Helicos Biosciences Corp. v. Illumina, Inc.

• Decision Date: 03 May 2012
• Docket Number: Civ. No. 10–735–SLR.
• Citation: 858 F.Supp.2d 367
• Parties: HELICOS BIOSCIENCES CORPORATION, Plaintiff, v. ILLUMINA, INC., et al., Defendants.
• Court: U.S. District Court — District of Delaware

858 F.Supp.2d 367

HELICOS BIOSCIENCES CORPORATION, Plaintiff,

v.ILLUMINA, INC., et al., Defendants.

Civ. No. 10–735–SLR.

United States District Court, D. Delaware.

May 3, 2012.

Richard D. Kirk, Esquire and Stephen B. Brauerman, Esquire of Bayard, P.A., Wilmington, Delaware. Counsel for Plaintiff. Of Counsel: Douglas J. Kline, Esquire, Daniel M. Forman, Esquire, Brian A. Fairchild, Esquire, Sheryl Koval Garko, Esquire, James D. Clements, Esquire, Blake B. Greene, Esquire and Kurt M. Kjelland, Esquire of Goodwin Procter LLP; David I. Gindler, Esquire of Irell & Manella LLP.

Richard L. Horwitz, Esquire and David E. Moore, Esquire of Potter Anderson & Corroon LLP, Wilmington, Delaware. Counsel for Defendants. Of Counsel: Edward R. Reines, Esquire, Derek C. Walter, Esquire and Sean O'Rourke, Esquire of Weil, Gotschal & Manges LLP.

MEMORANDUM OPINION

SUE L. ROBINSON, District Judge.

I. INTRODUCTION

Pending before the court is a motion to transfer venue to the Northern District of California filed by defendants Pacific Biosciences of California, Inc. (“PacBio:”), Life Technologies Corporation (“Life”) and Illumina, Inc. (“Illumina”). For purposes of exploring the papers filed by each party, the court held an evidentiary hearing on February 16, 2012. The court has jurisdiction to hear this motion pursuant to 28 U.S.C. § 1338. Venue is appropriate pursuantto 28 U.S.C. § 1400(b). For the reasons that follow, the court will deny the motion.

II. BACKGROUNDA. The Parties

Plaintiff Helicos Biosciences Corporation (“Helicos”) is incorporated in Delaware with its principal place of business in Cambridge, Massachusetts. Helicos, which started out as a biotech sequencing company, now employs ten employees and focuses on its patent enforcement business. (D.I. 187 at 3; D.I. 244 at 17, 36) Plaintiff Arizona Science and Technology Enterprises LLC (d/b/a Arizona Technology Enterprises) (“AzTE”), an Arizona corporation, is an “intellectual property development affiliate of Arizona State University and is located in Phoenix, Arizona.” (D.I. 169 at 2) AzTE is “essentially a holding organization for the two Arizona State patents to which Helicos allegedly has an exclusive license.” ( Id.)

Defendant Illumina is a publicly-traded company incorporated in Delaware. Illumina has approximately 2,000 employees worldwide, with most of them (approximately 1,400) working in or near San Diego, California and the rest working in Illumina's commercial offices located in seven countries. (D.I. 187 at 3; D.I. 244 at 30) Illumina generated over $900 million in revenue in the United States alone in 2010. (D.I. 187 at 3) Illumina is a “biotech tool maker;” the accused product in this case involves DNA sequencing. Illumina's sequencing instruments were largely developed by a company Illumina acquired in 2007; the chemistry was largely developed in the United Kingdom. (D.I. 244 at 29–30) Illumina has installed two of its DNA sequencing platforms at the University of Delaware, has given presentations concerning its sequencing systems at the University, and has provided customer training and performed sequencing runs at the University. (D.I. 187 at 4; D.I. 244 at 31)

Defendant Life is a publicly-traded company incorporated in Delaware, with its principal place of business in or near San Diego, California. Life represents itself as a “global biotechnology tools company” with over $3.3 billion in sales, 9,000 employees and a presence in 160 countries. (D.I. 187 at 4)

PacBio is a publicly-traded company incorporated in Delaware, with its principal place of business in Menlo Park, California. (D.I. 187 at 3; D.I. 244 at 20) PacBio started commercializing its products in 2011 and had revenue from product sales in the approximate amount of $34 million. (D.I. 244 at 20) PacBio has 300 employees and has shipped its products on a national and international scale. (D.I. 187 at 3; D.I. 244 at 20) Like Illumina, PacBio has installed one of its instruments at the University of Delaware, and has provided customer training and performed sequencing runs at the University. (D.I. 187 at 4)

B. The Parties' Litigation History

With the exception of PacBio, which has not previously been engaged in litigation outside of California, both Illumina and Life have litigated extensively in fora other than California. Indeed, Illumina has been involved in litigating as many cases in Delaware as it has in California. (D.I. 187 at 5; D.I. 188, ex. N) The remaining Illumina litigations have been scattered throughout the country, including Massachusetts, Washington and Wisconsin. ( Id.) Life has also been involved in litigations throughout the country, with nearly half of those litigations occurring in Delaware, Maryland and New York. (D.I. 187 at 5; D.I. 188, ex. I) In the past, both Illumina and Life have opposed motions to transfer venue to the Northern District of California. (D.I. 187 at 5, citing cases).

III. STANDARD OF REVIEW

Since the Act of 1897, when Congress first enacted what is now 28 U.S.C. § 1400(b),¹ any civil action for patent infringement could be brought in the judicial district in which the defendant was incorporated. Indeed, until 1990, the words “inhabitant” (used prior to 1948) and “resident” (used since 1948), as those words relate to corporate venue in patent infringement cases, were limited to “the state of incorporation only.” Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226, 77 S.Ct. 787, 1 L.Ed.2d 786 (1957); see also VE Holding Corp. v. Johnson Gas Appliance Co., 917 F.2d 1574,1578 (Fed.Cir.1990). In 1990, the Federal Circuit in VE Holding interpreted the 1988 amendment to the general venue statute, 28 U.S.C. § 1391(c), as supplementing the specific provisions of § 1400(b). More specifically, § 1391 was amended to broaden the general venue provision for corporations: ²

(c) For purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.

(Emphasis added) The Federal Circuit held that the emphasized language above clearly indicated that § 1391(c), on its face, applied to § 1400(b), “and thus redefine[d] the meaning of the term ‘resides' in that section.” 917 F.2d at 1578. Thus, as recognized by the Federal Circuit, “[v]enue, which connotes locality, serves the purpose of protecting a defendant from the inconvenience of having to defend an action in a trial court that is either remote from the defendant's residence or from the place where the acts underlying the controversy occurred.... The venue statutes achieve this by limiting a plaintiff's choice of forum to only certain courts from among all those which might otherwise acquire personal jurisdiction over the defendant.” Id. at 1576 (citation omitted).

Since 1948, 28 U.S.C. § 1404(a) has given district courts the authority to “transfer any civil action to any other district or division where it might have been brought.” According to the Supreme Court, § 1404(a) “reflects an increased desire to have federal civil suits tried in the federal system at the place called for in the particular case by considerations of convenience and justice. Thus ..., the purpose of the section is to prevent the waste ‘of time, energy and money’ and ‘to protect litigants, witnesses and the public against unnecessary inconvenience and expense....’ To this end, it empowers a district court to transfer ‘any civil action’ to another district court if the transfer is warranted by the convenience of parties and witnesses and promotes the interest of justice.” Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S.Ct. 805, 11 L.Ed.2d 945 (1964) (quoting Continental Grain Co. v. Barge F.B.L.–585, 364 U.S. 19, 26–27, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1060)). The Supreme Court has urged a “common-sense approach” to application of the statute, as it was designed as a “federal judicial housekeeping measure, dealing with the placement of litigation in the federal courts and generally intended, on the basis of convenience and fairness, simply to authorize a change of courtrooms.” Id. at 623, 636–37, 84 S.Ct. 805.See also Piper Aircraft Co. v. Reyno, 454 U.S. 235, 254, 102 S.Ct. 252, 70 L.Ed.2d 419 (1981). Consistent with Federal Circuit precedent characterizing motions to transfer pursuant to § 1404(a) as procedural matters, the law of the regional circuit provides the governing standards. In re Link–A–Media Devices Corp., 662 F.3d 1221, 1222–23 (Fed.Cir.2011). See generally Panduit Corp. v. All States Plastic Mfg. Co., Inc., 744 F.2d 1564, 1575 (Fed.Cir.1984) (“When we review procedural matters that do not pertain to patent issues, we sit as if we were the particular regional circuit court where appeals from the district court we are reviewing would normally lie. We would adjudicate the rights of the parties in accordance with the applicable regional circuit law.”).

Consistent with the Supreme Court's jurisprudence on § 1404(a), “§ 1404(a) accords broad discretion to district court[s]” and “directs [such courts] to take account of factors other than those that bear solely on the parties' private ordering of their affairs. [A] district court also must weigh in the balance the convenience of the witnesses and those public-interest factors of systemic integrity and fairness that, in addition to private concerns, come under the heading of the ‘interest of justice.’ ” Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 30, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988). Likewise, the United States Court of Appeals for the Third Circuit has directed district courts to consider “many variants of the private and public interests protected by the language of § 1404(a).” Jumara v. State Farm Insurance Co., 55 F.3d 873, 879 (3d Cir.1995).

As can be seen, by the time Jumara issued in 1995, there was a recognized historical continuum that served as the backdrop for the Third Circuit's analysis. F...