Appotronics Corp. v. Delta Elecs., Inc.
| Decision Date | 22 July 2020 |
| Docket Number | CIVIL NO. 2:19-cv-466 |
| Court | U.S. District Court — Eastern District of Virginia |
| Parties | APPOTRONICS CORPORATION, LTD., Plaintiff, v. DELTA ELECTRONICS, INC., Defendant. |
This matter comes before the Court upon defendant and counterclaim-plaintiff Delta Electronics, Inc.'s ("Delta") motion to transfer venue to the Northern District of California pursuant to 28 U.S.C. § 1404(a). ECF No. 30. Delta's motion to transfer was fully briefed and following oral argument of counsel, the Court DENIED Delta's motion to transfer from the bench. ECF No. 67. This Opinion and Order memorializes the Court's reason for this decision.
Plaintiff and counterclaim-defendant Appotronics Corporation, Ltd. ("Appotronics") is a Chinese corporation with its registered place of business at 21F & 22F, High-Tech Zone Union Tower, No. 63, Xuefu Road, Nanshan District, Shenzhen 518000, China. See First Amended Complaint, ECF No. 27 ("First Am. Compl.") ¶ 17. "Appotronics is a world leader in laser display technology for projectors and televisions for an array of applications including movie theatres, corporate installations, and other large venues." Id. ¶ 2. In fact, "Appotronics invented the first blue laser-based phosphors laser display technology called ALPD®[,]" which overcomes the limitations of light sources such as mercury-based lamps and light emitting diodes ("LEDs") and the problem of speckle in a traditional system that uses separate red, green, and blue laser sources to generate an image. Id. ¶¶ 3-4. Appotronics is also the sole owner of U.S. Patent No. 9,612,511 ("the '511 Patent") at the United States Patent and Trademark Office ("USPTO"). ECF No. 29 ¶ 25.
Delta is a Taiwanese corporation with its principal place of business located at 186 Ruey Kuang Rd., Neihu, Taipei 11491, Taiwan. Id. ¶ 18. According to Delta's Answer and Counterclaim to the First Amended Complaint, Delta is "a global provider of power management solutions, designs, manufactures and sells a wide variety of electronic products around the world." ECF No. 29 at 9 ¶ 7. Delta is also "one of the world's leading video projector companies, and has had a long history of designing and manufacturing both lower-end and higher-end projector products, including three-chip Digital Light Processing ("3-Chip DLP") projectors, which are used for very high-performance applications, such as auditoriums or theaters." Id. at 9 ¶ 8. Delta is the sole owner of U.S. Patent No. 9,024,241 ("the '241 Patent"); U.S. Patent Nos. 9,274,407 ("the '407 Patent"); 9,726,335 ("the '335 Patent); 10,310,363 ("the '363 Patent"); and 10,281,810 ("the '810 Patent") at the USPTO. First Am. Compl. ¶¶ 25, 34, 43, 52, 61.
Appotronics alleges that in 2010, Delta approached a former affiliate of Appotronics, YLX Incorporated ("YLX"),1 to help to improve the light source used in some of Delta's projector products. Id. ¶ 6. According to the First Amended Complaint, Delta wanted YLX to engineer and manufacture a light source to replace the current light source used in Delta's projectors "to achieve certain target performance levels." Id. In July 2010, the parties entered into a Mutual Non-Disclosure Agreement governed by California law ("MNDA"),2 and from around January2011 until August 2011, then-employees of YLX Dr. Yi Li ("Dr. Li") and Dr. Fei Hu ("Dr. Hu") worked on the light source for Delta. Id. ¶ 7. Throughout this time period, YLX "made several disclosures of its light source designs to Delta, including 3D drawings and prototypes, that, among other things, fully described the inventions later disclosed and claimed in the '241 Patent, assigned to Delta." Id. ¶ 8.
Around August 21, 2011, Delta engineers visited YLX in China to discuss the project. Id. ¶ 9. According to the First Amended Complaint, on or about August 23, 2011, YLX presented a working protype to Delta. Id. Appotronics alleges that the "working protype us[ed] a light source module that embodied the key inventions claimed by the '241 Patent, the '407 Patent, the '335 Patent, the '363 Patent, and the '810 Patent." First Am. Compl. ¶ 9. Appotronics also alleges that YLX gave Delta possession of the working protype on or about August 23, 2011 to "examine and study the system in detail." Id.
It is alleged that after receiving the working prototype, a representative of Delta, Mr. Keh-Su ("Kirk") Chang ("Mr. Chang"), emailed Dr. Li on August 24, 2011. Id. ¶ 10. In this email, Mr. Chang expressed Delta's excitement about the new light source and wanted to discuss delaying the demonstration of the projector with the new light source at a trade show. Id. Mr. Chang also suggested that the parties should jointly file for intellectual property protection based on the light source prototype disclosed by YLX. Id.
Appotronics contends that Dr. Li replied to Mr. Chang's email the next day on August 25, 2011 and warned Delta to not pursue patent rights on the invention as it was created solely by YLX employees. Id. ¶ 11. That same day Dr. Hu rushed to prepare and file a provisional patent application with the USPTO, for the technology of the working protype that Dr. Hu and Dr. Li created, which was given the U.S. Provisional Application No. 61/527,501 ("the '501 Provisional Application"). The '501 Provisional Application ultimately led to the issuance of U.S. Patent No.9,612,511 ("the '511 Patent"). Id. ¶ 12. The '511 Patent is assigned to Appotronics and lists Dr. Hu of Shenzhen, China, Dr. Li of Pleasanton, California, and Yi Yang of Shenzhen, China as the sole inventors. ECF No. 29-1, at 1.
Appotronics claims that on September 22, 2011, Delta, "secretly and without notice," filed a provisional patent application with the USPTO "for the subject matter invented by Drs. Li and Hu and previously disclosed to Delta[,]" which was given the U.S. Provisional Application No. 61/537,687 ("the '687 Provisional Application"). First Am. Compl. ¶ 13. The '687 Provisional Application listed only Delta's Mr. Chang as project head, and Delta employees Bor Wang, and Chien-Hao Hua as the only inventors. Id. ¶ 14.3 Appotronics argues that the '687 Provisional Application (and all applications claiming priority to it) failed to list any of the true inventors of from YLX. Id.
The'687 Provisional Application ultimately led to the issuance of the '241 Patent, the '407 Patent, the '335 Patent, the '363 Patent, and the '810 Patent. Id. ¶ 15. Again, Appotronics argues that these five patents recite and claim subject matter, on these patents. Id. As a result, Appotronics seeks recovery of its intellectual property that it alleges Delta misappropriated and wrongfully converted.
On September 6, 2019, Appotronics filed the instant lawsuit in the United States District Court for the Eastern District of Virginia against Delta for correction of inventorship of the '241 Patent pursuant to 35 U.S.C. § 256. See Complaint, ECF No. 1 ("Compl."). Because Delta is aforeign, Taiwanese corporation who failed to designate an agent to be served process or notice of proceedings affecting its patent and rights thereunder, Appotronics filed a motion for alternative service pursuant to 35 U.S.C. § 293 and United States District Court for the Eastern District of Virginia Local Rule 7 on September 11, 2019 ("Motion for Alternative Service"). ECF No. 4. The Court granted Appotronics' Motion for Alternative Service on September 16, 2019, ECF No. 6, and on September 27, 2019, Appotronics served Delta both by service upon its prosecution counsel, Mr. Evan R. Witt ("Mr. Witt"),4 and by publishing the Complaint in The Washington Times by September 27, 2019. ECF Nos. 15, 16.
On October 15, 2019, Delta filed an unopposed motion for extension of time to respond to Appotronics' Complaint, which was granted by The Honorable Magistrate Judge Lawrence R. Leonard on October 17, 2019. ECF Nos. 17, 19. On November 18, 2019, Delta filed its answer to Appotronics' Complaint as well as a counterclaim seeking correction of patent inventorship of the '511 Patent ("Answer and Counterclaim"). ECF No. 20. On December 9, 2019, Appotronics filed its response to Delta's counterclaim asserted in Delta's Answer and Counterclaim ("Response to Counterclaim"). ECF No. 26. That same day Appotronics also filed an amended complaint reasserting its claim for correction of patent inventorship for the '241 Patent and asserting four additional claims of correction of patent inventorship pursuant to 35 U.S.C. § 256 for the '407 Patent; the '335 Patent; the '363 Patent; and the '810 Patent ("First Amended Complaint"). ECF No. 27. On December 23, 2019, Delta filed an answer to Appotronics' First Amended Complaint and reasserted its counterclaim for the correction of patent inventorship for the '511 Patent ("Answer and Counterclaim to First Amended Complaint"). ECF No. 29.
The next day on December 24, 2019, Delta filed the instant motion to transfer venue to theNorthern District of California ("Motion to Transfer") as well as a memorandum in support of its Motion to Transfer ("Memorandum in Support"). ECF Nos. 30, 31. On January 7, 2020, Appotronics filed a memorandum in opposition to Delta's Motion to Transfer ("Opposition"). ECF No. 33. On January 13, 2020, Delta filed its reply to Appotronics' Opposition ("Reply"). ECF No. 36. That same day, Appotronics filed its response to the counterclaim asserted in Delta's Answer and Counterclaim to First Amended Complaint ("Response to Counterclaim to First Amended Complaint"). ECF No. 35.
In response to Delta's Reply, Appotronics filed a motion to strike Delta's new ground for personal jurisdiction, or for leave to file a sur-reply in response ("Motion to Strike or File Sur-Reply"). ECF No 37. In its Motion...
To continue reading
Request your trial