Data Retrieval Patent Case Transferred

As a counterpoint to my previous post, regarding an order denying a defendant's motion to transfer patent litigation out of the WD of Wash., this post features the opposite result, a defendant winning a transfer to the N.D. of California. The case is Data Retrieval Tech v. SybaseC08-1702-RSM.

There are key differences that made this case susceptible to transfer. Judge Martinez explained in his order that most of the witnesses were located in California, most of the documents and activities occurred there, and the parties are located there.

Plaintiff's primary argument for keeping the litigation in Seattle was the fact that the inventors were located here and that the patents had been previously litigated in this district. Judge Martinez disposed of these arguments as follows:

"DRT maintains that the inventors of the patents at-issue all reside in this district. But as Defendants indicate, the exclusive license agreement between Timeline and APAC indicates that these former employees of Timeline are obligated to fully cooperate in any litigation to enforce the patent rights. (Dkt. #21, Decl. of Bovich, Ex. E, § 5.4). The license agreement also reveals that the Timeline employees will be represented by counsel at no additional charge, compensated for any substantial time spent on the case, and reimbursed for out-of-pocket travel expenses. (Dkt. #35, Supp. Decl. of Bovich, Ex. A, § 2.4). Consequently, the inventors will not be substantially inconvenienced in the event they have to travel to the Northern District of California to participate in this case.

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The Court also finds no merit in DRT’s contention that previous cases filed in this district court involving the patents at-issue precludes transfer. These cases involved different parties, were assigned to different judges in this district court, and are all currently closed. See Timeline Inc. v. ProClarity Corp., C05-1013 JLR; Timeline Inc. v. Hyperion Solutions, C01-0977 MJP; Timeline Inc. v Oracle Corp., C00-1140 JCC; Timeline Inc. v. Broadbase Software, C99-1172 RSL; Timeline Inc. v. Sagent Tech. Inc., C99-414 JCC. Thus, efficiencywill not be served by retaining the case before the undersigned judge."

Another interesting aspect to this case is that it validates a strategy of filing a DJ counterclaim for invalidity in a "target venue" as opposed to filing them in the lead, "plaintiff's case."

From the order:

"Here, it is indisputable that there is a related action that is currently pending in the Northern District of California. Defendants have brought a declaratory action for nonenforceability against DRT in that district. And while DRT contends that this action was surreptitiously brought, DRT cannot deny it was a legitimate lawsuit based on the inconsistent record of assignment by Timeline. In addition, DRT’s contention that the declaratory action is irrelevant because it is identical to the counterclaims in this district is also unavailing. Counterclaims involving the same patents and products are compulsory rather than permissive. See FRCP 13(a)(1)(A); Akzona Inc. v. E.I. du Pont de Nemours & Co., 662 F.Supp. 603, 618 (D.Del. 1987) (citing 6 C. Wright & A Miller § 1410). Therefore Defendants were required to bring their counterclaims in this Court. Defendants’ strategy to bring a declaratory action in another district is a litigation tactic that the Court need not
question."