Intellectual Ventures I LLC v. Altera Corp.

• Decision Date: 24 January 2012
• Docket Number: C.A. No. 10–1065–LPS.
• Citation: 842 F.Supp.2d 744
• Court: U.S. District Court — District of Delaware
• Parties: INTELLECTUAL VENTURES I LLC and, Intellectual Ventures II LLC, Plaintiffs, v. ALTERA CORPORATION, Microsemi, Corporation, Lattice Semiconductor Corporation and Xilinx, Inc., Defendants.

842 F.Supp.2d 744

INTELLECTUAL VENTURES I LLC and, Intellectual Ventures II LLC, Plaintiffs,

v.ALTERA CORPORATION, Microsemi, Corporation, Lattice Semiconductor Corporation and Xilinx, Inc., Defendants.

C.A. No. 10–1065–LPS.

United States District Court, D. Delaware.

Jan. 24, 2012.

Brian E. Farnan, Esquire of Farnan LLP, Wilmington, DE, John M. Desmarais, Esquire and Michael P. Stadnick, Esquire of Desmarais LLP, New York, NY, for Plaintiffs.

Steven J. Balick, Esquire, Tiffany Geyer Lydon, Esquire, and Andrew C. Mayo, Esquire of Ashby & Geddes, Wilmington, DE, Alan Blankenheimer, Esquire and Jo Dale Carothers, Esquire of Covington & Burling LLP, San Diego, CA, Robert T. Haslam, Esquire and Kurt G. Calia, Esquire of Covington & Burling LLP, Redwood Shores, CA, for Defendant Lattice Semiconductor Corporation.

Jack B. Blumenfeld, Esquire and Rodger D. Smith II, Esquire of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, William F. Lee, Esquire and Lauren B. Fletcher, Esquire of Wilmer Cutler Pickering Hale & Dorr LLP, Boston, MA, Mark D. Selwyn, Esquire, Joseph H. Haag, Esquire, and Evelyn Mak, Esquire of Wilmer Cutler Pickering Hale & Dorr LLP, Palo Alto, CA, for Defendant Altera Corporation.

Frederick L. Cottrell III, Esquire and Anne Shea Gaza, Esquire of Richards, Layton & Finger, P.A., Wilmington, DE, Mark A. Samuels, Esquire, Brian Berliner, Esquire, and Yixin Zhang, Esquire of O'Melveny & Myers LLP, Los Angeles, CA, Michael Myers, Esquire of O'Melveny & Myers LLP, Newport Beach, CA, for Defendant Microsemi Corporation.

Karen Jacobs Louden, Esquire and Ramy Hanna, Esquire, of Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, Behrooz Shariati, Esquire, of Jones Day, Palo Alto, CA, for Defendant Xilinx, Inc.

MEMORANDUM OPINION

STARK, District Judge:

Pending before the Court are three motions: (i) Defendant Xilinx Inc.'s (“Xilinx”) Motion to Dismiss or Transfer in Favor of the First–Filed Action in the United States District Court for the Northern District of California (D.I. 36) (“Xilinx Transfer Motion”); (ii) Defendants Altera Corporation (“Altera”), Microsemi Corporation (“Microsemi”), and Lattice Semiconductor Corporation's (“Lattice”) Motion to Transfer Venue to the Northern District of California (D.I. 43) (“Original Defendants' Transfer Motion”); and (iii) Defendant Xilinx's Motion to Dismiss or Consolidate (“Xilinx Motion to Dismiss”) (D.I. 91). For the reasons set forth below, the Court will DENY the Xilinx Transfer Motion as well as the Original Defendants' Transfer Motion. The Court will GRANT IN PART the Xilinx Motion to Dismiss by ordering consolidation.¹

The Parties

Plaintiffs, Intellectual Ventures I LLC (“IV I”) and Intellectual Ventures II LLC (“IV II,” and, collectively with IV I, hereinafter referred to as “Plaintiffs” or “IV”), are limited liability companies organized under the laws of Delaware. (D.I. 1 ¶¶ 1–2) IV's principal place of business is in Bellevue, Washington. ( Id.) It also has an office in northern California, within the Northern District of California. (D.I. 37 at 3)

Defendant Xilinx is incorporated in Delaware and has its principal place of business in San Jose, California. (D.I. 37 at 3) None of Xilinx's accused products were developed in Delaware. ( Id.) Xilinx has approximately 3,000 employees worldwide and in 2010 reported revenues of more than $1.8 billion. (D.I. 50 Ex. B)

Defendant Altera is incorporated in Delaware and has its principal place of business in San Jose, California. (D.I. 44 at 3) Altera has been a Delaware corporation since 1997. (D.I. 63 Ex. C at 46) Altera's allegedly infringing technology was developed outside of Delaware, including in San Jose and Santa Cruz, California as well as outside of the United States. (D.I. 44 at 3–4) Altera has over 2600 employees worldwide, including more than 1100 in the United States. (D.I. 63 Ex. C at 15) In 2010, Altera generated nearly $2 billion in net sales. ( Id. at 25)

Defendant Microsemi is incorporated in Delaware and has its principal place of business in Irvine, California. (D.I. 44 at 4) Microsemi has been incorporated in Delaware since 1960. (D.I. 63 Ex. H at 4) Microsemi's allegedly infringing technology was developed in Mountain View, California. (D.I. 44 at 3) Microsemi has approximately 1,600 employees in the United States. (D.I. 63 Ex. H at 10) In 2010, Microsemi had net sales in excess of $500 million. (D.I. 63 Ex. H at 6)

Defendant Lattice is incorporated in Delaware and has its principal place of business in Hillsboro, Oregon. (D.I. 44 at 5) Lattice has been a Delaware corporation since 1985. (D.I. 63 Ex. F at 4) Lattice also maintains a significant engineering facility in San Jose, California. (D.I. 44 at 5) The great majority of Lattice's development work on its accused products occurred in either Hillsboro or San Jose, although development on one accused product line is done in a smaller facility in Bethlehem, Pennsylvania. ( Id.) Lattice employs nearly 750 people worldwide and had revenue in 2010 of approximately $297 million. (D.I. 63 Ex. F at 11, 27)

Procedural Background

Plaintiffs initially filed this patent infringement suit against Altera, Microsemi, and Lattice (hereinafter the “Original Defendants”) on December 8, 2010. (D.I. 1) (“Complaint”) There are five patents-in-suit: U.S. Patent Nos. 5,675,808; 6,993,669; 6,687,325; 6,260,087; and 6,272,646. ( Id.) IV I or IV II own each of the patents-in-suit. (D.I. 1 ¶¶ 11–20) Generally, IV alleges that Defendants infringe the patents-in-suit by making, using, selling, importing and/or offering for sale certain programmable logic device products. (D.I. 17)

On February 14, 2011, Defendant Xilinx filed a declaratory judgment action in the Northern District of California (“Northern District”) for non-infringement and invalidity of sixteen patents allegedly owned by IV-related entities, including four of the five patents asserted by IV in the instant action. (D.I. 37 at 1; see also Xilinx, Inc. v. Invention Investment Fund I LP, No. C 11–0671 SI, 2011 WL 3206686 (N.D.Cal.) (hereinafter “Xilinx California Action”)) On February 15, 2011, IV amended the Complaint to add Xilinx as a defendant. (D.I. 17)

On April 1, 2011, Xilinx filed its Xilinx Transfer Motion, seeking to dismiss or transfer IV's claims against Xilinx to the Northern District. (D.I. 36) On April 26, 2011, Altera, Microsemi, and Lattice filed the Original Defendants' Transfer Motion, also seeking transfer of this action to the Northern District. (D.I. 43) The transfer motions were fully briefed as of May 23, 2011. (D.I. 37, 44, 48, 57, 62, 67)

Thereafter, on July 27, 2011, the Northern District of California transferred the portions of the Xilinx California Action relating to the patents asserted in the instant action to the District of Delaware. ( See D.I. 75; see also Xilinx, Inc. v. Invention Investment Fund I LP, C.A. No. 11–666–LPS D.I. 87, 2011 WL 3206686 (D.Del. July 27, 2011))

On August 1, 2011, Defendants advised the Court of a fully-briefed petition for a writ of mandamus that was pending before the Federal Circuit, involving an issue that Defendants believed “may impact the Court's analysis of Defendants' pending motions to transfer.” (D.I. 77 at 2) (citing In re Link–A–Media Devices Corp., Fed. Circ. Misc. Docket No. 2011–M990) Defendants therefore suggested that “it may be most efficient for the Court to defer deciding Defendants' pending motions to transfer until the Federal Circuit decides the petition for writ of mandamus in Link–A–Media Devices.” (D.I. 77 at 2) On December 6, 2011, Defendant Altera notified the Court that the Federal Circuit had granted the petition for mandamus in Link–A–Media Devices. (D.I. 95)

On September 26, 2011, Xilinx moved to dismiss the portion of the Xilinx California Action that was transferred from the Northern District on the grounds that it is duplicative of the instant action. (D.I. 91) In the alternative, if the Court does not dismiss the transferred Xilinx California Action, Xilinx requested that it be consolidated with the instant action. ( Id.) Plaintiffs do not oppose consolidation. (D.I. 93)

Section 1404(a)

Defendants' requests to transfer arise under 28 U.S.C. § 1404(a), which provides: “For the convenience of the parties and witnesses, in the interests of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” Specifically, Defendants jointly ask that the Court transfer the instant action to the Northern District.

Appropriateness of the Transferee Venue

In determining whether transfer is appropriate, the Court must first determine whether this action could have been brought in the proposed transferee venue, which here is the Northern District. “The party moving for transfer bears the burden of proving that the action properly could have been brought in the transferee district in the first instance.” Mallinckrodt Inc. v. E–Z–Em, Inc., 670 F.Supp.2d 349, 356 (D.Del.2009) (internal citations omitted). There does not appear to be any dispute that Plaintiffs' actions against all Defendants could have been brought in the Northern District.

Applicable Legal Standards

As the Third Circuit has explained, Section 1404(a) “was intended to vest district courts with broad discretion to determine, on an individualized, case-by-case basis, whether convenience and fairness considerations weigh in favor of transfer.” Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir.1995); see also Stewart Org., Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988). The Third Circuit has also emphasized that “the plaintiff's choice of venue should not be lightly disturbed.” Jumara, 55 F.3d at 879. As a result, “a transfer is not to be liberally granted.” Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (3d Cir.1970) (internal quotation marks omitted).

Consequently, the burden rests squarely on the party seeking a transfer “to establish that a...