Court declines to dismiss but asks for transfer briefing
Dish Network Corporation, et al. v. Tivo, Inc., Civil Action No. 08-327-JJF, March 31, 2009.
Farnan, J. Defendant’s Motion to Dismiss is denied and the parties are directed to set forth their positions in briefing on transfer pursuant to 28 U.S.C. § 1404(a) to the Eastern District of Texas.
Plaintiff was found liable of willful infringement and a permanent injunction issued against it in a previous action brought by defendant in the Eastern District of Texas. Plaintiff alleges that it redesigned its products so as not to infringe. However, defendant took the position at a status conference before the Texas District Court that the plaintiff’s new products were no different from the product already found to infringe. Plaintiff has brought this declaratory judgment action to remove the “cloud” of uncertainty regarding their redesigned products. Not persuaded by defendant’s arguments regarding forum shopping or the “chilling” of vigorous advocacy, the Court notes that although this litigation was initiated in the Eastern District of Texas, defendant is a Delaware corporation. As such, the Court cannot conclude that a plaintiff has engaged in improper forum shopping by suing a Delaware corporation in Delaware. Similarly, with regard to the possible “chilling” of vigorous advocacy, the Court agrees with plaintiff that the countervailing policy goals of encouraging patent design-arounds are just as compelling. Whether the re-designed products present more than a “colorable difference” over the infringing products is best made by Texas District Court given its experience with this case and the technology at issue. However, such considerations do not justify dismissal but rather are most appropriately considered in the context of a transfer pursuant to 28 U.S.C. § 1404(a) which the Court raises sua sponte. The parties are directed to brief the issue.
