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Robocast v. Apple/Microsoft: Transfer Motion Denied Where Plaintiff’s Choice of Forum Was Given Deference and the Relative Size and Strength of the Parties Weighed Against Transfer

In two separate actions, Robocast sued Apple and Microsoft for patent infringement. Apple responded by filing a motion to transfer and Microsoft subsequently filed a similar motion to transfer. Both complaints are centered on U.S. Patent No. 7,155,451 (the “‘451 Patent”), which is directed toward an “Automated Browsing System for Publishers and Users on Networks Serving Internet and Remote Devices,” which was invented by the president of Robocast. Robocast accused AppleTV, Front Row, iTunes, Bing and Windows Vista of infringing the patent.

In analyzing the motion to transfer, the district court reviewed the statutory basis for a motion to transfer, including quoting from the private and public interest factors, which are:

The private interests have included: (1) plaintiff’s forum preference as manifested in the original choice; (2) the defendant’s preference; (3) whether the claim arose elsewhere; (4) the convenience of the parties as indicated by their relative physical and financial condition; (5) the convenience of the witnesses-but only to the extent that the witnesses may actually be unavailable for trial in one of the fora; and (6) the location of books and records (similarly limited to the extent that the files could not be produced in the alternative forum).

The public interests have included: (7) the enforceability of the judgment; (8) practical considerations that could make the trial easy, expeditious, or inexpensive; (9) the relative administrative difficulty in the two fora resulting from court congestion; (10) the local interest in deciding local controversies at home; (11) the public policies of the fora; and (12) the familiarity of the trial judge with the applicable state law in diversity cases.

See Jumara v. State Farm Ins. Co., 55 F.3d 873, 879-80 (3d Cir. 1995).

The district court found that certain factors, including plaintiff’ choice of forum and convenience of the parties favored the plaintiff, while other factors supported Apple. “In my view, interests (1) and (4) support the plaintiff’s position that the case should not be transferred. Interests (2), (5), (6), and (8) support the defendant’s request to transfer the case. Interests (3), (7), (10) and (12) do not add much to the balancing, as they are either inapplicable or marginally applicable to this case. Interest (9) is applicable but does not favor one side or the other.”

The district court particularly focused on the relative size and strength of the parties and found that this factor weighed significantly against transfer: “Apple is omnipresent in everyday life. It is a large and powerful corporation. Robocast consists of its President and two employees. (D.I. 24, ¶ 10). Its founder was at the oral argument on the present motion. Its financial condition pales in comparison to that of Apple. Ten years ago, it had twenty-two employees. (D.I. 24 ¶ 5). While Robocast’s primary enterprise today may be litigation, there is little reason to believe that its pockets are deep. (D.I. 24 ¶¶ 8, 10). “We could not even afford to file this lawsuit, except on a contingency basis.” (D.I. 24, ¶ 13). There is no reason to doubt that if this litigation turns into a war of attrition, Apple will have the upper hand. I think this factor significantly disfavors transfer.”

Accordingly, the district court ultimately found that transfer was inappropriate and gave considerable deference to plaintiff’s choice of forum. “Under Third Circuit law, considerable deference is given to the plaintiffs’ choice of forum. I think that when the plaintiff is a three-person corporation with Delaware as its long standing corporate home, and the defendant is Apple, see Intellectual Ventures I LLC v. Altera Corp., 2012 WL 297720, *3 (D.Del. Jan. 24, 2012) (multi-billion dollar companies doing business on an international scale have a greater burden to meet in seeking transfer), there ought to be a compelling reason to overcome plaintiff’s choice of forum. Apple has offered valid reasons, but I do not think Apple has shown that the balance of convenience tips strongly enough in Apple’s favor so that transfer should be ordered. I will therefore deny Apple’s motion to transfer. Consequently, I will also deny Microsoft’s motion to transfer.”

Robocast, Inc. v. Apple, Inc., Case No. 11-235-RGA (D. Del. Feb. 24, 2012)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or