Order Granting Motion to Transfer Venue, Integrated Global Concepts, Inc. v. j2 Global, Inc. & Advanced Messaging Techs., Inc., Case No. C 12-cv-3434 (Judge Ronald Whyte)
Just in time for Wimbledon, Judge Whyte has "returned service" and backhanded one of his patent cases to Southern California, where it originated and where the original District Court had developed substantial experience with the underlying technology. Judge Whyte's Order illustrates that not all "judicial experience" is alike, and that another district's experience with relevant technical and scientific issues may carry particularly heavy weight in determining whether that venue is most appropriate for a case.
The procedural history of the Integrated Global cases is complex, but it started out as just a patent case in the Central District of California. The case was transferred to Judge Pregerson, who had overseen a prior patent litigation brought by j2 under the same patent in suit against different defendants. After j2 filed its patent suit, Integrated Global (IGC) countersued for breach of contract in the Northern District of California, relying on a forum selection clause in an agreement the parties had signed.
Judge Pregerson in the Central District stayed the patent litigation suit while the parties fought their breach of contract battle in the Northern District. j2 then asserted the same patent claims it had asserted in the Central District in the Northern District case. Judge Pregerson, wishing to avoid duplicative litigation, then dismissed the Central District case.
j2 eventually won the breach of contract case pending in the Northern District. When it came time to litigate the merits of its patent litigation claims, however, j2 moved to transfer the case back to the Central District. Judge Whyte granted that request.
Judge Whyte's opinion focused on judicial economy, specifically comparing his familiarity with the technical patent issues to Judge Pregerson's. Though Judge Whyte was very familiar with the parties and the services they offered from the contract action, he determined that Judge Pregerson had more extensive familiarity with the underlying technology and had even issued Markman orders for some of the patents-in-suit. Judge Whyte concluded that Judge Pregerson's greater familiarity with the technical issues in the case would lead to significant judicial economies. Judge Whyte reached this conclusion even though Judge Pregerson had not overseen a case involving IGC as a defendant and the j2-IGC case had been stayed before IGC had even filed an answer in the Central District.
Ironically, Judge Whyte's decision means that the patent case would be sent back to Judge Pregerson, who previously dismissed it precisely because it was pending before Judge Whyte. Judge Whyte found this outcome appropriate because he concluded that Judge Pregerson's prior dismissal had rested on the (ultimately incorrect) assumption that Judge Whyte would gain substantial understanding of the technology covered by the patents-in-suit during the contract case. However, this turned out to be an incorrect assumption because Judge Whyte had stayed the patent infringement issues during the pendency of the contract action.
Judge Whyte also found that j2's initial choice of venue in the Central District was entitled to deference. IGC argued that j2's decision to file its Central District patent claims as counterclaims in the Northern District meant that j2 waived its claim to the Central District. j2 argued that it asserted its patent claims in the Northern District because it was concerned about waiving the claims. Judge Whyte appeared to accept j2's argument and concluded that the Northern District counterclaims did not change the fact that j2's desire to litigate in the Central District was entitled to "heavy weight."
In the end, familiarity with the technology took precedence over familiarity with the parties. Game, set, and patent action to Judge Pregerson.
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