and Incyte expect to call Patrick Brown, Dari Shalon, Ron Davis, Mark Schena, and Radjoe Drmanac at trial.

Professor Brown is a member of the Stanford faculty who conducts research into micro-array technology.

Dr. Shalon developed the technology behind the GEM array while conducting post-doctoral research in Professor Brown's lab. Later, in 1994, he founded Synteni. He now serves as its president and CEO and is, therefore, a party witness.

At the same time that Dr. Shalon was conducting his research in Professor Brown's laboratory, Professor Davis (another member of the Stanford faculty) was actively collaborating with Affymetrix. Specifically, he was performing subcontract work for the company for the purposes of advancing its high density array technology. During this time, Professor Schena (a post-doctoral fellow at Stanford) worked under Professor Brown.

Two of these individuals (Professors Brown and Schena) have expressed an unwillingness to voluntarily appear for trial. In his declaration, Professor Brown avers that attending trial would prove extremely costly while disrupting both his research activities and teaching duties. And, in an affidavit filed with the Court, counsel for Synteni and Incyte affirms that an attorney representing Professor Schena has expressed similar sentiments on behalf of his client.

An attorney representing Dr. Drmanac, the president of Hyseq, Inc. ("Hyseq") another Silicon Valley company which manufactures competing micro-arrays, has also communicated with defense counsel, stating that Dr. Drmanac is "unwilling to voluntarily appear [for] trial ... in a matter unrelated to his business."

In addition to these five designated witnesses, Synteni and Incyte claim that there are numerous other individuals residing in the Northern District who are likely to have personal knowledge about either the specific facts of this dispute or the prior art. In support of their contention, they note that, besides Affymetrix, Synteni, Incyte, and Hyseq, three other microarray companies are located in Silicon Valley. According to Synteni and Incyte, the current and former employees of these seven entities might possess some knowledge or information relevant to this lawsuit. At this time, however, neither Synteni nor Incyte can identify any of these potential witnesses by name.

3. An apparently related proceeding.

On August 18, 1998, Affymetrix brought a patent infringement action against Hyseq in the Northern District of California. That lawsuit (Case No. C 98-03192) alleges infringement of the '305 patent as well as U.S. Patent No. 5,795,716 ("the '716 patent"). On September 1, 1998, Affymetrix amended its Complaint against Hyseq to include a claim for infringing upon the '992 patent. The Honorable Fern M. Smith, United States District Court Judge, presides over the litigation in the Northern District.

C. Their Connection to Delaware (Revisited).

Affymetrix, Synteni, and Incyte are all multi-million dollar corporations that maintain ties to multi-national companies within the pharmaceutical industry. All...