Hanby v. Shell Oil Co.

• Decision Date: 05 March 2001
• Docket Number: Civil Action No. 1:00CV331.
• Citation: 144 F.Supp.2d 673
• Parties: John HANBY and Hanby Environmental Laboratory Procedures, Inc., Plaintiffs, v. SHELL OIL CO., Shell Exploration and Development Co., Shell International Ltd., Azur Environmental Ltd. and Chemetrics, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Texas

Page 673

144 F.Supp.2d 673

John HANBY and Hanby Environmental Laboratory Procedures, Inc., Plaintiffs, v. SHELL OIL CO., Shell Exploration and Development Co., Shell International Ltd., Azur Environmental Ltd. and Chemetrics, Inc., Defendants.

Civil Action No. 1:00CV331.

United States District Court, E.D. Texas, Beaumont Division.

March 5, 2001.

Walter Umphrey, Provost & Umphrey, Beaumont, TX, Guy E. Matthews, Houston, TX, for plaintiff.

Phillip Bruce Dye, Vinson & Elkins, Houston, TX, for defendant Shell.

David Craig Landin, Hunton & Williams, Richmond, VA, for defendant Chemetrics.

John W. Newton III, Orgain Bell & Tucker, Beaumont, TX, Mohamed Alim Malik, Jackson Demarco & Peckenpaugh, Irvine, CA, for defendant Azur.

MEMORANDUM OPINION

COBB, District Judge.

Before the court is Defendant Shell Oil Company's ("Shell") Motion to Transfer Venue [12] to the Southern District of Texas, Houston Division. Defendant Chemetrics also filed a Motion to Transfer Venue [20], incorporating by reference Shell's original motion without other argument and this Court will treat the two as one. The Court having reviewed the motion and the response by Plaintiffs Hanby and Hanby Environmental Laboratory Procedures, Inc., ("HELP") on file is of the opinion that the motion [docket numbers 12 and 20] be GRANTED.

I. Background.

Plaintiffs John Hanby and HELP are the inventor and the exclusive licensee/marketing company, respectively, of the "Hanby Test Kit." The Hanby Test Kit provides an on-site means of testing for aromatic hydrocarbon contamination employing a Friedel-Craft alkylation reaction in a hydrous environment, which was not previously supposed possible within the scientific community. It is protected under United States Patent No. 4,992,379 ("the '379 patent"). Hanby is a resident of Houston, Texas. HELP is a Texas corporation with its principal place of business in Houston.

At various times, Shell and Shell International Limited ("Shell Limited") apparently purchased some number of the Hanby Test Kits. In 1994, Shell Limited filed a patent application for a similar process in the United Kingdom. In 1995, an application was filed for a United States patent, which was assigned to Shell by Shell Limited. In 1998, such U.S.Patent no. 5,834,655 ("the '655 patent") was issued. Subsequently, a hydrocarbon contamination testing kit under the trade name RemediAid was developed by Azur Environmental Limited ("Azur") in England and marketed by Chemetrics, Inc., in the United States. Shell research was apparently involved in the development of the patent and the new test kit.

Shell is a Texas corporation with its principal place of business in Harris County and its registered agent in Houston. Shell Limited is an English corporation with its principal place of business in London (Shell Limited seeks to be dismissed from this action in a separate motion not addressed herein). Azur is an English corporation with its principal place of business in London. Chemetrics is a Virginia corporation. As to Shell Exploration and Development Co., a defendant named in the style of this action as brought by Hanby and HELP, Defendants assert that there is no such company. In the text of the original complaint, Plaintiffs refer to "Shell Exploration and Production (as opposed to Development) Co.," and assert it is a Delaware corporation doing business in Harris County, Texas. Regardless of the true identity of the defendant intended to be named by Plaintiffs, they have not stated what involvement it has in this dispute. Harris County and the city of Houston are in the Southern District of Texas.

Hanby and HELP claim that the '655 patent is an infringement of their '379 patent and have described in detail how it infringes (both from the perspective of their scientific research and advances in aromatic organic chemistry and from the practical methodology of the Hanby Test Kit versus the RemediAid test kit). They claim that Shell is the central player in the alleged infringement with pertinent roles played by the other defendants.

Plaintiffs filed their action on May 17, 2000, in the Eastern District of Texas for patent infringement, dilution/injury to business reputation, unfair competition, and tortious interference with contract/business relation. They seek relief under 35 U.S.C. § 271, 15 U.S.C. § 1115 and pertinent Texas state laws.

Plaintiffs make no claim as to any sales or otherwise infringing activity having occurred in the Eastern District of Texas. They do make a generalized and nonspecific claim that various of the defendants carry on "business" in the Eastern District. None of that "business" is shown to be directly in connection to the claims of this action. Shell counters that only ten of the RemediAid kits have ever been sold, and none of them in the Eastern District. See Defendant's Motion to Transfer at 4. Plaintiffs do not refute that contention, but point out that Chemetrics markets the RemediAid via its web site (www.chemetircs.com), which is available to viewers in the Eastern District (and worldwide). See Plaintiffs' Response to Defendant Shell Oil's Motion to Transfer at 3.

Each party has enjoyed various extensions of time, by mutual agreement and motion to this Court, in which to prepare and file pleadings, responses, and motions. Defendant Shell Oil filed the instant Motion to Transfer Venue on December 28, 2000. By agreement, Plaintiffs requested and were granted an extension in time to file their response, which was timely filed on February 13, 2001. This Court will now rule on Defendant's motion.

II. Transfer of Venue Analysis.

A. Basis.

A court is empowered to transfer an action to another federal venue under 28 U.S.C. § 1404. Such transfer may occur for the convenience of the parties and witnesses and in the interest of justice, if made to any other district or division where the action may have been brought. See 28 U.S.C. § 1404(a). It is within the sound discretion of the court to decide to transfer venue. See Id. § 1404(b); Jarvis Christian College v. Exxon Corp., 845 F.2d 523, 528 (5th Cir.1988); Gajeske v. Wal Mart Stores, Inc., 2000 U.S.Dist. LEXIS 6158, at *10 (E.D.Tex. Apr. 5, 2000).

The moving party bears the burden of demonstrating why the forum should be changed and the burden is a strong one as to proving that the convenience factors clearly favor such a change. See Gajeske, 2000 U.S.Dist. LEXIS 6158 at *10-11 (E.D.Tex. Apr. 5, 2000). As to the weight required of such a showing, some Eastern District courts have required evidence to be presented beyond the assertions in well-pleaded motions and documents. See In re Triton Limited Securities Litigation, 70 F.Supp.2d 678, 688 (E.D.Tex.1999) (stating that "the moving party seeking a transfer cannot carry its burden by merely making unsupported assertions, but rather must properly establish relevant venue facts by affidavit, deposition, or otherwise"); Gajeske v. Wal Mart Stores, Inc., 2000 U.S.Dist. LEXIS 6158, at *9-10 (E.D.Tex. Apr. 5, 2000) (citing In re: Triton). Those opinions cite a Third Circuit Court of Appeals ruling that evidence beyond simply reading the subject contract in a contract dispute was required to transfer venue. See Plum Tree, Inc. v. Stockment, 488 F.2d 754, 756-57 (3d Cir. 1973) (stating a preference that a motion to transfer be supported with "affidavits, depositions, stipulations, or other documents containing facts that would tend to establish the necessary elements for a transfer") (emphasis added).

The Fifth Circuit Court of Appeals does not have such a rigid requirement. To the extent that it is advisable to rely on more than counsel's pleadings, this Court notes that Defendant Shell has provided the sworn declaration of Shell attorney Yung-Yi Grace Tsang certifying under penalty of perjury the residence issues, basic facts of the case, and identity and location of witnesses to be called in support of its defense. See Defendant's Motion to Transfer, Exhibit A. Taken with the assertions in Shell's pleading, her sworn statement tends to establish that no infringing activity was conducted nor witness located in the Eastern District and that Harris County was the center of activity and is the location of Shell's witnesses.

When deciding whether to transfer venue, the trial court must exercise its discretion in light of the particular circumstances of the case. See Radio Santa Fe v. Sena, 687 F.Supp. 284, 287 (E.D.Tex. 1988). The court should balance two categories of interest in determining whether to transfer venue: (1) the convenience of the litigants, and (2) the public interests in the fair and efficient administration of justice. See Robertson v. Kiamichi RR Co., L.L.C ., 42 F.Supp.2d 651, 655 (E.D.Tex. 1999).

Convenience factors include: (1) plaintiff's choice of forum; (2) convenience of parties and witnesses; (3) place of the alleged wrong; (4) location of counsel; (5) cost of obtaining the attendance of witnesses; (6) accessibility and location of sources of proof; and (7) possibility of delay and prejudice if transfer is granted. See Id.

Public interest factors include: (1) administrative difficulties caused by court congestion; (2) local interest in adjudicating local disputes; (3) unfairness of burdening citizens in an unrelated forum with jury duty; and (4) avoidance of unnecessary problems in conflict of laws. See Id.

B. Convenience Factor Analysis.

(1) Plaintiff's Choice of Forum. Ordinarily, a plaintiff's right to choose a forum is well-established, and there is a strong presumption favoring a plaintiff's choice. See Id. at 655; In re Triton, 70 F.Supp.2d at 688 (E.D.Tex.1999). However, this is not always the case:

Courts have developed a bewildering variety of formulations on how much weight is to be given to plaintiff's choice of forum. Some courts say ... that it is the paramount or primary consideration ... Other cases take a less than enthusiastic view of the weight to be given pla...