Opinion
Civil Action No. 04-1079 (PLF).
March 16, 2005
MEMORANDUM OPINION AND ORDER
This case is before the Court on defendant Why ASAP's motion to transfer this case to the United States District Court for the District of New Jersey. Because the Court finds that plaintiff could have brought suit in that court, and that the convenience of the parties and the witnesses and the interest of justice favor transfer, the Court will grant defendant's motion.
I. BACKGROUND
Plaintiff in this case, Jumpit, AS ("Jumpit"), is a Norwegian corporation that owns a patent on a battery designed to recharge portable electronic devices (the '784 patent). Defendant Why ASAP is a New Jersey limited liability corporation that markets similar devices in the United States. Neither party has any meaningful contacts with the District of Columbia, and plaintiff appears to have no significant contacts in the United States, beyond having entered into an exclusive United States licensing agreement with another company. See Defendant's Statement of Points and Authorities in Support of its Motion to Transfer This Case to the District of New Jersey ("Mot. Trans.") at 2.
On December 4, 2003, Why ASAP initiated a declaratory judgment action against Jumpit in the United States District Court for the District of New Jersey, seeking a declaration of non-infringement of the '784 patent and raising claims of unfair competition and deceptive trade practices. See Why ASAP v. Jumpit AS, Civil No. 03-5779 (D.N.J. filed Dec. 4, 2003). On April 28, 2004, Why ASAP filed another complaint in the same court alleging similar claims against a subsidiary of the exclusive United States licensee of the '784 patent. See Why ASAP v. Compact Power, Civil No. 04-1984 (D.N.J. filed Apr. 28, 2004). On October 6, 2004, the case against Jumpit was dismissed for lack of personal jurisdiction. See Why ASAP v. Jumpit AS, Civil No. 03-5779, Order (Oct. 6, 2004). The latter case, however, is still pending.
Jumpit filed this patent infringement suit in the United States District Court for the District of Columbia on June 28, 2004. Defendant initially filed a motion to dismiss for lack of personal jurisdiction, but withdrew its motion and filed an answer and counterclaim in December 2004. Why ASAP's counterclaim seeks a declaration that defendant has not infringed the '784 patent, that the asserted claims of the '784 patent are invalid, and that the '784 patent is unenforceable. See Defendant's Answer and Counterclaim at 4.
On January 12, 2005, Why ASAP filed this motion to transfer the case to the United States District Court for the District of New Jersey, asserting that (1) Jumpit could have brought its patent infringement case in that court; and (2) the convenience of the parties and witnesses, and the interest of justice, favor transfer.
II. DISCUSSION
Section 1404(a) of Title 28 of the United States Code states 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." The first question that must be answered, then, is whether plaintiff might have brought this case in the United States District Court for the District of New Jersey.That the New Jersey district court has personal jurisdiction over defendant is not in dispute, as defendant is a corporation organized under the laws of New Jersey, with its principal place of business in that state. Venue also would properly be laid in New Jersey. Venue in a patent infringement case exists "in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business." 28 U.S.C. § 1400(b).
Plaintiff argues that this case may not be transferred because defendant could not have filed its counterclaim in the United States District Court for the District of New Jersey. That court would lack personal jurisdiction over Jumpit in a suit brought by Why ASAP, the defendant here, as evidenced by its dismissal of defendant's prior declaratory judgment case on exactly those grounds. See Why ASAP v. Jumpit AS, Civil No. 03-5779, Order (Oct. 6, 2004). The Supreme Court, however, has made clear that the appropriate inquiry under Section 1404(a) is where a case might have been brought considering the situation as it existed when the case was originally filed. See Hoffman v. Blaski, 363 U.S. 335, 343 (1960). The Court there stated:
"[W]e do not see how the conduct of a defendant after suit has been instituted can add to the forums where `it might have been brought.'". . . [T]he power of a District Court under § 1404 (a) to transfer an action to another district is made to depend not upon the wish or waiver of the defendant but, rather, upon whether the transferee district was one in which the action "might have been brought" by the plaintiff.Id. (quoting Paramount Pictures, Inc., v. Rodney, 186 F.2d 111, 119 (3d Cir. 1950)). The assertion of a counterclaim by the defendant, therefore, does not bear on the Court's consideration of whether plaintiff might have brought suit in the proposed transferee district in the first place. See American Biophysics Corp. v. Blue Rhino Corp., 2003 U.S. Dist. LEXIS 25791, *14-16 (D.R.I. 2003); Scovill Mfg. Co. v. Sunbeam Corp., 357 F. Supp. 943, 945 (D. Del. 1973).
The cases that plaintiff cites for the proposition that defendant's assertion of a counterclaim can bar transfer are all distinguishable from this case. In Environmental Products, the counterclaim-plaintiffs sought transfer after the original complaint had been dismissed, so that only the counterclaims remained. See Environ. Prods., Inc. v. Total Containment, Inc., 1996 WL 184468, *1 (E.D. Pa. 1996). Similarly, inBallard, the Court denied transfer as to a counterclaim-defendant who had been dismissed by stipulation from the case as a plaintiff before filing of the counterclaim. Because he had withdrawn from the case, counterclaim-defendant was considered not to have waived venue, which was otherwise improper as to him in the transferee district. See Ballard Medical Prods. v. Concord Labs., Inc., 700 F. Supp. 796, 802 (D. Del. 1988). Moreover, as to the counterclaim-defendant who was still a plaintiff when the counterclaim was filed, the court did allow transfer. Id. at 803.
Having concluded that the District of New Jersey is a forum in which plaintiff might have commenced its action, the Court must consider whether the convenience of parties and witnesses and the interest of justice favor transfer. The Court may consider the following factors in determining whether a case should be transferred under Section 1404(a):
The convenience of the witnesses of plaintiff and defendant; ease of access to sources of proof; availability of compulsory process to compel the attendance of unwilling witnesses; the amount of expense for willing witnesses; the relative congestion of the calendars of potential transferee and transferor courts; and other practical aspect [sic] of expeditiously and conveniently conducting a trial.Chung v. Chrysler Corp., 903 F. Supp. 160, 163 (D.D.C. 1995) (quoting Armco Steel Co., L.P. v. CSX Corp., 790 F. Supp. 311, 323 (D.D.C. 1991)). While the burden is on the moving party to demonstrate that the "balance of convenience of the parties and witnesses and the interest of justice are in [its] favor," the Court has broad discretion to determine where the proper balance lies. Armco Steel Co., L.P. v. CSX Corp., 790 F. Supp. at 323 (quoting Consolidated Metal Prods., Inc. v. American Petroleum Institute, 569 F. Supp. 773, 774 (D.D.C. 1983)).
The facts of this case demonstrate that the neither the parties nor the action itself has any substantial relationship to the District of Columbia. Neither party transacts any business or owns or leases property here. None of the events (beyond issuance of the patent) giving rise to the alleged infringement occurred in the District of Columbia. Any witnesses that might be called are far more likely to reside in New Jersey than in the District of Columbia. As to the convenience of the parties, defendant claims that litigating this suit in the District of Columbia would be inconvenient because Why ASAP's corporate offices, along with any documents or other evidence that might be relevant in this proceeding are located in New Jersey. Plaintiff, on the other hand, has not alleged that litigating this case in New Jersey would be any more inconvenient than doing so in the District of Columbia.
Although the Court normally affords deference to the plaintiff's choice of forum, "the Court recognizes the diminished consideration accorded to a plaintiff's choice of forum where, as here, that forum has no meaningful ties to the controversy and no particular interest in the parties or subject matter." Islamic Republic of Iran v. Boeing Co., 477 F. Supp. 142, 144 (D.D.C. 1979); see also Schmidt v. American Inst. of Physics, 322 F. Supp.2d 28, 33-34 (D.D.C. 2004); Turner Newall, PLC v. Canadian Universal Ins. Co., 652 F. Supp. 1308, 1310 (D.D.C. 1987). Neither party to this case resides in the District of Columbia and none of the events giving rise to plaintiff's claim occurred here.
III. CONCLUSION
Because venue in this infringement case is proper in the District of New Jersey and defendant unquestionably is subject to personal jurisdiction there, this action "might have been brought" in the United States District Court for the District of New Jersey. 28 U.S.C. § 1404(a). Considering the convenience of the parties and any potential witnesses, the Court also finds it in the interest of justice to transfer this case to that court.
Accordingly, it is hereby
ORDERED that [10] defendant's motion to transfer this case to the District of New Jersey is GRANTED; and it is
FURTHER ORDERED that this case shall be transferred to the United States District Court for the District of New Jersey and removed from the docket of this Court.
SO ORDERED.