Kaiser Indus. Corp. v. Wheeling-Pittsburgh Steel Corp.

• Decision Date: 22 June 1971
• Docket Number: 4095.,Civ. A. No. 4094
• Citation: 328 F. Supp. 365
• Court: U.S. District Court — District of Delaware
• Parties: KAISER INDUSTRIES CORPORATION, Vereinigte Oesterreichische Eisenund Stahlwerke Aktiengesellschaft and Brassert Oxygen Technik Ag., Plaintiffs, v. WHEELING-PITTSBURGH STEEL CORPORATION, Defendant. KAISER INDUSTRIES CORPORATION, Vereinigte Oesterreichische Eisenund Stahlwerke Aktiengesellschaft and Brassert Oxygen Technik Ag., Plaintiffs, v. FORD MOTOR COMPANY, Defendant.

328 F. Supp. 365

KAISER INDUSTRIES CORPORATION, Vereinigte Oesterreichische Eisenund Stahlwerke Aktiengesellschaft and Brassert Oxygen Technik Ag., Plaintiffs, v. WHEELING-PITTSBURGH STEEL CORPORATION, Defendant.

KAISER INDUSTRIES CORPORATION, Vereinigte Oesterreichische Eisenund Stahlwerke Aktiengesellschaft and Brassert Oxygen Technik Ag., Plaintiffs, v. FORD MOTOR COMPANY, Defendant.

Civ. A. Nos. 4094, 4095.

United States District Court, D. Delaware.

June 22, 1971.

COPYRIGHT MATERIAL OMITTED

David Snellenberg, II, Wilmington, Del., Paul, Weiss, Goldberg, Rifkind, Wharton & Garrison, New York City, and Webb, Burden, Robinson & Webb, Pittsburgh, Pa., of counsel, for plaintiffs in both actions.

Max S. Bell, Jr., of Richards, Layton & Finger, Wilmington, Del., Walter J. Blenko and Walter J. Blenko, Jr., Robert D. Yeager, of Blenko, Leonard & Buell, Pittsburgh, Pa., and Francis St. C. O'Leary, Pittsburgh, Pa., of counsel, for defendant Wheeling-Pittsburgh Steel Corp.

S. Samuel Arsht, of Morris, Nichols, Arsht & Tunnell, Wilmington, Del., Fish & Neave, William K. Kerr, Henry J. Zafian and Albert E. Fey, New York City, of counsel, for defendant Ford Motor Co.

OPINION

LATCHUM, District Judge.

These suits were brought by Kaiser Industries Corporation ("Kaiser") and the other named plaintiffs against Wheeling-Pittsburgh Steel Corporation ("Wheeling-Pittsburgh") and the Ford Motor Company ("Ford") alleging that the defendants' steelmaking process infringes United States Letters Patent No. 2,800,631 (the "Suess patent"), of which Kaiser, a Nevada corporation, is the exclusive licensing agent in the United States.

Wheeling-Pittsburgh has moved, pursuant to 28 U.S.C. § 1404(a), to transfer the case against it to either the Southern District of Ohio, Eastern Division, or to the Western District of Pennsylvania. Ford has moved to transfer the case against it to the Eastern District of Michigan, Southern Division.

The Suess patent has been and is the subject of extensive litigation by the plaintiffs against numerous alleged infringers. In a prior suit brought by the plaintiffs against the McLouth Steel Corporation, tried in the Eastern District of Michigan, Southern Division, the patent was held invalid. Henry J. Kaiser Co. et al. v. McLouth Steel Corp., 257 F.Supp. 372 (E.D.Mich.1966). The decision was affirmed by the Court of Appeals for the Sixth Circuit. Kaiser Industries Corp. et al. v. McLouth Steel Corp., 400 F.2d 36 (C.A.6, 1968). Certiorari was denied by the United States Supreme Court. Kaiser Industries Corp. et al. v. McLouth Steel Corp., 393 U.S. 1119, 89 S.Ct. 992, 22 L.Ed.2d 124 (1969). Another suit brought by the plaintiffs on the Suess patent, against Jones and Laughlin Steel Corporation, has been tried in the Western District of Pennsylvania and is currently awaiting decision. These two suits and eight others pending in other districts were only recently filed and are still in the pretrial stages.

Under § 1404(a) a case may be transferred to a "district or division where it might have been brought" if the transfer will be "for the convenience of parties and witnesses, and in the interest of justice." There is no dispute that the action against Wheeling-Pittsburgh could have been brought in either the Southern District of Ohio or the Western District of Pennsylvania, since the only two of its plants utilizing the allegedly infringing process are located at Steubenville, Ohio, and Monessen, Pennsylvania.¹ It is also undisputed that the action against Ford could have been brought in the Eastern District of Michigan, Southern Division, since Ford's corporate headquarters is at Dearborn and its only steelmaking plant whose process is alleged to have infringed the Suess patent is located at Dearborn.²

However, at the outset the plaintiffs argue that transfer should be denied because of a limitation placed on § 1404 (a) by 28 U.S.C. § 1400(b). Under § 1400(b) a plaintiff in a patent infringement action may bring suit "where the defendant resides," i. e. in the state of incorporation of a corporate defendant,³ even though no acts of infringement have occurred there. The plaintiffs contend that this indicates a Congressional intent to grant plaintiffs in patent infringement actions an absolute right to sue a defendant at his residence or corporate domicile. Thus, it is argued, ordering a transfer under § 1404(a) would frustrate this Congressional intent. Consequently, the plaintiffs assert that § 1404(a) transfer is unavailable when an alleged patent infringer is sued where he resides rather than where some act of infringement occurs.

No case has been cited to this Court nor has this Court found any authority so holding. Both §§ 1400(b) and 1404(a) were part of the 1948 revision of the Judicial Code. Nothing in either section or in any other provision of the Judicial Code purports to restrict the application of § 1404(a) in patent suits. In Ex Parte Collett, 337 U.S. 55, 69 S.Ct. 944, 93 L.Ed. 1207, 10 A.L.R.2d 921 (1949); Kilpatrick v. Texas & Pacific Ry. Co., 337 U.S. 75, 69 S.Ct. 953, 93 L.Ed. 1223 (1949) and United States v. National City Lines, Inc., 337 U.S. 78, 69 S.Ct. 955, 93 L.Ed. 1226 (1949) the United States Supreme Court held that § 1404(a) was applicable to any civil action regardless of whether venue was founded upon general venue statutes or special venue statutes. In Cinema Amusements, Inc. v. Loew's, Inc., 85 F. Supp. 319, 322-323 (D.Del.1949), a civil antitrust suit, this Court rejected the argument that a § 1404(a) transfer could not be ordered where the corporate defendants were domiciled in the forum state. The argument carries no more logic in a patent infringement suit. Therefore it is obvious that § 1400(b) does not preclude this Court from transferring a case under § 1404(a) even though Delaware is the state "where the defendant resides."

Having found that there is power to transfer, the question becomes whether there has been a sufficient showing, in light of the three statutory criteria— convenience of parties, convenience of witnesses and interest of justice—to cause this Court to order a change of venue. Miracle Stretch Underwear Corp. v. Alba Hosiery Mills, Inc., 136 F. Supp. 508, 510 (D.Del.1955). Whether to permit the transfer of a case to another district or division under § 1404(a) is a matter which rests in the sound discretion of the Court. Berk v. Willys-Overland Motors, Inc., 107 F.Supp. 643, 644 (D.Del.1952).

The burden of showing that transfer is warranted is on the moving party. Kewanee Oil Co. v. M & T Chemicals, Inc., 315 F.Supp. 652, 654 (D.Del. 1970); Faberge, Inc. v. Schick Electric, Inc., 312 F.Supp. 559, 560 (D.Del.1970). The mere desire of a defendant for transfer to a different forum is not a sufficient basis for granting a motion to transfer. Brown v. Insurograph, Inc., 85 F.Supp. 328, 330 (D.Del.1949).

In considering a motion to transfer the plaintiff's choice of forum is entitled to substantial weight. Shutte v. Armco Steel Corp., 431 F.2d 22, 25 (C.A.3, 1970), cert. den. 401 U.S. 910, 91 S.Ct. 871, 27 L.Ed.2d 808 (1971); Webster-Chicago Corp. v. Minneapolis-Honeywell Regulator Co., 99 F.Supp. 503, 505 (D.Del.1951); Cf. General Felt Products Co. v. Allen Industries, Inc., 120 F.Supp. 491, 493 (D.Del.1954). However, the mere fact that Delaware is the plaintiffs' choice of forum and the defendant's state of incorporation will not, standing alone, prevent this Court from transferring the suit to another forum. Jahncke Service Inc. v. OKC Corp., 301 F.Supp. 866, 868 (D.Del. 1969); Glickenhaus v. Lytton Financial Corp., 205 F.Supp. 102, 106 (D.Del. 1962).

Transfer should be denied in a patent case where the factors to be considered are evenly balanced or where the factors lean but slightly in favor of transfer. Aetna Casualty & Surety Co. v. Singer-General Precision, Inc., 323 F. Supp. 1141, 1143 (D.Del.1971). In order for a transfer motion under § 1404(a) to be granted the moving party's reasons should be fairly substantial. Nocona Leather Goods Co. v. A. G. Spalding & Bros., Inc., 159 F.Supp. 269, 270 (D.Del. 1957).

Convenience of Parties. The plaintiffs and defendants in these cases are all corporations. There is no indication that any officers of these corporations, other than those who will be witnesses, intend to be present at the trial. Two of the plaintiffs are foreign corporations, one being Austrian and the other Swiss. Getting to this Court or to any other District Court in this country will involve lengthy travel. Kaiser, Wheeling-Pittsburgh, and Ford are all large corporations with bases of operation in a number of states. Cf. Jahncke Service, Inc. v. OKC Corp., 301 F.Supp. 866, 867-868 (D.Del.1969). Therefore, the convenience of the parties does not weigh strongly in favor of transfer.

Convenience of Witnesses. Both of the moving defendants have alleged that transfer would afford their witnesses a more convenient forum. In order for the Court to ascertain whether transfer is warranted for the convenience of witnesses, some factual material must be supplied by the moving party sufficient for the Court to make a determination as to the balance of conveniences. United Air Lines, Inc. v. United States, 192 F.Supp. 795, 796 (D.Del.1959).

In the recent case of Aetna Casualty & Surety Co. v. Singer-General Precision, Inc., 323 F.Supp. 1141 (D. Del.1971) this Court articulated the factual details necessary in order for the Court to determine whether the forum chosen by the plaintiff is inconvenient to the defendant's witnesses. The Court stated:

"When inconvenience to witnesses is alleged some information should be put in the record as to how many witnesses are involved, the materiality of these witnesses to the case, how far away they are from the transferee Court as compared with this Court, how long they will be required at the trial, and whether they are persons whose time is vitally important in the operation of the defendant's

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