United States District Court, N.D. California
ORDER RE MOTION TO DISMISS AND MOTION TO TRANSFER OR,
IN THE ALTERNATIVE, STAY
WILLIAM ALSUP UNITED STATES DISTRICT JUDGE
patent infringement action, six of seven defendants move to
transfer this action to the District of Delaware, or in the
alternative to stay the action. The remaining defendant moves
to dismiss for lack of personal jurisdiction. For the reasons
stated below, the motion to dismiss is Held in abeyance
pending jurisdictional discovery. The motion to transfer or
stay is Denied, reserving on a final determination until
jurisdictional discovery is completed.
Illumina, Inc., and Illumina Cambridge Ltd. (collectively
“Illumina”), supply DNA sequencing equipment.
Illumina Cambridge, a wholly-owned subsidiary of Illumina,
Inc., owns U.S. Patent No. 7, 566, 537. Illumina, Inc., is
the exclusive licensee of the ’537 patent with the
right to sue to enforce its exclusivity (Compl. ¶¶
2012, defendant Intelligent Bio-Systems, Inc., and non-party
the Trustees of Columbia University in the City of New York
sued Illumina in the District of Delaware for infringement of
several patents relating to technology called
“sequencing by synthesis.” In its answer to the
complaint in the Delaware action, Illumina asserted
counterclaims against Intelligent Bio-Systems for
infringement of the ’537 patent. After Qiagen N.V., a
defendant herein, became the ultimate parent of Intelligent
Bio-Systems, Illumina added it as a new party in the Delaware
action and asserted counterclaims against it.
Illumina’s counterclaims against both parties related
to Intelligent Bio-Systems’s use of a chemical group
known as a “protecting group” on a nucleotide
during a DNA sequencing process in its MAX-Seq and MINI-20
DNA sequencing equipment, each of which sold only one unit.
Qiagen N.V. moved to dismiss for lack of personal
jurisdiction in Delaware, and Illumina voluntarily dismissed
all claims against it without prejudice. Illumina maintained
its claims against Intelligent Bio-Systems.
2013, the Delaware action was stayed pursuant to a joint
request pending inter partes review of both
sides’ respective patents, although some fact discovery
was allowed to go forward. In November 2015, Illumina sought
discovery from Illumina Bio-Systems regarding the development
and marketing of a new DNA sequencing system called the
GeneReader NGS System, which had been announced and promoted
by Qiagen N.V. and its subsidiaries (several of which are
named as defendants herein). The complaint in Delaware did
not assert claims relating to the GeneReader. Nevertheless,
Intelligent Bio-Systems produced certain documents regarding
the GeneReader. Nothing more came of it in the Delaware
January 2016, Peer Schatz, the CEO of Qiagen N.V. (and of as
each of its subsidiaries) gave a presentation at the J.P.
Morgan Healthcare Conference in San Francisco. The schedule
identified Schatz as a representative of Qiagen N.V. (Walter
Decl., Exhs. B, D, E). His presentation included technical
details of the GeneReader and included the following
statement: “[W]e’ve created solutions that
actually give you results that matter and that will allow
therapeutic or scientific decision-making”
(id., Exh. C at 5-6).
N.V. did not itself sell or develop the GeneReader. Instead,
its direct and indirect subsidiaries shared responsibilities
(all named as defendants herein) as follows: Qiagen Inc.
(USA) sold and marketed it, Qiagen Redwood City developed
related software, Intelligent Bio-Systems, Inc., led the
technical development, Qiagen GmbH manufactured the reagents,
and Qiagen Sciences, LLC, shipped consumables for the product
(id., Exh. D). An Executive Committee made all final
decisions “that ha[d] a material and/or global impact
on QIAGEN’s employees, business and future”
(id., Exh. F at 2). The signature block on the
Executive Committee’s charter had no individual’s
name or actual signature, but it identified the document as
emanating from the “QIAGEN Chief Executive
Officer” without identifying which Qiagen entity is
referenced (id. at 5).
commenced this action in the Northern District of California
in May 2016 alleging that the GeneReader infringes the
’537 patent and that each defendant’s conduct
with regard to the product constituted direct or induced
infringement of that patent. Qiagen N.V. moves to dismiss all
claims against it for lack of personal jurisdiction, and the
remaining defendants move to transfer the action to the
District of Delaware or to stay it here pending resolution of
claims against Qiagen N.V. (Defendants do not specify the
purpose of any stay, but merely note that the case against
Qiagen N.V. could be stayed here while the remaining claims
could be transferred to Delaware.) After Qiagen N.V. moved to
dismiss, it allowed Illumina to take limited informal
discovery, which consisted of several informal requests for
documents and responses to interrogatories. Qiagen N.V.
refused, however, to allow depositions. This order follows
full briefing and oral argument.
Motion to Transfer or Stay.
contend that this action should be transferred to the
District of Delaware, favoring the forum where Illumina filed
its first counterclaims for infringement of the ’537
against Intelligent Bio-Systems. Neither side addresses
whether the law of the Ninth Circuit or the law of the
Federal Circuit controls the question of deference to the
jurisdiction of an earlier-filed action. Indeed, each side
cites decisions from both circuits (as well as district court
decisions inconsistently applying either circuit’s
law). Although there do not appear to be substantial
differences between the law of the Ninth Circuit or the law
of the Federal Circuit on this issue, this order notes that
“[r]esolution of whether [a] second-filed action should
proceed presents a question sufficiently tied to patent law
that the question is governed by [Federal Circuit]
law.” Futurewei Techs., Inc. v. Acacia Research
Corp., 737 F.3d 704, 708 (Fed. Cir. 2013) (citing
Elecs. for Imaging, Inc. v. Coyle, 394 F.3d 1341,
1347 (Fed. Cir. 2005)).
two actions that sufficiently overlap are filed in different
federal district courts, one for infringement and the other
for declaratory relief, the declaratory judgment action, if
filed later, generally is to be stayed, dismissed, or
transferred to the forum of the infringement action.”
Ibid. (citing Merial Ltd. v. Cipla Ltd.,
681 F.3d 1283, 1299 (Fed. Cir. 2012)). This deference to the
jurisdiction of an earlier-filed action “exists to
avoid conflicting decisions and promote judicial efficiency.
But the rule is not absolute; exceptions may be ...