In October 2010, Motorola Mobility knew that it had litigation coming from Apple and quickly filed an ITC complaint and three federal lawsuits. Two of those federal lawsuits were filed in Motorola's "home court", the Northern District of Illinois, but about a month later, Motorola withdrew its complaints and brought the related claims as counterclaims against two Apple lawsuits in the Western District of Wisconsin. Now a sizable part of the litigation between these two parties has returned to Chicago as a result of an agreement between judges.
On November 10, 2011, Judge Barbara Crabb wrote a letter to the parties' lawyers that stated the following:
"Because my trial schedule is so full over the next six months and beyond, a kind judge in Chicago who enjoys trying patent cases has offered to take over the pretrial and trial work in this case, with the one condition that if there is a trial, it take place in Chicago.
Although venue is clearly as proper in Chicago as it is in Madison, I hesitate to move the place of trial without the consent of both parties. I would appreciate your advising me promptly whether you are willing to agree to move the trial to Chicago.The transfer of this case will have no effect on the other Apple/Motorola cases filed in this court and it will not extend the time required to resolve the 662 case. In fact, given my docket and the many other patent cases awaiting resolution, it is likely that this case will be resolved much more expeditiously."
It's a fact that the Western District of Wisconsin has become a very popular venue, and that slows it down. Also, this particular case involves 15 Apple patents and 6 Motorola patents, which is a lot of work for a judge.
Motorola was fine with going back to where it's based -- and where it originally sued Apple in the first place. But Apple objected to this for several reasons:
Apple pointed to the Wisconsin-based court's "investment in the issues inolved in this case [...] and the fact that both parties voluntarily chose to bring their claims in this Court (indeed, Motorola dismissed its case pending the Northern District of Illinois in favor of proceeding here)". Those arguments didn't sway the judge. She can do with her court's investment as she pleases, and the part about both parties having brought their claims voluntarily in Wisconsin is less relevant given that Motorola clearly favored the idea of a transfer.
In order to persuade the judge to keep the case in Wisconsin, Apple even promised to "make every effort to streamline the case for trial", so Apple was presumably willing to drop a few patents and focus on the strongest ones. That debate will probably also come up in Illinois.
Apple additionally expressed its belief that Madison, Wisconsin "is a more neutral forum for this dispute than the Chicago area, where Motorola is headquartered". But a lot of patent litigation takes place in one party's home court.
Apple's final point was that the case to be transferred has significant overlap with a FRAND litigation Apple brought in Wisconsin. That FRAND case could indeed affect the outcome of the infringement issues raised by Motorola in the transferred case. Judge Crabb's order mentioned that the parties could also have another infringement case transferred from Wisconsin to Illinois, but she didn't address the FRAND case.
It's strange how parts of this case -- Motorola's six patents -- are now full circle back to Chicago. This shifting-around of patent litigation between the two district courts may, however, very well be in the discretion of the judges involved. Apple may just have to live with this and try to make the best out of the situation, even though it would have preferred to keep this matter out of the Windy City.
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