Hologic, Inc. v. Minerva Surgical, Inc.

Citations: 163 F. Supp. 3d 118; 2016 U.S. Dist. LEXIS 25195; 2016 WL 789349Docket: Civ. No. 15-1031-SLR

Court: District Court, D. Delaware; February 28, 2016; Federal District Court

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Minerva Surgical, Inc.'s motion to transfer venue to the Northern District of California is denied. The court emphasizes that plaintiffs have the privilege to choose their litigation forum, and a defendant's place of incorporation is a suitable venue. The analysis follows established case law, highlighting that the court's discretion in transfer must respect plaintiffs' choices unless justified by the interests of justice. The factors from Jumara v. State Farm Ins. Co. were considered, noting that discovery is local and trial is limited, leading to a neutral stance on court congestion. Minerva's claim of hardship due to being a start-up with no sales in Delaware is countered by the principle that incorporation in Delaware signifies acceptance of its jurisdiction for business disputes. Though litigation in Delaware may be costlier for Minerva, the court finds no unique burden that warrants a transfer. Additionally, Minerva's motion to strike Hologic, Inc.’s preliminary injunction for lack of standing is also denied, although specific reasons for this denial are not detailed in the provided excerpt.

Minerva has moved to strike Hologic's motion for a preliminary injunction, arguing that Hologic lacks standing because the patents in question were owned by Cytyc Surgical Products LLC, a subsidiary of Hologic, at the time the complaint was filed. Minerva asserts that Cytyc, being a patent holding company, could not independently pursue a motion for preliminary relief. The legal principle established states that a party seeking damages for patent infringement must hold legal title to the patent during the infringement period. While an equitable title holder can seek equitable relief, ownership by a subsidiary does not automatically confer standing to the parent company. Previous cases, such as Digitech and Merial, indicate that a mere parent-subsidiary relationship is insufficient for establishing standing under the Patent Act. However, the record indicates that Hologic exercised complete control over Cytyc, including decisions related to patent enforcement and licensing. This control may allow Hologic to demonstrate equitable standing, as it effectively had exclusive rights to the patents in dispute. Relevant case law supports the argument that Hologic's corporate relationship with Cytyc could overcome standing issues in this context.

The parties involved in the motion practice are ordered to bear their own costs, as neither motion was deemed frivolous. Depositions are typically conducted where deponents reside, and records are usually maintained digitally. If Minerva's records are in physical form, the opposing party would need to travel for inspection or cover copying costs. National statistics indicate that only 13.9% of patent infringement cases are resolved on the merits, with over 97% settled before trial. In 2012, less than 2% of federal civil cases reached trial. Although Minerva's product was demonstrated at a Delaware hospital, it claims not to intend selling the devices in Delaware, which the court finds unconvincing given the company's financial situation. Hologic, involved in two of the lawsuits, does not prefer California as a venue. Minerva cites increased costs due to hiring Delaware counsel and travel expenses. The excerpt also defines equitable title as the beneficial interest recognized by equity as the real ownership, even if legal title is held by another.