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Carnegie Mellon University v. Marvell Technology Group

September 21, 2009


The opinion of the court was delivered by: Nora Barry Fischer United States District Judge



A. Factual Background

This is a patent infringement action in which Plaintiff Carnegie Mellon University ("CMU"), a Pennsylvania not-for-profit educational institution, alleges that Defendants Marvell Semiconductor, Inc. ("MSI"), a California corporation, and Marvell Technology Group, Ltd. (MTGL), a Bermuda corporation, (collectively "Marvell") have infringed two of its patents: Patent No. 6,201,839 ("the '839 patent") and Patent No. 6,438,180 ("the '180 patent"). MSI is an indirect subsidiary of MTGL. The patented inventions were developed at CMU's Data Storage Systems Center ("DSSC") and cover systems and methods to increase the accuracy with which hard disk drive circuits read the data on magnetic disks (Docket no. 33 at 5).

B. Procedural Background

Plaintiff CMU filed a Complaint in this matter on March 6, 2009 (Docket No. 1), alleging infringement of the two patents. Defendants Marvell filed an Answer on June 1, 2009 (Docket No. 13), denying infringement, raising the affirmative defenses of non-infringement, invalidity, laches, and damages and relief limitations. Defendants Marvell simultaneously filed counterclaims seeking declaratory judgments of non-infringement and invalidity for both patents (Docket No. 13). On June 19, 2009, Plaintiff filed its Answer with affirmative defenses to the counterclaims (Docket No. 20), stating that they failed to state a claim upon which relief could be granted, that the patents are valid and enforceable, and that the counterclaims were barred by estoppel, waiver, laches, and/or unclean hands. On July 7, 2009, Defendants filed a Motion to Transfer the case to the Northern District of California and a supporting brief (Docket No. 25, 26). On July 17, 2009, Plaintiff filed a Brief in Opposition to Defendants' Motion to Transfer (Docket No. 33), and on July 22, 2009 Defendants filed a Reply Brief (Docket No. 36). After a case management conference on July 23, 2009 (Docket No. 37), this Court issued an agreed-upon Scheduling Order (Docket No. 38). The Court heard oral arguments on the Motion to Transfer on August 27, 2009 and took the motion under advisement (Docket No. 45).

For the reasons outlined herein, Defendants' Motion to Transfer Venue to the Northern District of California. (Docket No. 25) is DENIED.


Pursuant to 28 U.S.C.§ 1404(a), a district court may transfer a civil case to another district "[f]or the convenience of the parties and witnesses, in the interest of justice." 28 U.S.C. § 1404(a). Such transfers "are discretionary determinations made for the convenience of the parties and presuppose that the court has jurisdiction and that the case has been brought in the correct forum." Lafferty v. Gito St. Riel, 495 F.3d 72, 76, 79 n.8 (3d Cir. 2007). The parties agree that this Court has jurisdiction and that venue would be proper in the Northern District of California. (Docket No. 26 at 13; Docket No. 33 at 12).

Upon a determination that another forum would have also been proper, the moving party bears the burden of showing the need for transfer. See Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995). The moving party must show that "on balance the litigation would more conveniently proceed and the interests of justice be better served by transfer to a different forum." Jumara, 55 F.3d at 879 (internal quotations omitted). The United States Court of Appeals for the Third Circuit has outlined the private and public factors for the Court to consider in exercising its discretion. Id. The relevant private factors to consider include (1) each party's forum preference; (2) where the claim arose; (3) the convenience of the parties as indicated by their relative physical and financial conditions; (4) the convenience of the witnesses; and (5) the locations of books and records. Jumara, 55 F.3d at 879; see also In re Amendt, 169 Fed. Appx. 93, 96 (3d Cir. 2006)(same). The Court also considers a number of public factors, including (1) enforceability of judgment; (2) practical considerations that could make the trial easy, expeditious or inexpensive; (3) the relative administrative difficulty in the two fora resulting from court congestion; (4) the local interest in deciding local controversies at home; (5) the public policies of the fora; and (6) the familiarity of the trial judge with the applicable state law in diversity cases. Jumara, 55 F.3d at 879; see also In re Amendt, 169 Fed. Appx. At 96 (same).


"Section 1404(a) is intended to place discretion in the district court to adjudicate motions for transfer according to an 'individualized, case-by-case consideration of convenience and fairness.' . . . A motion to transfer under § 1404(a) thus calls on the district court to weigh in the balance a number of case-specific factors." Stewart Org. Inc. v. Ricoh Corp., 487 U.S. 22, 29 (1988) (citations omitted). "The above list of factors is merely a guide, and not all the factors may be relevant or determinative in each case." LG Electronics, Inc. v. First Intern. Computer, Inc., 138 F. Supp. 2d 574, 587 (D. N.J., 2001). "Depending on the nature and facts of the case, these factors often overlap and are intertwined" so courts are rightly careful to avoid "double-counting" the same information under multiple factors. Gonzales v. Supervalu Transport, Inc., 2008 WL 943018, 1 (E.D .Pa.) (E.D.Pa., 2008); See also Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp.2d 192 (D. Del.,1998); Terra Intern., Inc. v. Mississippi Chemical Corp.,922 F. Supp. 1334, 1358 n.18 (N.D.Iowa,1996).

A. Relevant Private Factors

1. The Parties' Choice ...

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