Opinion
01-CV-0505E(M).
February 12, 2002
MEMORANDUM and ORDER
Plaintiff Orthoarm, Inc. commenced this action for patent infringement in violation of 35 U.S.C. § 271 et seq. against American Orthodontics Corporation by Complaint dated July 16, 2001. Presently before this Court is a motion by American Orthodontics pursuant to 28 U.S.C. § 1404(a) to transfer this action to the Eastern District of Wisconsin. For the reasons which follow, defendant's motion will be granted.
Orthoarm is a Canadian corporation with its principal place of business in Toronto. It brought this action for infringement of United States Patent No. 6,257,883 (the "883 Patent"). Presently pending in the Eastern District of Wisconsin is a action dealing with issues relating to the same patent. In that case American Orthodontics brought a claim against Dr. John Vourdouris — a Canadian citizen who is the owner, President and sole director of Orthoarm — for allegedly infringing United States Patent No. 5,630,715 (the "715 Patent"). Vourdouris counterclaimed in that action asserting breach of a contract based on the 883 Patent.
Defendant has asserted that he is the sole owner and plaintiff has not refuted this.
In the Wisconsin case, American Orthodontics is suing Vourdouris and GAC International. All the issues in such action relate to two contracts relating to the 715 Patent — one between American Orthodontics and Vourdouris and one between Orthoarm and GAC — and the 715 Patent itself.
A prerequisite under section 1404(a) is that the case could have originally been brought in the district to which the moving party seeks to transfer the case. American Orthodontics is a resident of the Eastern District of Wisconsin and this case could therefore have been brought there. This Court's inquiry must then determine whether the interests of justice and the convenience of the parties and witnesses directs this Court to transfer the case. In order to make this determination, courts are to look at a wide range of factors including the following — viz., (1) the locus of operative facts, (2) the chosen forum's familiarity with the governing law, (3) the weight accorded to plaintiff's choice of forum, (4) the location of relevant documents, (5) the relative means of the parties, (6) the conveniences of the parties, (7) the availability of non-party witnesses, (8) how best to serve the interests of justice and (9) the convenience of the parties. Anadigics, Inc. v. Raytheon Co., 903 F. Supp. 615, 617 (S.D.N.Y. 1995); U.S. Fidelity and Guar. v. Republic Drug, 800 F. Supp. 1076, 1080 (E.D.N.Y. 1992). After an analysis of these factors, the undersigned is convinced that this case should be transferred to the Eastern District of Wisconsin.
"Courts routinely transfer cases when the principal events occurred and the principal witnesses are located in another district." In re Nematron Corp. Securities Litigation, 30 F. Supp.2d 397, 404 (S.D.N.Y. 1998); Viacom Intern. v. Melvin Simon Productions, 774 F. Supp. 858, 868 (S.D.N.Y. 1991). Plaintiff argues that, because the allegedly infringing product was sold in this district as well as quite possibly every other district in the United States, this factor is neutral and should not be taken into account. Plaintiff's argument is flawed because in a patent infringement case the locus of operative facts is where the allegedly infringing product was designed and developed. Amersham Pharmacia Biotech v. Perkin-Elmer Corp., 11 F. Supp.2d 729, 730 (S.D.N Y 1998); Invivo Research v. Magnetic Resonance Equip. Corp., 119 F. Supp.2d 433, 439 (S.D.N.Y. 2000). Therefore and because the locus of operative facts is, as alleged by defendant, in Wisconsin, the undersigned deems this factor to favor transfer.
The fact that this case is a patent case is also important to this Court's inquiry because all district courts are considered equally capable of applying the pertinent substantive law.
Orthoarm makes much of the fact that, as the plaintiff, its choice of forum is to be accorded substantial weight and should presumptively control — absent a clear showing by defendant why transfer is appropriate. Ford Motor Co. v. Ryan, 182 F.2d 329, 330 (2d Cir. 1950). However where, as here, the cause of action is minimally connected with the forum and plaintiff is not a resident of the forum, plaintiff's selection is given less weight. Coker v. Bank of America, 984 F. Supp. 757, 776 (S.D.N.Y. 1997); Eichenholtz v. Brennan, et al., 677 F. Supp. 198, 201 (S.D.N.Y. 1988). See also, Levitt v. State of Maryland Deposit Ins. Fund Corp., 643 F. Supp. 1485, 1493 (E.D.N.Y. 1986) (noting that the more substantial the connection between the forum state and the underlying events, the greater the weight to be given to plaintiff's choice). Plaintiff argues that it is a resident of Toronto and the Western District of New York is the closest federal court to its residence; therefore this district should be its residence for purposes of American federal court litigation. This Court is unconvinced by plaintiff's argument and therefore applies the general rule that a plaintiff's choice of forum is given less weight when a plaintiff is a non-resident of such forum. This factor favors transfer of the case.
Most of the documents relevant to this case are to be found in the Eastern District of Wisconsin. "This factor is clearly an important consideration in motions to transfer pursuant to 28 U.S.C. § 1404(a)." Aquatic Amusement Assoc., Ltd. v. Walt Disney World Co., 734 F. Supp. 54, 58 (N.D.N.Y. 1990). See also, Linzer v. EMI Blackwood Music, Inc., 904 F. Supp. 207, 216-217 (S.D.N.Y. 1995). Plaintiff argues that such documents can easily be transferred from Wisconsin to Buffalo and that plaintiff itself has documents which it must move from Toronto to Wisconsin should this Court grant defendant's motion. This Court has considered such arguments and opines that transfer would avoid much more in the way of litigation costs than it would cause. In Re Nematron Corp. Securities Litigation, 30 F. Supp.2d 397, 404 (S.D.N.Y. 1998). Therefore, the ease of access to documents and proof favors transfer of the case.
The relative means of the parties does not affect this Court's decision. Defendant, as a large corporation, will surely have much more resources than plaintiff; however, plaintiff itself is a litigant of considerable resources. Although defendant may more easily bear the costs of this litigation, plaintiff can easily bear the costs of litigating in either forum. Additionally, this Court notes that the difference in cost to plaintiff between litigating in Buffalo and litigating in Wisconsin is relatively minor. If plaintiff can afford to litigate in Buffalo, it can afford to litigate in Wisconsin, especially because there is another pending litigation in that district in which it will have to participate. This factor therefore favors neither transfer nor retention. In addition, this Court opines that the convenience of the parties does not factor one way or the other in its decision whether to transfer the case. While a section 1404(a) motion to transfer is not to be used to shift conveniences from plaintiff to defendant, neither forum is particularly convenient to plaintiff. Plaintiff will have to travel no matter where the action is tried and he would have to travel to Wisconsin to be involved in the there-pending litigation anyway. The undersigned also notes that neither party has indicated that any of its witnesses will be unavailable to testify should this motion be decided adversely to its interests. Therefore, this factor similarly favors neither party.
Defendant has submitted internet printouts showing that the difference in commuting costs between the fora is relatively minor.
Defendant has invited this Court's attention to a proceeding which is currently pending in the Eastern District of Wisconsin involving claims by American Orthodontics against Vourdouris. There is a strong policy favoring the litigation of related claims in the same tribunal in order that pretrial discovery can be conducted more efficiently and duplicitous litigation can be avoided, thereby saving time and expense for both parties and witnesses, and minimizing inconsistent results. Wyndham Associates, et al. v. Bintliff, 398 F.2d 614, 620 (2d Cir. 1986). See also, Nieves v. American Airlines, 700 F. Supp. 769, 773 (S.D.N.Y. 1988). Plaintiff argues that the interests of justice do not favor transfer because the Wisconsin action and the New York action do not involve the same set of facts, transactions or occurrences. Levitt v. State of Maryland Deposit Ins. Fund Corp., 643 F. Supp. 1485, 1493 (E.D.N Y 1986). Plaintiff first argues that the Wisconsin action concerns a lawsuit brought by American Orthodontics against Vourdouris individually and that Orthoarm is not a party. In addition, plaintiff points out that the Wisconsin action is a claim by American Orthodontics for breach of an agreement between American Orthodontics and Vourdouris relating to a different patent and that American Orthodontics does not have a claim based on the 883 Patent. In the Wisconsin action Vourdouris made the following counterclaims prior to the issuance of the 883 Patent — viz., (1) breach of contract for past and future royalties relating to the "Time Bracket" invention under the Agreement, (2) breach of warranty and good faith based on American Orthodontic's development efforts under the Agreement, (3) misrepresentation and (4) unjust enrichment. Vourdouris argues that, when considering the entire Wisconsin action, the only part of it that could possibly overlap is the first counterclaim for royalties for the Time Bracket invention.
Vourdouris and Orthoarm have stated in their Memorandum of Law in Opposition to Defendant's Motion to Transfer Venue that, should the undersigned determine that the case should be transferred to Wisconsin because of the overlap between the counterclaim in the Wisconsin action, they would consent to having such counterclaim transferred here to be decided along with the present action. Pl.'s Mem. of Law in Opp'n to Def.'s Mot. to Transfer Ven. at 13.
This Court is unpersuaded by plaintiff's argument that the cases are not so similar as to warrant transfer. First, this Court does not accept plaintiff's assertion that the parties in the two actions are not identical. Vourdouris is the owner, the President and the sole director of Orthoarm. Even though the parties are not exactly identical, Vourdouris has such control over Orthoarm that they are essentially the same party. In addition, this Court can see how, even though the cases involve different patents, they still have a degree of overlap. In Vourdouris's Answer to the Complaint in the Wisconsin action, Vourdouris chose to interject the 883 Patent as a counterclaim. Now he chooses to have his closely held corporation sue for infringements of the same patent. If this Court were to keep this case, it is possible that issues with respect to the 883 Patent could be decided one way in this Court and another way in the Wisconsin action. In addition, by transferring this case it is possible that the Wisconsin court may decide that these cases can be consolidated for discovery and/or trial purposes. Therefore and because the interests of justice would best be served by transfer of this case to the Eastern District of Wisconsin, this Court will order that such action be taken.
In addition, the undersigned notes that, even had the Wisconsin and the present actions not had the degree of overlap that they do, this Court still would opine that the interests of justice would best be served by transfer because, as noted above, both the plaintiff and the cause of action have very little connection to this district.
Accordingly it is hereby ORDERED that defendant's motion to transfer this case to the Eastern District of Wisconsin is granted and that this case be closed in this Court.