Opinion
CASE NO. 09-80545-CIV-MARRA/JOHNSON.
July 30, 2009
ORDER AND OPINION GRANTING MOTION TO TRANSFER
THIS CAUSE is before the Court upon Defendants' Motion to Transfer [DE 14] and Request for Oral Argument [DE 19]. The Court has carefully considered the motion, response, and reply, and is otherwise fully advised in the premises.
Background
Plaintiff SOC-USA, LLC ("SOC") is a Florida limited liability company that has its principal place of business in Delray Beach, Florida. Complaint ("Compl.") ¶ 2. SOC owns the full right, title and interest in and has standing to sue for infringement of United States Patent No. 7,456,018 B2 ("the `018 Patent"), entitled "Printing System," which was issued on December 16, 2008. Comp. ¶ 3.
Defendant Office Depot, Inc. ("Office Depot") is a Delaware corporation and has its principal place of business in Delray Beach, Florida. Comp. ¶ 4. Defendant Epson America, Inc. ("Epson America") is a California corporation with a principal place of business in Long Beach, California. Comp. ¶ 5. (Collectively, "Defendants").
Defendants sell, offer for sale, and/or import inks designed to be used with color printing systems that allegedly infringe the `018 Patent. Comp. ¶ 7, 8. These activities include selling and offering for sale ink cartridges for use in the Epson R800 and R1800 printers, specifically: cyan, red, blue, magenta, yellow, photo black, and matte black. Comp. ¶ 6. Plaintiff alleges that Defendants have infringed claims 7, 9, 11, 13, 15, 17, 19, 21, 27, and 29 of the `018 Patent. Plaintiff asserts that Defendants are knowingly and actively inducing others to infringe, and are contributing to the infringement of others, by the use, sale, importation, and/or offer for sale of the ink cartridges designed to be used with the Epson R800 and R1800 color printing systems. Comp. ¶ 9. Plaintiff further alleges that the ink cartridges designed to be used with the R800 and R1800 color ink jet printers are not staple articles of commerce and can only be used in Epson's R800 and R1800 color ink jet printers. Comp. ¶ 10. As a result of the foregoing assertions, Plaintiff contends that it has been injured by Defendants' contributory infringement and inducement to infringement. Hence, SOC is seeking damages for the alleged infringement. Comp. ¶ 11.
SOC initiated the instant action on April 7, 2009. In response, Defendants have moved to transfer this action to the United States District Court for the Northern District of Illinois. [DE 14]. Defendants argue that this case is substantially identical to an ongoing patent infringement action that has been vigorously litigated in the Northern District of Illinois for the past two years, including a Markman hearing on claim construction. (Mot. at 5).
In March 2007, Only-the-First, Ltd. ("OTF"), a patent licensing entity whose corporate Secretary is the same as the Managing Member of SOC, filed suit in Illinois accusing Seiko Epson Corp. ("Seiko Epson") of infringing its 7,058,339 patent ("'339 patent") by manufacturing and selling its R800/1800 color printing systems. Id. In March 2009, after years of active litigation in Illinois, the two principals of OTF created SOC, the Plaintiff entity in this case. Id. OTF then transferred to SOC a continuation of the `339 patent, the `018 patent, for $1.Id. A week later, represented by the same lawyers as in the Illinois action, SOC filed the present action in Florida against Epson America, which is the American subsidiary of Seiko Epson, and one of its customers, Office Depot, accusing the same R800/1800 products of infringing the `018 patent. Id.
Discussion
Defendants assert that the two actions were initiated by the same individuals (although nominally different plaintiffs), involve related patents that share the same specification, and involve claims that the exact same products purportedly infringe those patents. Accordingly, Defendants argue that "Plaintiff's transparent maneuvering represents forum-shopping at its extreme and would result in a substantial waste of judicial resources." (Mot. at 5).
Plaintiff does not dispute that the two actions involve related parties, related patents and claims over the same products. Nor does Plaintiff dispute that the Illinois court has already invested two years of its time and resources to become familiar with the technology, parties, and issues relevant to both cases. Instead, Plaintiff argues that this action should not be transferred to the Northern District of Illinois because, upon transfer, the case would not likely be reassigned to the Honorable Robert M. Dow, Jr., the judge presiding over the related case, and because the relevant factors do not favor transfer.
Reassignment within the Northern District of Illinois
28 U.S.C. § 1404(a) Transfer of Venue
See Markman See 28 U.S.C. § 1404
For 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.28 U.S.C. § 1404(a). The standard for transfer under 28 U.S.C. § 1404(a) leaves much to the broad discretion of the trial court, and once a trial judge decides that transfer of venue is or is not justified, the ruling can be overturned only for clear abuse of discretion. See Brown v. Connecticut Gen. Life Ins. Co., 934 F.2d 1193, 1197 (11th Cir. 1991).
Congress authorized courts to transfer the venue of a case in order to avoid unnecessary inconvenience to the litigants, witnesses, and the public and to conserve time, energy and money.Van Dusen v. Barrack, 376 U.S. 612, 616 (1964). The burden is on the movant to establish that the suggested forum is more convenient. In re Ricoh Corp., 870 F.2d 570, 573 (11th Cir. 1989).
To obtain dismissal under the transfer doctrine, "the moving party must demonstrate that (1) an adequate alternative forum is available, (2) the public and private factors weigh in favor of dismissal, and (3) the plaintiff can reinstate his suit in the alternative forum without undue inconvenience or prejudice." Leon v. Million Air, Inc., 251 F.3d 1305, 1310-11 (11th Cir. 2001).
There is no dispute that an adequate alternative forum is available in the Northern District of Illinois.
Private-interest factors include "the relative ease of access to sources of proof; availability of compulsory process for attendance of unwilling, and the cost of obtaining attendance of willing, witnesses; possibility of view of premises, if view would be appropriate to the action; and all other practical problems that make trial of a case easy, expeditious and inexpensive." American Dredging Co. v. Miller, 510 U.S. 443, 448 (1994) (quoting Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 508 (1947));Membreno v. Costa Crociere S.p.A., 425 F.3d 932, 937 (11th Cir. 2005).
The public interest factors to be considered include:
the administrative difficulties flowing from court congestion; the local interest in having localized controversies decided at home; the interest in having the trial of a diversity case in a forum that is at home with the law that must govern the action; the avoidance of unnecessary problems in conflict of laws, or in the application of foreign law; and the unfairness in burdening citizens in an unrelated forum with jury duty.Piper Aircraft Co. v. Reyno, 454 U.S. 235, 241 n. 6 (1981) (internal quotation marks omitted).
Choice of Forum
Convenience of the Witnesses and Parties
Robinson v. Giarmarco Bill, P.C., 74 F.3d 253260 th Martin v. South Carolina Bank811 F. Supp. 679686 Tingley sys., Inc. v. Bay State HMO Mgmt., Inc. 833 F. Supp 882 887
Location of Documents, Ease of Access to Sources of Proof, and Availability of Processes to Compel Attendance of Unwilling Witnesses
Seiko Epson, the parent company of Epson America and the defendant in the Illinois action, developed the accused products. Thus, it has in its possession the evidence that is most relevant to the infringement claims and defenses in this action. Seiko Epson is based in Japan, which is neutral to transfer, but it is already engaged in the litigation in Illinois. This factor weighs in favor of transfer. Office Depot, as a downstream retailer of the accused products, has the least amount of information relevant to the infringement issues in this case. Technical and damages experts will likely need to testify in both cases, and will likely offer similar testimony in both fora. It is not known whether there are unwilling witnesses expected to testify, but to the extent that most of the witnesses appear to be located in England, Japan, and California, they will be beyond the subpoena power of both this Court and the Illinois Court.
Seiko Epson supports the transfer of this action to Illinois.
Relative Means of the Parties
Plaintiff argues that this factor weighs in favor of transfer because SOC and Office Depot are located in Florida and it would be more expensive for them to litigate this case in Illinois. However, as stated earlier, Office Depot supports transfer of the action. Plaintiff also asserts that it is a company of extremely small means as compared to Defendants. The Court finds that this factor carries little weight under the circumstances because initiating a lawsuit here, while a substantially similar one initiated by a related party is proceeding in Illinois, does not support an economical approach to resolving the issues for any of the parties.
Trial Efficiency and Expense to the Justice System
Conclusion
Markman Breckenridge Pharmaceutical, Inc. v. KV Pharmaceutical Co.2009 WL 14046986See, e.g. International Securities Exchange, LLC v. Chicago Bd. Options Exchange2007 WL 15410876
ORDERED AND ADJUDGED as follows:
1. Defendants' Motion to Transfer [DE 14] is GRANTED.
2. Defendants' Request for Oral Argument [DE 19] is DENIED.
3. The Clerk of Court is hereby directed to TRANSFER this case to the United States District Court, Northern District of Illinois.
4. All pending motions are DENIED without prejudice, as moot.
5. This case is CLOSED.DONE AND ORDERED in Chambers at West Palm Beach, Palm Beach County, Florida.