Invivo Research v. Magnetic Resonance Equipment

• Decision Date: 06 November 2000
• Docket Number: No. 99 Civ. 11863 (RWS).,99 Civ. 11863 (RWS).
• Citation: 119 F.Supp.2d 433
• Parties: INVIVO RESEARCH, INC., Plaintiff, v. MAGNETIC RESONANCE EQUIPMENT CORPORATION and Medrad, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

119 F.Supp.2d 433

INVIVO RESEARCH, INC., Plaintiff, v. MAGNETIC RESONANCE EQUIPMENT CORPORATION and Medrad, Inc., Defendants.

No. 99 Civ. 11863 (RWS).

United States District Court, S.D. New York.

November 6, 2000.

Hopgood, Calimafde, Judlowe & Mondolino, New York City (John M. Calimafde, David Garrod, of Counsel), for Plaintiff.

Reed Smith Shaw & McClay, New York City (Scott S. McKessy, of Counsel), for Defendant Medrad, Inc.

OPINION

SWEET, District Judge.

The defendants Magnetic Resonance Equipment Corporation ("MRE") and Medrad, Inc. ("Medrad") have moved pursuant to 28 U.S.C. § 1404(a) for an order transferring this patent infringement action to the Western District of Pennsylvania where a declaratory judgment action raising identical issues is pending. Plaintiff Invivo Research, Inc. ("Invivo") opposes the motion. For the reasons set forth below, the motion is granted.

The Parties

Invivo is a corporation organized and existing under the laws of Oklahoma with its principal place of business in Orlando, Florida.

MRE is a corporation organized and existing under the laws of Delaware with its principle place of business in Bay Shore, New York.

Medrad is a corporation organized and existing under the laws of Delaware with its principle place of business in Indianola, Pennsylvania.

Facts And Prior Proceedings

Invivo initiated the instant action by the filing of a complaint on December 8, 1999. Invivo is the holder of U.S. Patent No. 4,991,580 (the '580 Patent), and the complaint alleges patent infringement by MRE. The complaint does not specify which of MRE's products it accuses of infringement, but mentions two products by name, the MRE Foxbox¹ and MRE 9500 Monitoring System (the "accused products"). Invivo served the complaint on MRE on April 25, 2000.²

MRE's principal place of business is in Bayshore, New York, which is in the Eastern District of New York. MRE does not have a place of business within the Southern District of New York. MRE developed and previously sold the products accused of infringement in this action. The primary developer of the accused products was G. Ronald Morris, Sr. ("Morris"), assisted by Jim Valentine ("Valentine") and Doug Tomalson ("Tomalson"). Valentine currently resides in the State of Washington. Tomalson currently resides in Wisconsin.

The accused products were sold nationally to hospitals and doctors in all major U.S. markets, including hospitals located in the Western District of Pennsylvania. Customers within the Southern District of New York accounted for no more than one percent of the total sales of the accused products.

On April 21, 2000, MRE sold certain of its assets, including the products allegedly infringing the '580 Patent, to Medrad as part of an Asset Purchase Agreement. Under the agreement, MRE agreed to manufacture the accused products for Medrad during a short transition period, which ended on or about August 31, 2000. At that time, MRE became a company devoted solely to research activities with no on-going connection to the manufacture, marketing, or sale of the accused products.

Medrad's principal place of business in Indianola, Pennsylvania, which is in the Western District of Pennsylvania. Medrad is in the process of relocating all manufacturing activities and documentation relating to the assets of the business which it purchased from MRE to Indianola, Pennsylvania. The relocation was expected to be complete on or by August 31, 2000. Medrad does not have a place of business anywhere in the State of New York.

On April 21, 2000, upon acquiring the aforementioned assets of MRE, Medrad filed a declaratory judgment action in the Western District of Pennsylvania against Invivo seeking a declaration of non-infringement. Invivo filed an answer on May 31, 2000, and an amended answer on June 16, 2000. That action, Medrad, Inc. v. Invivo Research, Inc., No. 00 Civ. 778, was stayed by order of the Honorable Donalta W. Ambrose on October 5, 2000, and marked "administratively closed."

On June 27, 2000, Invivo filed an amended complaint adding Medrad as a defendant in this action. Medrad answered on August 14, 2000.

Medrad and MRE filed motions to transfer this action to the Western District of Pennsylvania on July 21, 2000 and July 24, 2000, respectively, and submissions were received through August 16, 2000, at which time the matter was deemed fully submitted.

Discussion

I. The Standard Under Rule 1404(a)

Section 1404(a) of Title 28 of the United States Code provides in relevant part that:

for the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.

28 U.S.C. § 1404(a).

This section is a statutory recognition of the common law doctrine of forum non conveniens as a facet of venue in the federal courts. See Wilshire Credit Corp. v. Barrett Capital Management Corp., 976 F.Supp. 174, 180 (W.D.N.Y.1997). Section 1404(a) strives to prevent waste "`of time, energy and money' and to `protect litigants, witnesses and the public against unnecessary inconvenience and expense.'" Wilshire, 976 F.Supp. at 180 (quoting Continental Grain Co. v. Barge FBL-585, 364 U.S. 19, 27, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960)).

"`[M]otions for transfer lie within the broad discretion of the courts and are determined upon notions of convenience and fairness on a case-by-case basis.'" Linzer v. EMI Blackwood Music Inc., 904 F.Supp. 207, 216 (S.D.N.Y.1995) (quoting In re Cuyahoga Equip. Corp., 980 F.2d 110, 117 (2d Cir.1992)) (citing Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22, 29, 108 S.Ct. 2239, 101 L.Ed.2d 22 (1988)). The burden of demonstrating the desirability of transfer lies with the moving party. See, e.g., Hubbell Inc. v. Pass & Seymour, Inc., 883 F.Supp. 955, 962 (S.D.N.Y.1995).

Thus, the inquiry on a motion to transfer is two-fold. The court must first determine whether the action sought to be transferred is one that "might have been brought" in the transferee court. Second, the court must determine whether, considering the "convenience of parties and witnesses" and the "interest of justice," a transfer is appropriate. Wilshire, 976 F.Supp. at 180.

In determining whether transfer is warranted "for the convenience of the parties and witnesses [and] in the interest of justice," courts generally consider several factors, including: (1) the convenience of witnesses, (2) the convenience of the parties, (3) the locus of operative facts, (4) the availability of process to compel the attendance of unwilling witnesses, (5) the location of relevant documents and the relative ease of access to sources of proof, (6) the relative means of the parties, (7) the forum's familiarity with the governing law, (8) the weight accorded the plaintiff's choice of forum, and (9) trial efficiency and the interest of justice, based on the totality of the circumstances. See Orb Factory, Ltd. v. Design Science Toys, Ltd., 6 F.Supp.2d 203 (S.D.N.Y.1998) (citing Wilshire, 976 F.Supp. at 181); see also Constitution Reinsurance Corp. v. Stonewall Ins. Co., 872 F.Supp. 1247, 1250 (S.D.N.Y. 1995); Cento Group, S.p.A v. OroAmerica, Inc., 822 F.Supp. 1058, 1060 (S.D.N.Y. 1993).

II. This Action Will Be Transferred

A. This Case Could Have Been Brought In The Western District Of Pennsylvania

An action "could have been brought" in another forum if the defendant would have been amenable to personal jurisdiction in the transferee forum at the time the action was commenced and venue is proper there. SeeHoffman v. Blaski, 363 U.S. 335, 344, 80 S.Ct. 1084, 4 L.Ed.2d 1254 (1960); Bionx Implants, Inc. v. Biomet, Inc., No. 99 Civ. 740, 1999 WL 342306, at *2 (S.D.N.Y. May 27, 1999).

Invivo could have filed the initial complaint in this action against MRE in the Western District of Pennsylvania. Venue was proper in the Western District of Pennsylvania under 28 U.S.C. § 1400(b), which provides that:

[a]ny action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.

28 U.S.C. § 1400(b).

Being a corporation, MRE "resides" in those districts in which it is subject to personal jurisdiction at the time the action is commenced. See 28 U.S.C. § 1391(c). The Western District of Pennsylvania has personal jurisdiction over MRE as a result of the business conducted by MRE within the district. The accused products have been sold to hospitals in the Western Pennsylvania. Thus, both venue and personal jurisdiction were proper as to MRE in the Western District of Pennsylvania. Personal jurisdiction and venue were also proper as to Medrad, since Medrad resides in that district.

B. The Balancing Of The Interests Favors Transfer

1. The Convenience Of The Parties And Witnesses

"The convenience of party and non-party witnesses is perhaps the most important consideration of a Section 1404(a) motion." Garrel v. NYLCare Health Plans, Inc., No. 98 Civ. 9077, 1999 WL 459925, at *5 (S.D.N.Y. June 29, 1999) (citations omitted); see, e.g., Hubbell Inc. v. Pass & Seymour, Inc., 883 F.Supp. 955, 962 (S.D.N.Y.1995).

The Medrad employee witnesses are all located within the Western District of Pennsylvania. Since Medrad is now the only seller and soon will be the only manufacturer of the accused products, its employees will most likely comprise the bulk of defense witnesses. Venue in their home district is without question more convenient for these party witnesses.

Invivo's principal place of business is in Orlando, Florida. Invivo's witnesses are alleged without contradiction to reside in and around Florida. Invivo has demonstrated its willingness to travel as far as New York City by filing this action here. Pittsburgh and New York City, the respective seats of the Western District of Pennsylvania and the Southern District of New York, are...