Consolidated cases are transferred to California
Teleconference Systems v. Proctor and Gamble Pharmaceuticals, Inc., Civil No. 09-200-JBS/JS, November 25, 2009.
Schneider, M. J. Cisco's request to stay the Cisco action until its California declaratory judgment action is concluded is denied. Furthermore, Cisco and H-P’s requests to stay and sever plaintiff's customer claims and only transfer plaintiff's claims against Cisco and H-P to California are denied. Except as to the individual defendant, Cisco and H-P’s request to transfer the entirety of these actions to California is granted. Plaintiff's claim against the individual defendant will be severed and stayed and will remain in Delaware.
These lawsuits concern the TelePresence product or system. The Delaware complaint was filed on March 27, 2009, against eight of Cisco’s customers (the “Cisco Action”). Thereafter, Cisco filed an action in the Northern District of California seeking a declaratory judgment of non-infringement naming plaintiff and the owner of the patent-in-suit (the “California Action”). The Delaware Complaint was amended to add Cisco as a defendant after Cisco moved to intervene and to stay the Cisco Action. Cisco moved to transfer to the Northern District of California. An additional action against Hewlett-Packard (“H-P”) and its customers was filed alleging infringement of the patent-in-suit and the cases were consolidated. Cisco argues that the Delaware action should be stayed until the declaratory judgment action in California is decided. Cisco’s arguments that: (1) the first-filed action is a customer suit and the second filed action involves the manufacturer and (2) the California declaratory judgment suit will streamline and possibly moot the Delaware proceeding are rejected. The customer exception does not apply here because plaintiff alleges that Cisco's customers are not mere resellers but are direct infringers. In addition, Cisco was not prevented from bringing a claim here. Moreover, while a first-filed suit can be stayed if it would resolve all charges against the customers in the stayed suit, Cisco's California declaratory judgment action will not resolve all issues. Thus the motion to stay is denied.
Cisco’s motions that the Court should transfer the action to California and sever and stay plaintiff's claim against individual defendant (over whom California does not have personal jurisdiction) are granted. Due to the parties' significant contacts with California and minimal contacts with Delaware, the Court finds that California is more convenient for the parties and witnesses. Cisco is incorporated and has its principal place of business in California. Its California employees are most likely to have relevant information. In addition, plaintiff and its key witnesses have significant contacts with California. The fact that plaintiff has not identified a single material witness who resides in Delaware rather than California is telling and weighs in favor of transfer. The ability of potential witnesses to be subject to compulsory process is also a factor that weighs heavily in the “balance of convenience” analysis. Plaintiff’s argument that Delaware is not inconvenient since Cisco and several of its customers filed patent infringement lawsuits in Delaware holds no weight since plaintiff provided no meaningful details regarding the referenced Delaware lawsuits. Cisco and Hewlett Packard’s request to stay the customer claims pending resolution of the California action are rejected as the Court finds that the interests of justice and judicial economy are furthered by the complete transfer of this action to California, except as to the individual defendant, rather than a piecemeal transfer.
