Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 1 of 23 PageID #: 1515
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`VLSI TECHNOLOGY LLC,
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`Plaintiff,
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`V.
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`Civil Action No. 18-966-CFC
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`INTEL CORPORATION
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`Defendant. :
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`Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, Delaware;
`Morgan Chu, Ben Hattenbach, Amy E. Proctor, Dominik Slusarczyk, Charlotte J.
`Wen, IRELL & MANELLA LLP, Boston, Massachusetts
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`Counsel for Plaintiff
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`Jack B. Blumenfeld, Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
`TUNNELL LLP, Wilmington, Delaware; William F. Lee, Louis W. Tompros,
`WILJvIER, CUTLER, PICKERING, HALE AND DORR LLP, Boston,
`Massachusetts; Mark D. Selwyn, WILJvIER, CUTLER, PICKERING, HALE AND
`DORR LLP, Palo Alto, California; Amanda L. Major, WILJvIER, CUTLER,
`PICKERING, HALE AND DORR LLP, Washington, District of Columbia
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`Counsel for Defendant
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`
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`IN THE UNITED STATES DISTRICT COURT
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`FOR THE DISTRICT OF DELAWARE
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`VLSI TECHNOLOGY LLC,
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`Plaintiff,
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`V.
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`Civil Action No. 18-966-CFC
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`INTEL CORPORATION
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`Defendant. :
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`Brian E. Farnan, Michael J. Farnan, FARNAN LLP, Wilmington, Delaware;
`Morgan Chu, Ben Hattenbach, Amy E. Proctor, Dominik Slusarczyk, Charlotte J.
`Wen, IRELL & MANELLA LLP, Boston, Massachusetts
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`Counsel for Plaintiff
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`Jack B. Blumenfeld, Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT &
`TUNNELL LLP, Wilmington, Delaware; William F. Lee, Louis W. Tompros,
`WILJvIER, CUTLER, PICKERING, HALE AND DORR LLP, Boston,
`Massachusetts; Mark D. Selwyn, WILJvIER, CUTLER, PICKERING, HALE AND
`DORR LLP, Palo Alto, California; Amanda L. Major, WILJvIER, CUTLER,
`PICKERING, HALE AND DORR LLP, Washington, District of Columbia
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`Counsel for Defendant
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`
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 2 of 23 PageID #: 1516
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`MEMORANDUM OPINION
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`CONNOLLY, UNITEDSTTES
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`OCTOBER 29, 2018
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`Defendant Intel Corporation has moved pursuant to 28 U.S.C. § 1404(a) to
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`transfer this patent case to the Northern District of California. D.I. 8. For the
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`reasons discussed below, I will deny Intel's motion.
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`Both Intel and the Plaintiff, VLSI Technology, Inc., are Delaware
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`corporations. VLSI filed this action on June 28, 2018, alleging that Intel infringed
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`five patents (the "Delaware patents"). VLSI has also sued Intel in the Northern
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`District of California, alleging that Intel infringed eight other patents (the
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`"California patents"). The parties dispute whether the subject matters of the
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`Delaware patents and the California patents are the same. They also dispute the
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`extent to which discovery, evidence, and legal arguments in the two actions will
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`overlap.
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`Section 1404(a) provides that "[f]or the convenience of the parties and
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`witnesses, in the interests of justice, a district court may transfer any civil action to
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`any other district or division where it might have been brought." 28 U.S.C. §
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`1404(a). It is undisputed that this action could have been brought in the Northern
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`District of California, where Intel has its headquarters and principal place of
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 3 of 23 PageID #: 1517
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`business. Thus, the only issue before me is whether I should exercise my
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`discretion under§ 1404(a) to transfer the case to California.
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`As the movant, Intel has the burden "to establish that a balancing of proper
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`interests weigh[s] in favor of the transfer." Shutte v. Armco Steel Corp., 431 F.2d
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`22, 25 (3d Cir. 1970). This burden is heavy. "[U]nless the balance of convenience
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`of the parties is strongly in favor of [the] defendant, the plaintiff's choice of forum
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`should prevail." Id. (emphasis in original) (internal quotation marks and citation
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`omitted).
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`The proper interests to be weighed in deciding whether to transfer a case
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`under§ 1404(a) are not limited to the three factors recited in the statute (i.e., the
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`convenience of the parties, the convenience of the witnesses, and the interests of
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`justice). Jumara v. State Farm Ins. Co., 55 F.3d 873, 879 (3d Cir. 1995).
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`Although there is "no definitive formula or list of the factors to consider" in a
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`transfer analysis, the court in Jumara identified 12 interests "protected by the
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`language of§ 1404(a)." Id. Six of those interests are private:
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`[ 1] plaintiffs 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).
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`2
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 4 of 23 PageID #: 1518
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`Id. ( citations omitted). The other six interests are public in nature:
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`[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.
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`Id. at 879-80 ( citations omitted). As the parties have not identified relevant factors
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`beyond these 12 interests, I will balance the Jumara factors in deciding whether to
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`exercise the discretion afforded me by§ 1404(a).
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`I.
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`PLAINTIFF'S FORUM PREFERENCE
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`This factor clearly weighs against transfer. The parties agree on that much.
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`They disagree, however, about the amount of weight I should give this factor in
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`conducting the balancing of interests called for by Jumara. Intel argues that
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`VLSI's forum choice "deserves little weight," D.I. 9 at 11; VLSI contends that I
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`should give its forum choice "paramount consideration." D.I. 23 at 3.
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`In Shutte, the Third Circuit held that "[i]t is black letter law that a plaintiff's
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`choice of a proper forum is a paramount consideration in any determination of a
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`transfer request" brought pursuant to § 1404( a), and that this choice "should not be
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`lightly disturbed." 431 F .2d at 25 (internal quotation marks and citation omitted).
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`The parties have not cited and I am not aware of any Third Circuit or United States
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`Supreme Court case that overruled Shutte. Jumara cited Shutte favorably and
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`3
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 5 of 23 PageID #: 1519
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`reiterated Shutte's admonition that "the plaintiffs choice of venue should not be
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`lightly disturbed." Jumara, 55 F.3d at 879 (internal quotation marks and citation
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`omitted). Thus, I agree with VLSI that binding Third Circuit law compels me to
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`treat its forum choice as "a paramount consideration" in the § 1404( a) balancing
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`analysis.
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`Intel, however, asks me to ignore Shutte's unambiguous language (and
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`Jumara's endorsement of Shutte), and instead give VLSI's forum choice "little
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`weight" because (1) VLSI allegedly had an "improper forum shopping motive" in
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`filing suit in this district; (2) VLSI has no facilities, operations, or employees in
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`Delaware; and (3) the facts underlying the parties' dispute did not occur in
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`Delaware. D.I. 9 at 11-13.
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`A.
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`Improper Forum Shopping Motive
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`Intel cites a line of cases in which district court and magistrate judges in the
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`Third Circuit looked to "the reasons behind" a plaintiffs forum choice and gave
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`reduced or even no weight to a plaintiffs forum selection if the plaintiff had an
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`"improper forum shopping motive." See D.I. 9 at 11-12 (citations omitted). I find,
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`however, that these cases are not consistent with Shutte, Jumara, or Supreme Court
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`precedent.
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`Neither Shutte nor Jumara hold or even intimate that a plaintiffs motive in
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`selecting its forum choice is relevant for§ 1404(a) purposes. Putting aside the
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`4
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 6 of 23 PageID #: 1520
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`practical difficulty of accurately discerning a plaintiff's motives, to my knowledge
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`the Third Circuit has not held, and I do not believe, that a plaintiff's motive in
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`selecting a forum is relevant to the transfer inquiry.
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`The availability of multiple lawful venues is a fundamental feature of our
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`federal system that invites competent counsel to advise their clients to select the
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`litigation forum that best aligns with the clients' interests. When choosing among
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`available venues, plaintiffs understandably-and legitimately-weigh a host of
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`considerations, including, for example, the laws that would apply in the competing
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`venues, the relative speed with which the venues move cases, the manner in which
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`the venues handle discovery disputes, the scope of discovery allowed by the
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`venues, and the plaintiffs' assessments of the venues' judges and the likelihood
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`those judges would rule in the plaintiffs' favor. Every sophisticated plaintiff that
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`can bring a lawsuit in multiple venues engages in forum shopping when it chooses
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`a particular venue. The Court's concern is whether the venue choice is permitted
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`by statute, not what motivated the plaintiff to select the venue.
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`The principle that a plaintiff can lawfully engage in forum shopping is
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`sufficiently fundamental to our federal system that the Supreme Court has called
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`the plaintiff's choice of forum a "venue privilege." See At/. Marine Cons tr. Co. v.
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`U.S. Dist. Court/or the W. Dist. o/Texas, 571 U.S. 49, 63 (2013) ("Because
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`plaintiffs are ordinarily allowed to select whatever forum they consider most
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`5
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 7 of 23 PageID #: 1521
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`advantageous ( consistent with jurisdictional and venue limitations), we have
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`termed their selection the 'plaintiffs venue privilege."'). And twice in the context
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`of a § 1404( a) transfer motion, the Court has recognized the legitimacy of forum
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`shopping by a plaintiff.
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`In Van Dusen v. Barrack, 376 U.S. 612 (1964), the Court held that ~hen a
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`diversity suit is transferred under § 1404( a) at the request of the defendant, the
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`transferee court is required to follow the choice-of-state-law rules that would have
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`existed in the transferor court. Id. at 639. The Court reasoned that§ 1404(a)
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`should not deprive the plaintiff of state-law advantages it would have enjoyed in
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`the transferor court. Id. at 633-34. The Court explained that "[section] 1404(a)
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`was not designed to narrow the plaintiffs venue privilege ... but rather the
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`provision was simply to counteract the inconveniences that flowed from the venue
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`statutes by permitting transfer to a convenient federal court." Id. at 635.
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`InFerens v. John Deere Co., 494 U.S. 516 (1990), the Court extended Van
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`Dusen's holding to§ 1404(a) transfers made at a plaintiffs request. Id. at 519.
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`Ferens, who had been injured in a Pennsylvania farm accident, failed to file a tort
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`action in Pennsylvania within the applicable two-year statute of limitations. Id In
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`the third year after the accident, Ferens and his wife filed a diversity contract case
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`against John Deere in the Western District of Pennsylvania and then filed a second
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`diversity tort action against John Deere in the Southern District of Mississippi,
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`6
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 8 of 23 PageID #: 1522
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`where, under Mississippi choice-of law rules, a six-year statute of limitations
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`applied. Id. at 519-20. At this point, to use the Supreme Court's words, "the
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`Ferenses took their forum shopping a step further," as they requested and obtained
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`a § 1404( a) transfer of the Mississippi action to the Western District of
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`Pennsylvania. Id. at 520. The Pennsylvania district court consolidated the actions
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`but held that because the Ferenses had moved for the transfer as plaintiffs, the Van
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`Dusen rule did not apply and therefore Pennsylvania's two-year statute of
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`limitations barred the Ferenses' tort claims. Id. at 520-21. The Third Circuit
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`affirmed the district court's holding. Id. at 521.
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`In reversing the Third Circuit's decision, the Supreme Court explained in
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`relevant part:
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`The text of§ 1404(a) may not say anything about choice
`of law, but we think it not the purpose of the section to
`protect a party's ability to use inconvenience as a shield
`to discourage or hinder litigation otherwise proper. The
`section exists to eliminate inconvenience without altering
`permissible choices under the venue statutes.
`* * * *
`[E]ven without § 1404( a), a plaintiff already has
`the option of shopping for a forum with the most
`favorable law. The Ferenses, for example, had an
`opportunity for forum shopping in the state courts
`because both the Mississippi and Pennsylvania courts had
`jurisdiction and because they each would have applied a
`different statute of limitations. Diversity jurisdiction did
`not limit these forum shopping opportunities; instead,
`under Erie [Railroad Co. v. Tompkins, 304 U.S. 64
`(1938)], the federal courts had to replicate them.
`Applying the transferor law would not give a plaintiff an
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`7
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 9 of 23 PageID #: 1523
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`opportunity to use a transfer to obtain a law that he could
`not obtain through his initial forum selection. If it does
`make selection of the most favorable law more
`convenient, it does no more than recognize a forum
`shopping choice that already exists. This fact does not
`require us to apply the transferee law. Section 1404(a),
`to reiterate, exists to make venue convenient and should
`not allow the defendant to use inconvenience to
`discourage plaintiffs from exercising the opportunities
`[ for forum shopping] that they already have.
`****
`The desire to take a punitive view of the plaintiffs
`actions should not obscure the systemic costs of litigating
`in an inconvenient place.
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`****
`Our rule may seem too generous because it allows
`the Ferenses to have both their choice of law and their
`choice of forum, or even to reward the F erenses for
`conduct that seems manipulative. We nonetheless see no
`alternative rule that would produce a more acceptable
`result.
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`Id. at 525-31. This quoted language makes clear to me that a plaintiffs motives
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`behind their forum selection, even if they are "manipulative," are irrelevant for §
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`1404( a) purposes.
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`In this case, it appears undisputed that Delaware is a proper forum for this
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`action. See 28 U.S.C. 1400(b) ("Any civil action for patent infringement may be
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`brought in the judicial district where the defendant resides, or where the defendant
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`has committed acts of infringement and has a regular and established place of
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`business."). Intel has not filed a motion to dismiss under Rule 12(b)(3) for
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`improper venue and, since Intel is a Delaware company, the Supreme Court's
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`8
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 10 of 23 PageID #: 1524
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`decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514
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`(2017) would foreclose any argument that venue does not lie in this District. See
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`id. at 1521 (holding that under§ 1400(b) a domestic corporation "resides" only in
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`its state of incorporation). Accordingly, I will not look to the reasons behind
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`VLSI's selection of Delaware as a forum; nor will I give less weight to VLSI's
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`forum choice on the grounds that it had improper forum shopping motives.
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`B. Lack of Delaware Connections
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`Intel also cites in support of its position certain opinions issued by district
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`court and magistrate judges in the Third Circuit that appear to assign less weight to
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`a plaintiffs forum choice when the forum is not the plaintiffs "home turf'-that
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`is, if the plaintiff has limited or no facilities, operations, or employees in the
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`forum-and/or when the facts giving rising to the lawsuit did not occur in the
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`plaintiffs selected forum. See D.I. 9 at 11-13; D.I. 29 at 2-3. I am not, however,
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`persuaded that these opinions are consistent with Shutte. I will instead follow
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`Judge Stapleton's lead in Burroughs Wellcome Co. v. Giant Food, Inc., 392 F.
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`Supp. 761 (D. Del. 1975).
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`Like Judge Stapleton, I read Shutte 's "statement of 'black letter law' as an
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`across-the-board rule favoring plaintiffs choice of forum." Id. at 763. As Judge
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`Stapleton explained in rejecting the "home-turf' rule argued by the defendant in
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`9
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 11 of 23 PageID #: 1525
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`Burroughs:
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`The court's decision in Shutte to give weight to the
`plaintiff's choice of forum is not an application of any of
`the criteria recited in[§ 1404(a)]. Assuming jurisdiction
`and proper venue, weight is given to plaintiff's choice
`because it is plaintiff's choice and a strong showing under
`the statutory criteria in favor of another forum is then
`required as a prerequisite to transfer. One can perhaps
`debate whether plaintiff's choice should be given any
`weight at all in a transfer context, but assuming it is to be
`given some weight in cases where the plaintiff lives in the
`forum state, it is difficult to see why it should not also be
`given weight when the plaintiff lives in [another] state ....
`[The] plaintiff's contact or lack thereof with the forum
`district will ordinarily be reflected in the 'balance' of
`conveniences, but that contact, per se, is unrelated to
`anything in Shutte, or Section 1404(a).
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`Id. at 763 n.4.
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`I, too, find it difficult to understand why the plaintiff's forum choice in and
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`of itself merits less weight when the plaintiff has no ties to the selected forum or
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`when the facts underlying the controversy occurred elsewhere. I do not mean to
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`suggest that these two latter considerations will not impact the overall transfer
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`analysis. On the contrary, because these considerations are subsumed and given
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`weight under Jumara factors 3 ( whether the claim arose elsewhere), 4
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`( convenience of the parties), 5 ( convenience of the witnesses), 6 (location of books
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`and records), 8 (practical considerations that could make the trial easy, expeditious,
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`or inexpensive), and 10 (the local interest in deciding local controversies at home),
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`a defendant seeking to transfer a case when neither the plaintiff nor the facts giving
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`10
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 12 of 23 PageID #: 1526
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`rise to the case have any connection to the selected forum will generally have less
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`difficulty in meeting its burden to establish that the Jumara factors weigh strongly
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`in favor of transfer.
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`I do not believe that the Federal Circuit's opinion in In re Link_ A_ Media
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`Devices Corp., 662 F .3 d 1221 (Fed. Cir. 2011 ), also cited by Intel, compels a
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`different conclusion. In Link_A_Media, the Federal Circuit vacated this court's
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`denial of a § 1404( a) motion to transfer a patent case filed here by a non-United
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`States company. Id. at 1222. The Federal Circuit held that this court committed a
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`"fundamental error [in] making [the plaintiffs] choice of forum and the fact of [the
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`defendant's] incorporation in Delaware effectively dispositive of the transfer
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`inquiry." Id. at 1223. Although the Federal Circuit did not cite Shutte in
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`Link_A_Media, it applied Third Circuit law and noted that "[t]o be sure, the Third
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`Circuit places significance on a plaintiffs choice of forum." Id.
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`In dicta in Link_ A _Media, the court noted that "[ w ]hen a plaintiff brings its
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`charges in a venue that is not its home forum, ... that choice of forum is entitled to
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`less deference." Id. I understand this statement, however, to apply only when the
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`plaintiff, like the plaintiff in Link_ A _Media, is a non-United States company. I
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`draw this inference because the court cited in support of its statement two Supreme
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`Court decisions, Sinochem International Co. v. Malaysia International Shipping
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`Corp., 549 U.S. 422 (2007) and Piper Aircraft Co. v. Reyno, 454 U.S. 235 (1981),
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`11
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 13 of 23 PageID #: 1527
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`neither of which involved transfer motions brought pursuant to§ 1404(a). Rather,
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`in both Sinochem and Piper Aircraft, the Supreme Court reviewed dismissals of
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`actions filed by non-United States plaintiffs based on the common-law forum non
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`conveniens doctrine. As the Court explained in Piper Aircraft, "1404(a) transfers
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`are different than dismissals on the ground of forum non conveniens." 454 U.S. at
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`253. Unlike§ 1404(a), "[t]he common-law doctrine of forum non conveniens has
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`continuing application [in federal courts] only in cases where the alternative forum
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`is abroad, and perhaps in rare instances where a state or territorial court serves
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`litigational convenience best." Sinochem, 549 U.S. at 430 (second alteration in
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`original) (internal quotation marks and citation omitted). The doctrine "is designed
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`in part to help courts avoid conducting complex exercises in comparative law" and
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`thus enables a district court to dismiss the case where it would be otherwise
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`"required to untangle problems in conflict of laws, and in law foreign to itself."
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`Piper Aircraft, 454 U.S. at 251 (internal quotation marks and citation omitted).
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`Because these concerns about foreign law and comparative law issues are not
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`implicated by a § 1404( a) transfer motion in a patent case filed by a domestic
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`plaintiff, I understand Link_ A_ Media to say that a plaintiffs forum choice in a
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`patent case merits "less deference" for§ 1404(a) purposes only if the plaintiff does
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`not reside in the United States.
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`12
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 14 of 23 PageID #: 1528
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`In this case, VLSI is a domestic company (indeed, it is a Delaware
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`company), and therefore I will follow Shutte and give VLSI' s forum choice
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`paramount consideration in balancing the Jumara factors.
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`II.
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`DEFENDANT'S FORUM PREFERENCE
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`This factor favors transfer.
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`III. WHETHER THE CLAIM AROSE ELSEWHERE
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`This factor bears only slightly on the transfer analysis. On one hand, it
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`appears that research and development efforts associated with Intel products
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`accused of infringing both the Delaware patents and the California patents
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`occurred in the Northern District of California. The connection between those
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`efforts and the Northern District favors transfer. See In re Hoffmann-La Roche,
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`Inc., 587 F.3d 1333, 1338 (Fed. Cir. 2009). On the other hand, some of the
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`research and development activities relevant to this action occurred outside of the
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`Northern District, including in the Eastern District of California, Oregon, and
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`Israel. Moreover, patent claims arise wherever the allegedly-infringing products
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`are sold, Treehouse Avatar LLC v. Valve Corp., 170 F. Supp. 3d 706, 710 (D. Del.
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`2016) (first citing 35 U.S.C. § 271(a); then citing Red Wing Shoe Co., Inc. v.
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`Hockerson-Halberstadt, Inc., 148 F.3d 1355, 1360 (Fed. Cir. 1998)), and Intel
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`acknowledged at oral argument that the accused products in this case are marketed
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`13
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 15 of 23 PageID #: 1529
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`and sold in Delaware. Overall, this factor weighs in favor of transfer, but only
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`slightly.
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`IV. THE CONVENIENCE OF THE PARTIES AS INDICATED BY THEIR
`RELATIVE PHYSICAL AND FINANCIAL CONDITION
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`This factor is effectively neutral. Intel's size, financial resources, and status
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`as a Delaware corporation negate its assertion that it is inconvenienced by having
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`to litigate in Delaware. As a Delaware corporation with global operations, Intel
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`can demonstrate "inconvenience" for § 1404( a) purposes only if it "prove[ s] that
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`litigating in Delaware would pose a unique or unusual burden on [its] operations."
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`Graphics Props. Holdings Inc. v. Asus Computer Int'/, Inc., 964 F. Supp. 2d 320,
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`325 (D. Del. 2013) (second alteration in original) (internal quotation marks and
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`citation omitted); see also ADE Corp. v. KLA-Tencor Corp., 138 F. Supp. 2d 565,
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`573 (D. Del. 2001) ("[A]bsent some showing of a unique or unexpected burden, a
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`company should not be successful in arguing that litigation in its state of
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`incorporation is inconvenient."). Intel has not identified any significant
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`inconvenience-let alone a unique or unusual burden-that it would encounter as a
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`party in this Court. Intel is a multi-billion-dollar company with more than 100,000
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`employees located in dozens of countries. It chose to incorporate in Delaware and,
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`in a prior motion to transfer a patent case to this District, said that its status as a
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`Delaware corporation gave it "substantial connections to Delaware." D.I. 25, Ex.
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`14
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`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 16 of 23 PageID #: 1530
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`22 at 7-8. I find therefore that Intel would not be inconvenienced by keeping this
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`action in Delaware.
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`As the Northern District of California and this District appear equally
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`convenient for VLSI, who chose to file suits in both fora, and Delaware is not an
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`inconvenient forum for Intel, the convenience of the parties is a neutral factor for §
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`1404( a) purposes.
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`V.
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`THE CONVENIENCE OF THE WITNESSES
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`This factor carries weight "only to the extent that the witnesses may actually
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`be unavailable for trial in one of the fora." Jumara, 55 F.3d at 879; see also Smart
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`Audio Techs., LLC v. Apple, Inc., 910 F. Supp. 2d 718, 732 (D. Del. 2012) (noting
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`that this factor applies only insofar as "a witness actually will refuse to testify
`
`absent a subpoena"). In addition, "witnesses who are employed by a party carry no
`
`weight," because "each party is able, indeed, obligated to procure the attendance of
`
`its own employees for trial." Affymetrix, Inc. v. Synteni, Inc., 28 F. Supp. 2d 192,
`
`203 (D. Del. 1998). Intel says that its relevant witnesses are in the Northern and
`
`Eastern Districts of California, Oregon, and Israel and that none are in Delaware.
`
`But Intel does not identify with particularity any potential witness outside its
`
`employ who would not be available for trial in Delaware. Because there is no
`
`record evidence that demonstrates that necessary witnesses will refuse to appear in
`
`15
`
`
`
`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 17 of 23 PageID #: 1531
`
`Delaware for trial without a subpoena, the convenience of the witnesses factor is
`
`neutral.
`
`VI. THE LOCATION OF BOOKS AND RECORDS
`
`Jumara instructs me to give weight to the location of books and records only
`
`"to the extent that the files [ and other documentary evidence] could not be
`
`produced in the alternative forum." 55 F.3d at 879. In this case, Intel has not
`
`identified any evidence that could not be produced in Delaware; nor has it shown
`
`that the documentary evidence relevant to this action is found exclusively or even
`
`primarily in the Northern District of California. For its part, VLSI has promised
`
`( and the Court will hold VLSI to its word) that it will make all its documents
`
`available to Intel in Delaware "at little cost." D.I. 23 at 9.
`
`The only evidence that Intel discusses with particularity is the source code it
`
`houses in Los Angeles for production in the California action. Intel says that it
`
`expects to produce a "substantial volume" of that source code in this action. D.I. 9
`
`at 7. VLSI, however, has agreed to the production of source code in this case on
`
`the Los Angeles computers, D.I. 23 at 9; and Los Angeles is located in the Central,
`
`not the Northern, District of California. Thus, the location of the source code
`
`carries little weight.
`
`Overall, because no records have been identified as only being available in
`
`either the Northern District of California or Delaware, this factor is neutral. See
`
`16
`
`
`
`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 18 of 23 PageID #: 1532
`
`Signal Tech, LLC v. Analog Devices, Inc., 2012 WL 1134723, at *3 (D. Del. Apr.
`
`3, 2012).
`
`VII. ENFORCEABILITY OF THE JUDGMENT
`
`The parties agree that this factor is neutral, as judgments from this District
`
`and the Northern District of California would be equally enforceable.
`
`VIII. PRACTICAL CONSIDERATIONS
`
`Jumara instructs me to give weight to "practical considerations that could
`
`make the trial easy, expeditious, or inexpensive." 55 F.3d at 879. This factor
`
`weighs slightly against transfer.
`
`Intel argues that because of the overlap of the patents' subject matters,
`
`technology, witnesses, accused products, and evidence in the two actions, if this
`
`action were transferred, it "likely would be deemed related to the California Action
`
`and the currently-assigned judge would preside over both cases." D.I. 9 at 19.
`
`Thus, according to Intel, a transfer "would make coordination and/or consolidation
`
`before the same judge possible" and "allow for a single Markman process, a single
`
`technology tutorial, a single summary judgment and Daubert hearing, and
`
`ultimately a single trial." D.I. 9 at 17. Intel contends that consolidation would
`
`save not only judicial resources but also travel costs for witnesses who would only
`
`have to testify at one trial.
`
`17
`
`
`
`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 19 of 23 PageID #: 1533
`
`VLSI paints a very different picture. It notes-and Intel does not dispute(cid:173)
`
`that the California patents do not share inventors, claims, disputed claim terms,
`
`patent families, prosecution histories, or specifications with any of the Delaware
`
`patents. VLSI also argues that the California and Delaware patents implicate
`
`different technologies, that Intel's claims with respect to documentary overlap are
`
`overstated, and that only one of the seven witnesses identified by Intel as
`
`overlapping resides in the Northern District of California. VLSI further contends
`
`that because of the scope, complexity, and procedural posture of the California
`
`action, a transfer would add complexity, cost, and delay to the resolution of this
`
`action.
`
`I find that Intel has overstated the degree to which this action overlaps with
`
`the California action. My reasoning is threefold. First, it is undisputed that none
`
`of the California patents share inventors, claims, disputed claim terms, patent
`
`families, prosecution histories, or specifications. Second, Intel identifies only six
`
`of the 13 patents-in-suits-three of the California patents and three of the
`
`Delaware patents-as having the same subject matter (power management in
`
`integrated circuits and low voltage memory devices). Third, Intel's previous
`
`assertions before Judge Freeman in the Northern District of California about the
`
`California action and California patents effectively negate its assertions before me
`
`18
`
`
`
`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 20 of 23 PageID #: 1534
`
`that the Delaware and California patents substantially overlap. In particular, Intel's
`
`counsel, who also represents Intel in this action, told Judge Freeman:
`
`We see this [the California action] as a very wide(cid:173)
`ranging ... and [an] extraordinarily technically
`complex case.
`
`****
`... These are eight unrelated patents ... that
`deal with a variety of different technologies.
`[VLSI's counsel] is right. They [the patents] do
`all address aspects of Intel's products, but that is
`really the only relationship [among the patents].
`So, for example, one [patent] deals with the
`particular height of a thing called a fin that's way down
`in the bottom of a chip. Another one deals with how you
`attach two chips together. Another one deals with
`memory and how you would architect the memory
`(indiscernible) power savings. And another one deals
`with how to pick between two different speeds of
`processors.
`So it's a lot of different technology.
`****
`And this -- this is what is causing us to push for
`simplification. We agree that we need to streamline the
`case in some meaningful way for sure, but it is, from
`our perspective, a very challenging [case] to
`streamline.
`It is true Intel knows its products best. As we read
`the complaint, there are at least 52 product families
`implicated, each of which has many, many different
`flavors of product, probably as many as a thousand
`different products. I can't promise that it's more than a
`thousand. It's more than several hundred different
`products involved.
`So we would love to deal with representative[]
`[products] .... And the problem is it's going to be
`different types of products for different cases -- for
`different patents, because the patents themselves are so
`different.
`
`19
`
`
`
`Case 1:18-cv-00966-CFC Document 38 Filed 10/29/18 Page 21 of 23 PageID #: 1535
`
`D.I. 25, Ex. 8, at 4:11-5:25 (emphasis added). If the California patents are as
`
`different from and unrelated to each other as Intel argued in the California action, I
`
`fail to see how those same patents as a group could substantially overlap with and
`
`be related to the five Delaware patents.
`
`Intel's assertions before Judge Freeman about the California action and the
`
`California patents also lead me to conclude that it is unlikely that the two actions
`
`would be consolidated and result in a single trial if I transferred this case to the
`
`Northern District. The procedural posture of the California action reinforces that
`
`conclusion. The parties have
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