Transfer motion is denied despite pending related action where defendants are Delaware corporations
Mallinckrodt Inc. and Liebel-Flarsheim Co. v. E-Z-EM Inc. and Acist Medical Systems, Inc., C.A. No. 09-228-JJF, November 20, 2009.
Farnan, J. Defendants’ Motion To Dismiss For Failure To State A Claim Under Rule 12(b)(6) is granted as to the indirect infringement claims, but denied as to the direct infringement claim. Plaintiffs will be given leave to amend. Defendants’ Motion to Transfer is denied.
The patent-in-suit relates to remotely powered magnetic resonance (“MR”) injectors. All four parties are incorporated in Delaware. The parties are also involved in an ongoing infringement suit brought by plaintiff in Texas involving a different patent. The accused devices in the Texas action injector systems used in connection with computerized tomography (“CT”) procedures, as well as the EmpowerMR injector system. Discovery has begun in the Texas Action and case is set for trial in June 2010. Defendants contend this action should be dismissed for failure to state a claim for a patent infringement claim. The Court finds as to the direct infringement claims that the allegations are sufficient to put Defendants on notice. However, the Court concludes that plaintiffs have failed to properly state indirect infringement claims in light of plaintiffs’ failure to allege the requisite intent and knowledge needed to state a claim for inducing infringement. Plaintiff’s contributory infringement claim must also fail since requisite knowledge of the patent-in-suit was not alleged.
Transfer to the Eastern District of Texas is not warranted. First, the private interest factors mitigate against transfer to the Eastern District of Texas. Although Delaware is not its “home turf,” plaintiffs’ decision to litigate in Delaware is still accorded significant deference because Plaintiffs' choice of Delaware as a forum relates to their legitimate, rational concerns as Delaware corporations. The remaining private interest factors either weigh against transfer, or are neutral. The present action and the Texas Action indisputably involve the same parties. The two patents share two of the same inventors, but they are not part of the same patent family and the applications were filed years apart. EmpowerMR, the accused device in the present action, is also one of several accused devices in the Texas Action. However, the extent to which the cases involve a common field of prior art and/or similar technologies is unclear. Accordingly, the Court is not persuaded that the present action is so related to the Texas Action that a transfer is required in the interests of justice.
