Summary
denying transfer to court which had previously construed two terms of one of four patents at issue
Summary of this case from Invitrogen Corp. v. General Electric Co.Opinion
Case No. 2:04-CV-396.
February 16, 2005
ORDER DENYING CISCO'S MOTION TO TRANSFER
Before the Court is Defendant Cisco Systems, Inc.'s ("Defendant" or "Cisco") Motion to Transfer to the Eastern District of Pennsylvania (Docket No. 11). For the reasons set forth below, the Court DENIES the motion.
BACKGROUND
Plaintiff ConnecTel, LLC ("Plaintiff" or "ConnecTel") accuses Cisco of infringing U.S. Patent Nos. 6,016,307 ("the '307 patent"), 6,144,641 ("the `641 patent"), 6,456,594 ("the '594 patent"), and 6,473,404 ("the '404 patent"). ConnecTel is allegedly the assignee of all four patents in-suit, all of which deal with ConnecTel's intelligent routing technology. Because ConnecTel twice litigated the '307 patent in the Eastern District of Pennsylvania, Cisco contends that this case should be transferred to Judge James Knoll Gardner in the Eastern District of Pennsylvania, pursuant to 28 U.S.C. § 1404(a).
In May 2000, ConnecTel filed its first complaint in the Eastern District of Pennsylvania, accusing ITXC, Inc. of infringing the '307 patent. Judge Stuart Dalzell presided over most of the discovery and pre-trial motions until the case was assigned to Judge Gardner in December 2002. In February 2004, Judge Gardner held a Markman hearing to construe two claims relating to the terms "property of the data file" and "measuring said variable parameters" in the '307 patent. Judge Gardner issued his construction of those claims in March 2004, but shortly thereafter, ConnecTel settled its suit with ITXC.
In June 2000, ConnecTel filed its second complaint in the Eastern District of Pennsylvania, accusing Arbinet Holdings of infringing the '307 patent. In response to ConnecTel's complaint, Arbinet (a New York-based company) moved to dismiss for lack of personal jurisdiction, or in the alternative, to transfer the case from the Eastern District of Pennsylvania to the Southern District of New York. The case was transferred to the Southern District of New York and subsequently dismissed by agreement of the parties.
In November 2004, ConnecTel filed this action against Cisco. Cisco asserts that this action, like the two previous actions, could have been filed in the Eastern District of Pennsylvania, but does not contest the jurisdiction of this Court to hear the matter.
ANALYSIS
Section 1404(a) allows a district court "[f]or the convenience of parties and witnesses, in the interest of justice" to transfer a case to any other district or division where the case might have been brought. 28 U.S.C. § 1404(a) (2003). Section 1404(a) protects litigants, witnesses, and the public against unnecessary inconvenience and expense, and avoids wasted time, energy, and money. Van Dusen v. Barrack, 376 U.S. 612, 616 (1964). It is within the district court's discretion to decide whether to transfer venue, and the moving party bears the burden of showing why the court should transfer the case to a different forum. Hanby v. Shell Oil Co., 144 F.Supp.2d 673, 676 (E.D. Tex. 2001).
The first determination to be made under 28 U.S.C. § 1404(a) is whether the claim could have been filed in the judicial district to which transfer is sought. In re Volkswagen AG, 371 F.3d 201, 203 (5th Cir. 2004). If so, under section 1404(a), a court examines "the convenience of the parties and witnesses." Id. When examining convenience, the district court balances the private interests of the litigants and the public interests of fair and efficient administration of justice. International Software Sys., Inc. v. Amplicon, Inc., 77 F.3d 112, 115 (5th Cir. 1996). To transfer a case, a district court must find that the balance of the private and public interests substantially favor transfer. See, e.g., Peteet v. Dow Chem. Co., 868 F.2d 1428, 1436 (5th Cir. 1989); Howell v. Tanner, 650 F.2d 610, 616 (5th Cir. 1981); Menendez Rodriguez v. Pan Am. Life Ins. Co., 311 F.2d 429, 434 (5th Cir. 1962) ("whether it be by transfer order under the statute or by dismissal under the doctrine of forum non conveniens, the plaintiff's privilege to choose, or not to be ousted from, his chosen forum is highly esteemed"); LeDoux v. Isle of Capri Casinos Inc., 218 F. Supp. 2d 835, 837 (E.D. Tex. 2002); Mohamed v. Mazda Motor Corp., 90 F. Supp. 2d 757, 771-74 (E.D. Tex. 2000); see also Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947).
The following factors can be considered in weighing private interest: (a) plaintiff's choice of forum, (b) convenience and location of witnesses and the parties, (c) cost of obtaining the attendance of witnesses and other trial costs, (d) place of the alleged wrong, (e) accessibility and location of sources of proof, and (f) possibility of delay and prejudice if transfer is granted. See Gulf Oil, 330 U.S. at 508. The following factors can be considered in weighing the public interest: (a) administrative difficulty, (b) localized interests in resolving localized controversies, (c) jurors' time, and (d) conflict of laws. See Mohamed, 90 F. Supp. 2d at 771. Though all of these factors are considered to the extent they are applicable, none are given dispositive weight. See In re Volkswagen AG, 371 F.3d at 203.
Because the parties do not dispute — and the Court agrees — that this action could have been brought in the Eastern District of Pennsylvania, the Court now turns to the convenience determination. The private and public factors each will be discussed in turn below.
A. Private Interest Factors
The first factor involves the plaintiff's choice of forum. Though the plaintiff's choice of forum is "in and of itself . . . neither conclusive nor determinative," In re Horshoe Entm't., 337 F.3d 429, 434 (5th Cir. 2003), the plaintiff's choice of forum is nonetheless entitled to some deference. See, e.g., Mohamed, 90 F. Supp. 2d at 771-74. Cisco contends that ConnecTel's choice of forum should not be entitled to deference since the Eastern District of Texas "bears little or no relation" to the underlying the cause of action. Cognitronics Imaging Sys., Inc. v. Recognition Research Inc., 83 F. Supp. 2d. 689, 696 (E.D. Va. 2000). However, Cisco sells the accused infringing products in the Eastern District of Texas, and "sale of allegedly infringing products in the Eastern District of Texas . . . is an event that is significant and relevant," to an underlying cause of action. Cummins-Allison Corp., v. Glory Ltd., 2004 WL 1635534 at *5 (E.D. Tex. 2004) (Ward, J.). Furthermore, Cisco has significant operations in Richardson, a community located within the Eastern District of Texas. The Court thus concludes that ConnecTel's choice of the Eastern District of Texas as forum for this litigation is entitled to some deference, so this factor does not favor transfer.
The second factor considers the location of the parties and witnesses. Cisco notes that ConnecTel has an office in Horsham, Pennsylvania — a community located in the Eastern District of Pennsylvania — and that one of the named inventors on the patents resides in Erie, Pennsylvania. However, convenience to a plaintiff "is not a consideration" when analyzing a defendant's motion to transfer since the plaintiff chose the forum and presumably considered convenience and cost. Cummins-Allison, 2004 WL 1635534 at *5 (citing 15 Charles Alan Wright Arthur R. Miller, Federal Practice and Procedure § 3849 (West 1986)). Cisco has not established that litigating in the Eastern District of Texas is significantly less convenient than litigating in the Eastern District of Pennsylvania. Indeed, litigating here could actually be more convenient for Cisco and its witnesses, since although Cisco is headquartered in San Jose, California, it has six offices across the state of Texas, including a technical center in Richardson, Texas. Thus, the second factor does not favor transfer.
Erie is in the Western District of Pennsylvania. The other named inventor, presumably someone who will also be called as a witness, resides in Miami, Florida.
Similarly, the third factor does not favor transfer, as Cisco has not established that the parties would enjoy cost savings from litigating in the Eastern District of Pennsylvania instead of the Eastern District of Texas.
The fourth factor involves the place of the alleged wrong. In a patent case involving the nationwide sale of allegedly infringing goods, a patent-owner may bring its action in any forum where the alleged infringement occurred. See Beam Laser Sys., Inc. v. Cox Communications, Inc., 117 F. Supp. 2d 515, 518-519 (E.D. Va. 2000). Because the allegedly infringing goods were sold in the Eastern District of Texas, the fourth factor does not favor transfer.
The fifth factor involves the accessibility and location of sources of proof. Given that patent cases like this involve battles of documents and technical experts scattered across the nation, this factor is immaterial and thus does not favor transfer.
The sixth factor considers the possibility of delay or prejudice if transfer is granted or denied. Cisco contends that because Judge Gardner has familiarity with the technology and with the '307 patent, the case would be resolved faster and perhaps more accurately if transferred. However, Judge Gardner would be required to construe many other claims in the '307 patent and achieve familiarity with three other patents. Thus, Judge Gardner's familiarity with the '307 patent would not necessarily lead to a more rapid resolution of the case, so this factor is, at best, neutral.
B. Public Interest Factors
The first public factor is similar to the sixth private factor discussed above and considers the administrative difficulties in granting or denying transfer. Cisco contends that because the '307 patent has an extensive litigation history in the Eastern District of Pennsylvania, transfer is favored to capitalize on the transferee court's familiarity with the facts, legal issues, and parties. However, Cisco's contention is rather tenuous, since Judge Gardner merely construed two terms found in one of the four patents at issue. The present case involves a different defendant and different products, so it is not in the interest of judicial economy to transfer this case.
Cisco further contends that transfer is appropriate because the transferee court previously construed some claims in the '307 patent. The Court has previously recognized the serious problem of inconsistent constructions of the same claims by different courts. See Logan v. Hormel Foods Corp., et al., case no. 6:04-cv-211; MyMail, Ltd. v. America Online, Inc., 223 F.R.D. 455 (E.D. Tex. 2004). However, in both cases, the Court analyzed the problem of inconsistent claim constructions — and subsequent motions to transfer — in the context of the case as a whole. Thus, the Court granted the motion to transfer in Logan, but denied the motion to transfer in MyMail.
In Logan, the plaintiff alleged infringement of certain claims in the '374 patent. Previously, the plaintiff had alleged infringement of many, if not all, of these claims in the Southern District of Texas. See Logan v. HoneyBaked L.P., No. H-01-1611 (S.D. Tex. Apr. 5, 2004) (Werlein, J.). After Judge Ewing Werlein, Jr. issued an exhaustive claim construction opinion, the Southern District case settled. Upon motion by the defendant in the Eastern District case, the Court transferred the case to Judge Werlein because Judge Werlein had previously construed many of the claims at issue. The Court concluded that transfer was in the interest of judicial economy because Judge Werlein would be able to draw on his familiarity with the patent — particularly its eleven years of prosecution history — when issuing, if necessary, a new claim construction and seeing the case to final resolution. The Court also concluded that the plaintiff was bringing suit in the Eastern District in an attempt to obtain a more favorable claim construction ruling. Forum shopping for a different claim construction is undesirable because of the uncertainty those different constructions may generate over the scope of patent rights. Thus, viewed in the context of the entire case, this Court concluded that transfer was clearly warranted.
Logan however is distinguishable from this case since, as discussed above, the gains in judicial economy are at best minimal, and possibly non-existent since such gains could be realized by simply referring to Jude Gardner's claim construction, if necessary. Though the '307 patent has litigation history in the Eastern District of Pennsylvania, this case involves more than just construing claims that were previously construed by Judge Gardner. Four patents, with potentially hundreds of claims to construe, are at issue here. Given the number of claims at issue, Judge Gardner's previous claim construction does not determine the fate of this case. And again, although not bound by Judge Gardner's claim construction opinion, RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1261 (Fed. Cir. 2003), the Court can refer to Judge Gardner's claim construction if it is concerned about an inconsistent ruling. Thus, the Court concludes that when viewing this case on the whole, the same concerns that motivated transfer in Logan are simply not present here.
Likewise, the inconsistent claim construction problems present in MyMail are not present here. MyMail involved a motion to sever and then transfer part of the patent suit. The Court denied both motions because it did not want to create two ongoing cases involving the same patent in different districts. Two ongoing cases would require a duplication of judicial resources during discovery, particularly the claim construction phase, and could ultimately lead to different adjudications of the same patent. For all of these reasons, the Court concludes that the first public interest factor is at best neutral towards transfer.
The second and third public interest factors involve the localized interest in resolving localized controversies and the burdening of citizens in the forum with jury duty. "The residents of the Eastern District of Texas . . . have a significant interest in the enforcement of federal patent laws against infringement activities occurring within the division." Cummins-Allison, 2004 WL 1635534 at *5. If this case goes to trial, the residents of the Eastern District of Texas will not be burdened by jury duty any more than the residents of the Eastern District of Pennsylvania would be burdened. Therefore, these factors do not weigh in favor of transfer.
The fourth factor involves any conflict of laws. Since this action is brought under a federal statute, and since that statute's interpretation is governed by the law of the Federal Circuit in both this forum and in the Eastern District of Pennsylvania, this factor does not weigh in favor of transfer.
CONCLUSION
Because Cisco has failed to demonstrate why ConnecTel's choice of the Eastern District of Texas as the forum for this litigation should be disturbed, the motion is DENIED.SO ORDERED.