Opinion
Civ. File No. 03-1064 (PAM/RLE)
September 20, 2003
MEMORANDUM AND ORDER
This matter is before the Court on Defendants' Motion to Sever, Transfer, or Stay. For the reasons that follow, the Motion is denied.
BACKGROUND
This case involves a number of patents on various aspects of automatic external defibrillators ("AED"). AEDs are designed to be used by non-medical personnel outside of medical centers. As with defibrillators used in hospitals, AEDs give an electric shock to a person suffering from cardiac arrest to stop the heart's irregular beat and potentially save the person's life.
Defendants Koninklijke Philips Electronics, N.V. and Philips Electronics North America Corporation (collectively "Philips") are the owner of several patents on AED devices, including patents for the "waveform" of the electric shock that the device delivers, and patents for the self-test mechanism on the device. It appears that Philips manufactures AEDs in Bothell, Washington. Plaintiff Cardiac Science, Inc. ("CSI") manufactures AEDs at a facility in Minnetonka, Minnesota. CSI also holds various patents on AED technology. According to Philips, CSI's patents are different from Philips' patents, because CSI's patents involve the AED's electrodes, electrode configurations, and self-testing related specifically to the electrodes.
On June 30, 2002, Philips accused CSI of infringing nine of Philips' patents. The parties engaged in discussions but were unable to resolve the dispute as to six of the nine patents. On February 12, 2003, CSI brought this action, seeking a declaratory judgment that CSI was not infringing the nine patents, and also claiming that Philips was infringing seven of CSI's patents. Philips received two extensions of time in which to respond to CSI's Complaint, and during this time the parties again attempted to resolve their differences. The parties ultimately agreed to remove four of Philips' patents from the lawsuit. CSI then filed an Amended Complaint, seeking a declaratory judgment as to the five remaining Philips' patents, and alleging that Philips was infringing ten of CSI's patents. Seven days later, Philips filed a Complaint against CSI in the Western District of Washington, alleging infringement of ten of Philips' patents, including the five at issue here. The next day, Philips filed the instant Motion. CSI then filed a motion to dismiss the Washington action. CSI's motion was granted in its entirety by Judge Coughenour on August 26, 2003. Koninklijke Philips Elec. N.V. v. Cardiac Science. Inc., No. 03-CV-01324C (W.D. Wash. Aug. 26, 2003).
Philips has also brought patent infringement lawsuits in the Western District of Washington against two other AED manufacturers. Philips now contends that severing CSI's
3 declaratory judgment claim and transferring that claim to Washington is appropriate because its other lawsuits involve the same five Philips' patents at issue in CSI's declaratory judgment claim.
DISCUSSION
28 U.S.C. § 1404(a) provides that, "[f]or 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." The party seeking a transfer bears the burden to establish that a change of forum is appropriate. GMAC/Residential Funding Corp. v. The Platinum Co. of Real Estate Fin. Servs., Inc., Civ. No. 02-1224, slip op. at 4 (D. Minn. March 13, 2003) (Kyle, J.) (citing Stinnett v. Third Nat'1 Bank of Hampden County. 443 F. Supp. 1014, 1017 (D. Minn. 1978) (MacLaughlin, J.)). Transfers under § 1404(a) "should not be freely granted." United Mortgage Corp. v. Plaza Mortgage Corp., 853 F. Supp. 311, 315 (D. Minn. 1994) (Doty, J.).
Philips contends that the Court should sever CSFs declaratory judgment claims from its infringement claims and transfer the declaratory judgment claims to the Western District of Washington. Philips offers two arguments in support of the severance it seeks. The first is that the patents at issue are so different from one another that the jury will be confused if all of the patent claims are tried together. This claim has no merit. The patents all cover the same device, and it is far from clear that the patents at issue are indeed different from one another. If it appears at a future date that the patents are so dissimilar as to risk jury confusion, the court can bifurcate the trial as necessary.
Next, Philips contends that the declaratory judgment claims should be severed because Philips has brought other cases in Washington that involve the same patents. Thus, there is a risk that the patents will be interpreted differently in the different fora. According to Philips, the risk of inconsistent judgments trumps the first-to-file rule. The Court disagrees.
The first-to-file rule promotes judicial efficiency by providing that "the first court in which jurisdiction attaches has priority to consider the case." Orthmann v. Apple River Campground. Inc., 765 F.2d 119, 121 (8th Cir. 1985). CSI's lawsuit in Minnesota was filed many months before any of Philips' lawsuits in Washington. Thus, in some sense, the risk of conflicting interpretations is a risk of Philips' own making. Moreover, as Judge Coughenour noted, the "possibility of conflicting outcomes [is] a factor that favors the first-to-file rule, not, as Philips argues, the abandonment of the rule." Koninklijke Philips Elec., No. 03-CV-01324C, slip op. at 3 n. 2. Absent proof of forum-shopping or other wrongful conduct, and there is undisputedly no such evidence here, the Court must give deference to CSI's choice of forum and the declaratory judgment claims should remain part of this case. See Christensen Hatch Farms. Inc. v. Peavey Co., 505 F. Supp. 903, 911 (D. Minn. 1981) (noting presumption in favor of plaintiff's forum choice).
To the extent that Philips seeks to transfer this action under the forum non conveniens principles set forth in 28 U.S.C. § 1404(a), that request must be denied. As Judge Coughenour found, the first-to-file rule favors CSI's forum choice. Koninklijke Philips Elec., No. 03-CV-01324C, slip op. at 6. Moreover, the factors to be considered in evaluating a motion to transfer, such as convenience of the parties and witnesses and interests of justice, do not favor a transfer. While Minnesota is undoubtedly an inconvenient forum for Philips, Washington is certainly not a convenient forum for CSI.
Because Philips' lawsuit in Washington was dismissed, the request for a stay of this lawsuit pending a decision on the merits on the Washington lawsuit is moot. Philips' Motion is therefore denied in its entirety.
CONCLUSION
Accordingly, for the foregoing reasons, and on all of the files, records, and proceedings herein, IT IS HEREBY ORDERED that Defendants' Motion to Sever, Transfer, or Stay (Clerk Doc. No. 16) is DENIED.