Opinion
Civil No. 04-3358 ADM/AJB.
November 15, 2004
Matthew A. Doscotch, Esq., Merchant Gould, Minneapolis, MN, appeared for and on behalf of Amazin' Raisins International, Inc.
John C. Adkisson, Esq., Fish Richardson, Minneapolis, MN, appeared for and on behalf of Ocean Spray Cranberries, Inc.
MEMORANDUM OPINION AND ORDER
I. INTRODUCTION
On October 26, 2004, oral argument before the undersigned United States District Judge was heard on Defendant Ocean Spray Cranberries, Inc.'s ("Ocean Spray" or "Defendant") Motion to Transfer Venue [Docket No. 7], pursuant to 28 U.S.C. § 1404(a). In its complaint [Docket No. 1], Plaintiff Amazin' Raisins International, Inc. ("ARI" or "Plaintiff") alleges Ocean Spray's process for manufacturing its dried fruit product infringes its United States Patent No. 5,188,861 ("861 Patent"). Ocean Spray filed a counterclaim [Docket No. 4] seeking a declaratory judgment of non-infringement. Ocean Spray seeks to transfer venue for this case from the District of Minnesota to the District of Massachusetts. For the reasons set forth below, Defendant's Motion to Transfer Venue is granted.
II. BACKGROUND
ARI is a small corporation based in Ontario, Canada. Mazin Decl. ¶¶ 1, 6 [Docket No. 15]. Ocean Spray is a large United States corporation whose headquarters and principal place of business are located in Lakeville-Middleboro, Massachusetts. Ocean Spray: About Us (Doscotch Decl. [Docket No. 14] Ex. K). On February 23, 1993, Jack Mazin, the Chief Executive Officer and owner of ARI, and Amir Lalji received the 861 patent for their process for manufacturing dried fruit. Mazin Decl. ¶¶ 2, 4; Patent No. 861 (Doscotch Decl. Ex. A). Through its Minnesota counsel, in May 2003, ARI notified Ocean Spray that it believed Ocean Spray's process for manufacturing Craisins® violated its 861 Patent. May 27, 2003 letter (Doscotch Decl. Ex. B). Ocean Spray denied the charge, claiming Craisins® were manufactured according to its own patented process. June 19, 2003 letter (Doscotch Decl. Ex. C). ARI subsequently made three requests for samples of Ocean Spray's decharacterized cranberry pieces to determine whether the process infringed the 861 Patent. Sept. 8, 2003 letter (Doscotch Decl. Ex. D); Nov. 11, 2003 letter (Doscotch Decl. Ex. E); Feb. 26, 2004 letter (Doscotch Decl. Ex. F). Ocean Spray refused these requests. Dec. 17, 2003 letter (Doscotch Decl. Ex. G); March 5, 2004 letter (Doscotch Decl. Ex. H). All communications by both ARI and Ocean Spray were conducted by their respective Minnesota counsel.On July 22, 2004, ARI filed the current action against Ocean Spray in the United States District Court in Minnesota. On September 2, 2004, Ocean Spray submitted its answer denying infringement and filing a counterclaim. On the same day, Ocean Spray sent a letter notifying ARI of its intent to seek transfer and asking for any reasons why the case was venued in the District of Minnesota. Sept. 2, 2004 letter (Woodford Decl. [Docket No. 11] Ex. D). ARI responded by indicating it believed venue in Minnesota was proper but noted it would stipulate to a transfer to Buffalo, New York. Sept. 7, 2004 letter (Woodford Decl. Ex. E). At oral argument, ARI explained that it proposed Buffalo because it is close to the Ontario, Canada residence of Jack Mazin, the inventor of the 861 Patent.
Ocean Spray moved to transfer venue on September 10, 2004. ARI claims Minnesota is the appropriate venue for this matter because it learned of Ocean Spray's alleged patent infringement through the sale of Craisins® in Minnesota and because the parties had communicated solely through counsel in Minnesota. In addition, ARI notes that Ocean Spray manufactures Craisins® in a facility located in Tomah, Wisconsin. Bryson Decl. ¶ 5 [Docket No. 10]. Ocean Spray argues that transfer of venue is appropriate because neither ARI nor Ocean Spray have facilities or employees in Minnesota. Furthermore, Ocean Spray contends all of the witnesses to the case are located in Massachusetts.
III. DISCUSSION
Section 1404(a) grants a district court the authority to transfer a civil matter to another district in which the suit might have been brought. In evaluating whether transfer is proper, the Court should consider the convenience of the parties, the convenience of the witnesses and the interests of justice. 28 U.S.C. § 1404(a). The Court also has the discretion to take into account, on a case-by-case basis, any other factors or circumstances that may be relevant. Terra Int'l Inc. v. Mississippi Chem. Corp., 119 F.3d 688, 691 (8th Cir. 1997). Federal courts generally "give considerable deference to a plaintiff's choice of forum and thus the party seeking transfer . . . typically bears the burden of showing that the transfer is warranted." Id. at 695. However, courts afford plaintiff's choice of forum "significantly less deference when (1) plaintiff does not reside in the selected forum or (2) the transaction or underlying facts did not occur in the chosen forum." Nelson v. Soo Line R.R. Co., 58 F. Supp. 2d 1023, 1026 (D. Minn. 1999) (citations omitted).
28 U.S.C. 1404(a) provides:
"For the convenience of the 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."
A. Appropriate Venue
As an initial matter, the Court must determine whether it would have been possible for ARI to originally bring its patent infringement claim in the District of Massachusetts. 28 U.S.C. 1404(a). It is uncontested that Ocean Spray's corporate headquarters is located in Massachusetts. As a result, Plaintiff could have filed the instant matter in the District of Massachusetts, pursuant to 28 U.S.C. § 1400(b). Having determined that the District of Massachusetts would have been a proper venue to file suit, it is necessary to evaluate the convenience of the parties and the witnesses as well as the interests of justice to determine whether transfer is appropriate.
28 U.S.C. § 1440(b), in pertinent part, provides:
"Any civil action for patent infringement may be brought in the judicial district where the defendant resides. . . ."
B. Convenience of the Parties
Ocean Spray argues that Massachusetts is a more convenient forum for the parties because neither ARI nor Ocean Spray have offices, facilities or employees in Minnesota. It also notes that Massachusetts is geographically closer to Ontario, Canada, ARI's corporate headquarters, than Minnesota. Conversely, ARI argues that its counsel is located in Minnesota and that the parties, through their attorneys, engaged in a nine-month string of pre-trial negotiations in this District. ARI also notes that Ocean Spray manufactures Craisins® in a facility in Tomah, Wisconsin.
In assessing the relative convenience of the parties, courts begin by analyzing the location of "their residences in relation to the district court chosen by the plaintiff and the proposed transferee district." Facilitec Corp. v. Omni Containment Sys., 2003 U.S. Dist. LEXIS 13250, *3 (D. Minn. July 31, 2003) (citations omitted). It is uncontested that neither party maintains offices, facilities or employees in Minnesota. It is obviously more convenient for Ocean Spray to litigate in the District in which its corporate headquarters is located than in one in which it merely sells its products. Furthermore, transferring the case from Minnesota to Massachusetts does not demonstrably inconvenience ARI. ARI's corporate headquarters in Ontario, Canada is closer to Massachusetts than Minnesota. ARI can demonstrate no tie to justify venue in the District of Minnesota except that Craisins® are sold in the state and it chose to retain counsel in Minnesota.
Ocean Spray apparently sells its products in all judicial districts in the United States.
ARI attempts to argue that the District of Minnesota is more convenient to Ocean Spray's Tomah, Wisconsin plant than the District of Massachusetts. This argument would be more persuasive if ARI had originally filed suit in the District of Wisconsin rather than the District of Minnesota. Tomah is approximately 170 miles, or a two hour and forty minute drive, from this Courthouse. Mapquest Driving Directions (Doscotch Decl. Ex. J). When this Court suggested at oral argument that the District of Wisconsin might be a more appropriate venue and closer to "neutral turf", both ARI and Ocean Spray indicated little interest in litigating in Wisconsin.
Ultimately, ARI attempts to argue that a transfer to Massachusetts would be inconvenient because its counsel is located in Minneapolis. However, "it is axiomatic that convenience to plaintiff's counsel is not a factor to be considered in deciding the propriety of transfer." Nelson, 58 F. Supp. 2d at 1027 (citations omitted). ARI claims that venue in Minnesota is appropriate because of negotiations which took place in Minnesota between the respective parties' counsel over a nine-month period prior to the complaint being filed. Accepting ARI's argument, however, would allow plaintiffs to engage in an end run around § 1404(a) by entering into pre-trial negotiations and thereby eviscerate the purpose of the transfer provision. For the aforementioned reasons, the Court finds that the convenience of the parties strongly supports transfer.
C. Convenience of the Witnesses
The parties contest what witnesses will be necessary to try the present claim. Ocean Spray contends that only six persons have personal knowledge of facts relating to the infringement allegation. Bryson Decl. ¶ 7. All of these potential witnesses are located in Massachusetts; five are current employees who work at Ocean Spray's corporate headquarters, while one is a retired employee now residing in Plymouth, Massachusetts. Id. ARI contends discovery will show employees at the Tomah, Wisconsin facility have knowledge of information relevant to the lawsuit. ARI further claims that pertinent documents are housed at the Tomah, Wisconsin plant. Although Ocean Spray acknowledges that the Tomah facility contains relevant documents, it argues that copies of all such documents are also kept at its Middleboro, Massachusetts corporate headquarters.
The convenience of the witnesses also supports transfer. In assessing this factor, the party seeking transfer must clearly specify the essential witnesses and provide a general statement of their testimony. Facilitec Corp., 2003 U.S. Dist. LEXIS at *4. The court then evaluates the materiality and importance of the anticipated witnesses' testimony, as well as their accessibility to the forum. Reid-Walen v. Hansen, 933 F.2d 1390, 1396 (8th Cir. 1991). Ocean Spray has provided a list of the anticipated relevant witnesses in this case, all of whom reside in the District of Massachusetts. ARI relies on the possibility that discovery will reveal relevant witnesses at the Tomah, Wisconsin plant. Although ARI correctly notes that five of the six witnesses are current Ocean Spray employees, and Ocean Spray can secure their attendance at trial, it is nevertheless true that these witnesses reside in Massachusetts, rather than Minnesota. See Kleinerman v. Luxtron Corp., 107 F. Supp. 2d 122, 125 (D. Mass. 2000). Furthermore, ARI's counsel will be forced to depose Ocean Spray's witnesses in Massachusetts whether the trial is held in Minnesota or Massachusetts.
Finally, ARI argues that the relevant documents are located in the Tomah, Wisconsin manufacturing facility. Conversely, Ocean Spray argues that copies of the documents are uploaded in real time and available at its Middleboro, Massachusetts headquarters. As the instant case pointedly illustrates, the actual physical location of voluminous documents "is not a particularly salient factor in a section 1404(a) determination" in present day litigation. American Standard, Inc. v. Bendix Corp., 480 F. Supp. 254, 261 (W.D. Mo. 1980). Relevant documents will have to be gathered for ARI's counsel in Minnesota whether they are housed in Wisconsin or Massachusetts. As a result, this Court finds that the convenience of the witnesses also militates in favor of transfer.
D. Interests of Justice
When evaluating whether the interests of justice warrant transfer, courts typically consider such factors as "(1) judicial economy, (2) the plaintiff's choice of forum, (3) the comparative costs to the parties of litigating in each forum, (4) each party's ability to enforce a judgment, (5) obstacles to a fair trial, (6) conflict of law issues, and (7) advantages of having a local court determine questions of local law." Terra, 119 F.3d at 696. Specifically, in the instant case, ARI argues that the interests of justice disfavor transferring venue because plaintiff's choice of forum should be given significant weight, Ocean Spray is better able to bear the costs of the litigation, and the District of Minnesota has a less congested docket than the District of Massachusetts. For its part, Ocean Spray argues the interests of justice favor transfer because ARI's status as a foreign plaintiff, coupled with its willingness to transfer the suit to Buffalo, New York, diminishes the deference that should be given to plaintiff's choice of forum and because the comparative costs of litigation will be reduced by a transfer to the District of Massachusetts.
ARI vigorously contends its choice of forum should be granted substantial deference. ARI notes it is a foreign plaintiff who, under United States law, must retain U.S. counsel to litigate its patent infringement claim. ARI argues that, were this Court to transfer venue to Massachusetts, it would effectively signal foreign corporations cannot choose their forum and must litigate in a defendant corporation's home state. This argument is flawed because it is well-established that significantly less deference is granted when the plaintiff does not reside in the forum.Nelson, 58 F. Supp. 2d at 1026. Further, ARI could have brought the present action in the District of Wisconsin, where the Tomah manufacturing plant is located, or in Buffalo, New York, as the closest venue to Jack Mazin's residence, and thus ensured some significant connection to the forum.
Both parties argue the expense of litigation supports their respective positions for transfer. This factor does not significantly favor one party's position over the other. The costs of depositions, document review and the resulting litigation will be much the same whether the matter is tried in Minnesota or Massachusetts. ARI does argue transfer will force it to endure the additional expense and inconvenience of finding local counsel. Although ARI has every right to retain Minnesota-based counsel to represent its interests, it cannot use its selection of counsel to dictate venue. Furthermore, ARI's willingness to transfer this matter to Buffalo, New York, where it would also need to retain local counsel, indicates that this additional expense was not preeminent in the choice of venue.
Finally, both parties seek to show docket congestion (or the lack thereof) supports their respective positions for venue choice. Dockets vary by judge and by time period. Even similar cases filed at the same time are often resolved in different amounts of time, depending on the vagaries of court calendars. Thus, this argument does not weigh in favor of one party over the other.
In summary, after weighing the convenience of the parties, the convenience of the witnesses and the interests of justice, this Court finds that Ocean Spray has carried its burden of showing a transfer of venue to the District of Massachusetts is appropriate.
IV. CONCLUSION
Based upon the foregoing, and all the files, records, and proceedings herein, IT IS HEREBY ORDERED that:
1. Defendant/Counterclaim Plaintiff's Motion to Transfer Venue [Docket No. 7] is GRANTED, and
2. Venue shall be transferred to the United States District Court for the District of Massachusetts.