Florida corporation ViaTech brought suit against Adobe in May, 2019, accusing Adobe of infringing its U.S. Patent No. 6,920,567, entitled “System and Embedded License Control Mechanism for the Creation and Distribution of Digital Content Files and Enforcement of Licensed Use of Digital Content Files.” Venue was based on Adobe having offices in Massachusetts (despite having a principal place of business in California), as well as having allegedly infringed the patent in Massachusetts, both through its Massachusetts offices and through its on-line store. ViaTech itself was originally a Massachusetts corporation, ViaTech Inc., which merged into ViaTech Technologies in 2000. The three inventors on the ‘567 patent all reside in Massachusetts, although ViaTech has no Massachusetts employees. Adobe moved to dismiss the complaint, while also moving to transfer, and agreed to delay a decision on the dismissal pending the outcome of the transfer motion.
ViaTech’s authority to transact business in Massachusetts was revoked in 2012, for failure to file annual reports. On May 20, 2019, ViaTech filed annual reports for 2009 through 2018, seeking reinstatement, and four days later ViaTech filed suit against Adobe before reinstatement was granted. Judge Burroughs granted Adobe’s motion to transfer venue, but transferred to Adobe’s alternative selection, Delaware, rather than Northern California where Adobe is headquartered. She first noted that venue disputes in patent cases are governed by the law of the regional circuit rather than the Federal Circuit. She noted that Massachusetts was not ViaTech’s principal place of business and that vViaTech lacked ability to do business in the Commonwealth when the case was filed. The presumption in favor of ViaTech’s choice of forum was further diminished by the fact that ViaTech had twice brought suit on the same patent in the District of Delaware. This last fact also weighed against the convenience of ViaTech in litigating in Massachusetts, as it demonstrated ViaTech’s ability and willingness to do so in Delaware. Because both parties are incorporated in Delaware, Judge Burroughs determined that it was a more appropriate venue.