Pall Corp. v. Pti Technologies, Inc., CV 97-1134(ADS).

• Decision Date: 24 January 1998
• Docket Number: No. CV 97-1134(ADS).,CV 97-1134(ADS).
• Citation: 992 F.Supp. 196
• Parties: PALL CORPORATION, Plaintiff, v. PTI TECHNOLOGIES, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

Page 196

992 F.Supp. 196

PALL CORPORATION, Plaintiff, v. PTI TECHNOLOGIES, INC., Defendant.

No. CV 97-1134(ADS).

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

January 24, 1998.

Leydig, Voit & Mayer, Ltd. by H. Michael Hartmann, Christopher T. Griffith, Steven H. Sklar, Chicago, IL, Rivkin, Radler & Kremer by James W. Weller, Uniondale, NY, for Plaintiff.

Pillsbury Madison & Sutro, LLP by Arthur Wineburg, H.T. Than, Washington, DC, Nixon, Hargrave, Devans & Doyle, LLP by Mitchell C. Shelowitz, Garden City, NY, for Defendant.

MEMORANDUM DECISION AND ORDER

SPATT, District Judge.

In this patent infringement action, the defendant, PTI Technologies, Inc. ("PTI" or the "defendant"), moves to transfer the case to the United States District Court for the Central District of California, pursuant to 28 U.S.C. § 1404(a).

I. BACKGROUND

The plaintiff, Pall Corporation ("Pall" or the "plaintiff") is a New York corporation with a principal place of business in East Hills, New York. The defendant, PTI, is a Delaware corporation with a principal place of business in Newbury Park, California. The corporations are competitors in the business of manufacturing and selling various types of "filter cartridges," including fluoropolymer filter cartridges and filter cartridges containing micro-porous nylon membrane.

A. The Central District of California Case

In 1993, Pall commenced a lawsuit against PTI in the Central District of California, raising five causes of action: a Federal patent infringement claim; claims of unfair competition under the Lanham Act, 15 U.S.C. § 1125 and under California state law; and claims of intentional and negligent interference with a prospective economic advantage under California state law. Pall Corp. v. PTI Technologies, No. 93 Civ. 7459(JSL). These claims arise from Pall's ownership of United States Letters Patent No. 4,340,479 ("Pall's '479 Patent") for an invention called the "Process for Preparting Hydrophilic Polyamide Membrane Filter Media and Product." The gravamen of the complaint is that PTI was infringing on Pall's '479 Patent by manufacturing and selling filtration cartridges containing nylon membrane, and that PTI made false and misleading representations to Pall's customers and potential customers about Pall's product.

In its answer, PTI denied that it infringed Pall's 479 Patent, and asserted that Pall's patent was, in any event, invalid. PTI also filed a counterclaim, asserting that Pall was infringing on PTI's patent for "Fluorocarbon Filter Element," a product invented by Tokuya Miyagi and others and assigned to United States Letter Patent No. 4,633,041 (the "PTI '041 Patent" or the "PTI Miyagi Patent").

Apparently, the California action was placed on the "inactive" docket after the parties exchanged initial disclosures, while Pall actively pursued its claims regarding the '479 Patent against other defendants. The cases against the other defendants have since been resolved, and at time of the filing of this motion, the case against PTI has apparently not been restored to the "active" docket.

B. The Eastern District of New York Case

On March 7, 1997, Pall initiated the case before the Court by filing a complaint alleging one cause of action against PTI for allegedly infringing United States Letters Patent No. 4,609,465, which was issued to John Miller and assigned to Pall (the "Pall '465 Patent" or "the Miller Patent"). According to Pall, its '465 Patent, which covered an invention entitled "Filter Cartridge with a Connector Seal," was infringed by Pall's manufacture and sale of a fluoropolymer filter cartridge. Once again, PTI filed a counterclaim, this time seeking a judgment declaring that: (1) "no product previously sold by PTI infringes any patent owned by Pall"; and (2) the Pall "'465 Patent is invalid and void on the ground that the purported invention does not meet the requirements specified in Section[s] 101 ... 102, 103 and 112" of Title 35 of the United States Code.

PTI now moves the Court for an order transferring this case to the Central District of California. Pall does not dispute that this case could have been brought in the Central District of California and that transfer is, therefore, possible. Instead, the dispute centers on whether transfer would be appropriate.

II. DISCUSSION

A motion to transfer venue from one federal district court to another, when venue initially is proper, is governed by 28 U.S.C. § 1404(a), which provides in relevant part: "[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil case to any other district or division where it might have been brought." 28 U.S.C. § 1404(a). See generally Filmline (Cross-Country) Prods., Inc. v. United Artists, 865 F.2d 513, 520 (2d Cir. 1989).

"The goal of Section 1404(a) is to prevent waste of time, energy and money and to protect litigants, witnesses and the public against unnecessary inconvenience and expense." Wine Markets Int'l, Inc. v. Bass, 939 F.Supp. 178, 179 (E.D.N.Y.1996) (internal quotations marks omitted) (quoting Van Dusen v. Barrack, 376 U.S. 612, 616, 84 S.Ct. 805, 809, 11 L.Ed.2d 945 (1964)); see also Launer v. Buena Vista Winery, Inc., 916 F.Supp. 204 (E.D.N.Y.1996); Hernandez v. Graebel Van Lines, 761 F.Supp. 983 (E.D.N.Y.1991).

The Court's inquiry on a motion to transfer is two-fold. The first issue is whether the action sought to be transferred is one that "might have been brought" in the district court in which the moving party seeks to have the case litigated, namely, the transferee court. If the initial threshold question is answered affirmatively, as the parties concede, then the court must examine whether, "the convenience of parties and witnesses" and "the interest of justice", weighs in favor of a transfer to the proposed district. Laumann Mfg. Corp. v. Castings USA Inc., 913 F.Supp. 712, 720 (E.D.N.Y.1996); Modern Computer Corp. v. Ma, 862 F.Supp. 938, 947-48 (E.D.N.Y.1994); Hernandez v. Graebel Van Lines, 761 F.Supp. at 986.

The moving party has the "burden to clearly establish that a transfer is appropriate and that the motion should be granted." Laumann Mfg. Corp., 913 F.Supp. at 720 (emphasis added) (quoting Modern Computer Corp., 862 F.Supp. at 948). See also Factors Etc. Inc. v. Pro Arts, Inc., 579 F.2d 215, 218-19 (2d Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1215, 59 L.Ed.2d 455 (1979); Arrow Elec., Inc. v. Ducommun, Inc., 724 F.Supp. 264, 265 (S.D.N.Y.1989) (quoting Morales v. Navieras de Puerto Rico, 713 F.Supp. 711, 712 (S.D.N.Y.1989)). The movant must support the motion with an affidavit containing "detailed factual statements" explaining why the transferee forum is more convenient, including "the potential principal witnesses expected to be called and a general statement of the substance of their testimony." Laumann Mfg. Corp., 913 F.Supp. at 720 (emphasis added); Modern Computer Corp., 862 F.Supp. at 948; see also Factors, 579 F.2d at 218; Schieffelin & Co. v. Jack Co. of Boca, Inc., 725 F.Supp. 1314, 1321 (S.D.N.Y.1989).

"Courts have employed a variety of factors that serve as a guidepost in helping to determine whether to transfer a case to another district, none of which are singly dispositive." Modern Computer Corp., 862 F.Supp. at 948. The criteria include: (1) convenience of the parties; (2) convenience of witness; (3) relative means of the parties; (4) locus of operative facts and relative ease of access to sources of proof; (5) attendance of witnesses; (6) the weight accorded the plaintiffs choice of forum; (7) calendar congestion; (8) the desirability of having the case tried by the forum familiar with the substantive law to be applied; (9) practical difficulties; and (10) how best to serve the interest of justice, based on an assessment of the totality of material circumstances. Wine Markets Int'l, 939 F.Supp. at 181; Modern Computer Corp., 862 F.Supp. at 948; Miller v. County of Passaic, 699 F.Supp. 409, 411 (E.D.N.Y.1988) (citing Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 67 S.Ct. 839, 91 L.Ed. 1055 (1946)).

Finally, the decision whether to transfer venue is left to the sound discretion of the district court. Red Bull Assocs. v. Best Western Int'l, Inc., 862 F.2d 963, 967 (2d Cir.1988); Chichelo v. Hoffman-La Roche, Inc., No. 97 Civ. 4591, 1997 WL 654637 *3 (S.D.N.Y. Oct.21, 1997); Modern Computer Corp., 862 F.Supp. at 948. That discretion will not be disturbed on appeal absent a clear showing of abuse. Filmline (Cross-Country) Prods., Inc., 865 F.2d at 520.

PTI advances several theories in favor of transfer, without supplying any supporting affidavits. For example, PTI maintains that the "convenience of the parties and the location of the witnesses and documents favor the California forum" because it "is located in California [and,] [a]lthough Pall is located in New York, its choice of forum is neutral since it initiated actions in both fora. PTI's witnesses and documents, and convenience strongly favor California." (Defendant's Memorandum of Law, at 5). The defendant also contends that "judicial economy" warrants transfer because "the [California and New York] cases are so closely related." (Defendant's Memorandum of Law, at 5). Specifically, the defendant asserts in its Memorandum of Law:

Both the [defendant's] Miyagi patent [the subject of the defendant's counterclaim in the California lawsuit] and the [plaintiffs] Miller patent [the subject of the plaintiff's complaint in the New York case] cover fluorocarbon resin filters. The [defendant's] Miyagi patent has an effective U.S. filing date of May 8, 1994, and claims priority under 35 U.S.C. § 119.... On the other hand, the Miller patent has a U.S. filing date of May 21, 1994. Thus, the Miyagi patent predates the Miller patent, and on its face qualifies as prior art against the Miller patent under 35 U.S.C. § 102(e), i.e., the validity of the Miller patent can be directly challenged by the existence of the Miyagi...