Opinion
00 Civ. 0374(GEL)
September 25, 2000
OPINION AND ORDER
Plaintiff Lak Cheong, a resident of Hong Kong, is the owner of U.S. Patent No. 5,936,702 entitled "Screw For Securing Optical Lens To Clasp." Defendant Okayama Enterprises, Inc., is a California corporation having its principal place of business in San Gabriel, California. Plaintiff claims that by manufacturing, importing and selling a particular type of screw used in the making of custom clip-on sunglass assemblies and by instructing others on how to use these screws in the making of those assemblies, defendant unlawfully infringed its patent in violation of 35 U.S.C. § 271 and 281 through 285.
The Complaint in this case alleges that by manufacturing, importing and selling its screws, the defendant has infringed and contributorily infringed the plaintiff's patent in the Southern District of New York. (See Cmplt. ¶¶ 10, 12.) It also alleges in general terms that the defendant actively induced infringement of plaintiff's patent by instructing others within this judicial district on how to use defendant's "infringing products" in making custom clip-on sunglass assemblies. (See Cmplt. ¶ 11.)
On August 14, 2000, the defendant moved for a transfer of venue from the Southern District of New York to the Central District of California under 28 U.S.C. § 1404 (a). Oral argument having been heard in this case on September 22, 2000, and the court having considered the submissions of the parties, the motion is GRANTED.
DISCUSSION
Federal law provides that "[f]or the convenience of 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." 28 U.S.C. § 1404 (a). As a threshold matter, this Court must determine whether the proposed district is one in which the action could have been brought. In the present instance, the parties agree that this case could have been brought in the Central District of California since defendant Okayama Enterprises is incorporated in California and has its principal place of business in San Gabriel, California. (See Def. Mem., at 4-5; Pl. Mem. Opp., at 6.) Thus, we need only determine whether the convenience of the parties and the interests of justice would be served by granting defendant's motion to transfer.
Decisions regarding transfer of venue under 28 U.S.C. § 1404 (a) are left to the discretion of the transferor court. See Filmline (Cross-Country) Prod., Inc. v. United Artists Corp., 865 F.2d 513, 520 (2d Cir. 1989). The burden of demonstrating the propriety of the transfer lies with the moving party, who must make a "clear-cut showing that a transfer is in the best interests of the litigation." Dwyer v. Gen. Motors Corp., 853 F. Supp. 690, 692 (S.D.N.Y. 1994) (citations omitted) (quotations omitted). The factors that courts take into consideration include (1) the convenience of the witnesses; (2) the location of relevant documents and the relative ease of access to sources of proof, (3) the convenience of the parties; (4) the locus of the operative facts; (5) the availability of process to compel the attendance of unwilling witnesses; (6) the relative means of the parties; (7) a forum's familiarity with the governing law; (8) the weight accorded the plaintiff's choice of forum; and (9) trial efficiency and the interest of justice, based on the totality of the circumstances. See Eskofoot A/S v. E.I. Du Pont de Nemours Co., et al., 872 F. Supp. 81, 95 (S.D.N.Y. 1995).
"The core determination under section 1404(a) is the center of gravity of the litigation, a key test of which is the convenience of nonparty and party witnesses." Bionx Implants, Inc. v. Biomet, Inc., 1999 U.S. Dist. LEXIS 8031, at *9 (S.D.N.Y. May 25, 1999). Indeed, "[c]ourts routinely transfer cases when the principal events occurred, and the principal witnesses are located, in another district." Viacom Int'l. Inc. v. Melvin Simon Productions. Inc., et al., 774 F. Supp. 858, 868 (S.D.N.Y. 1991). While courts generally defer to a plaintifFs choice of forum, plaintiff's selection is "given less weight where, as here, the plaintiff is not a resident of the forum and the cause of action is minimally connected with the forum." Eichenholtz v. Brennan, et al., 677 F. Supp. 198, 201 (S.D.N.Y. 1988) (citations omitted). See also Fontana v. E.A.R., A Division of Cabot Corp., 849 F. Supp. 212, 215 (S.D.N.Y. 1994).
The defendant has met its burden in the present instance. The papers submitted clearly establish that most of the factors relevant to transfer of venue either favor the transfer or are neutral. Defendant Okayama Enterprises, Inc. is incorporated in California and has its sole place of business in San Gabriel, California. (See Chen Decl. ¶¶ 3, 4; Cmplt. ¶ 2.) Okayama sells its products nationwide and sales in the Southern District of New York apparently account for less than 1% of its total direct sales. (See Chen Decl. ¶¶ 11, 12.) The screws and clasps at issue were designed by persons in Taiwan who are not employees of the defendant and they are manufactured in Taiwan by third-parties. (See Chen Decl. ¶¶ 7, 8.) Okayama receives, handles and ships all orders for these products in its facilities in San Gabriel and it keeps all its corporate records there as well. (See Chen Decl. ¶¶ 10, 15.) All customer service related activities originate from the San Gabriel facility, including the writing, printing and shipping of the instructional materials. (See Chen Decl. ¶¶ 13, 14.)
Since the defendant's place of business is in the Central District of California, and its importation and distribution of the allegedly infringing product were conducted there, the principal activities that form the basis of the complaint, and the records and witnesses that would establish those activities, are located in that district. As in Coloplast A/S v. Amoena Corp., 25 U.S.P.Q.2d 1549, 1551 (S.D.N.Y. 1992), the defendant's personnel "who are most familiar with the design, manufacture and sale of the [allegedly infringing] products" live and work in California; there is no indication that corresponding witnesses on plaintiff's side are in or near New York. The defendant's convenience would certainly be served by conducting this litigation in California, and since the plaintiff is a resident of Hong Kong, litigation in California is no more inconvenient than litigation in New York. Defendant is a small company employing fewer than ten persons, so the resources of the parties do not affect the balance of convenience. "This is not a case where transfer merely shifts the inconveniences of litigation from one party to another. Rather, this is a case where transfer would aid one party and not disadvantage its adversary." Bionx Implants, 1999 U.S. Dist. LEXIS 8031, at *11.
In opposing this motion, plaintiff states that the "precipitating event" for the present lawsuit was a trade show in New York at which "defendant promoted and sold its infringing products." (Pl. Mem. Op., at 3, 4.) He contends that witnesses to that transaction, including Arthur Singer, an optical retailer from Little Neck, New York, would be important trial witnesses who have professed their unwillingness to travel to California to testify. (See id; Singer Decl. ¶ 6.) Despite this contention, however, plaintiff has specifically disclaimed any intention to limit his claims to the defendant's conduct in New York, and contends that the instructions included with every sale of the allegedly infringing product induce an infringing use in essentially the same manner as the actions at the New York trade show. Moreover, plaintiff apparently warned defendant of his claims that defendant's product infringes his patent well before the New York trade show events occurred. (See Def. Mem. Rep., at 3.) Defendant, in response, has challenged the validity of plaintiffs patent. (See Def. Ans. Countercl. ¶¶ 5, 6.)
Thus, at issue in this case will be the validity of the patent, whether defendant's product infringes it, and whether defendant's marketing and instructional materials and activities (only a small portion of which were distributed or conducted in New York) induced infringement. It therefore appears that the incident at the New York trade show is at best a minor aspect of the case, while most of the facts and witnesses that form the center of gravity of this action are either in California or otherwise outside of New York. Moreover, defendant has stipulated in open court that it will not object to taking the depositions of the New York witnesses in New York, nor will it raise objections to the admission of the deposition evidence at trial in lieu of live testimony if the witnesses cannot be persuaded to appear voluntarily for trial in California. Under these circumstances, plaintiffs argument is unpersuasive.
For the foregoing reasons, transfer will best serve the convenience of parties and of witnesses, and is in the interests of justice. The defendant's motion to transfer this action to the Central District of California is granted. SO ORDERED: